When diversifying your brand’s offering into new and potentially unusual lines of products or services, it’s important to consider how this will affect your trade mark registrations. Consider fitness studio and athleisure brand Lululemon’s branch-out into skincare and toiletries, US vintage bag brand Edie Parker’s launch of cannabis smoking accessories, and (more commonly) fashion houses ‘cross-pollinating’ into interiors — modern fashion brands are expanding into new areas more frequently than ever before. Doing this under your existing brand brings challenges — not least from a trade mark protection angle, which is easily overlooked.
Why does brand diversification affect my trade marks?
When filing a trade mark, applicants must select the goods and services for which protection is sought. This allows the scope of the rights to be clearly defined. In the UK, the applicant must intend to use the mark on the goods and services specified. If there’s no intention, or no actual use is made, the trade registration can be cancelled. This prevents the Trade Marks Register from being clogged up. Therefore, diversifying your product or service range means that the classes you originally filed in may no longer reflect your new reality, meaning that you lack protection.
Should I refile my trade marks every time I launch a new product or service?
When looking to enforce a trade mark registration, the goods or services covered are compared to the alleged infringer’s activities to see if they’re similar enough for consumers to confuse the origin of them. They don’t have to be identical, so this affords brand owners some leeway when developing product or service lines which explore new areas of related business.
The comparison test
The definition of similarity is tested by comparing the uses, users, physical nature and trade channels of the goods or services and whether they’re competing or complimentary (‘the comparison test’). The interpretation of these factors can vary to take into account changes in the marketplace, but a big and expensive burden of proof can be placed on the rights’ owner to prove that the goods or services would be considered similar — particularly if they’re stretching the limits of the comparison test.
For example, other than for the most expensive brands, the trade channels for perfumes and clothing have traditionally been quite different. Therefore, they wouldn’t be judged similar and the owner of the clothing brand might not be able to prevent use in respect of a similarly-named perfume. Nowadays, however, we expect high street fashion stores to offer their own fragrances, so they may well pass the comparison test. Whether they could extend protection for clothes to cover things like candles, room scents or toiletries is still debatable.
Constantly review your trade mark portfolio
The concept of ‘wellbeing’ now means that any one brand could easily cover clothing, food ranges, exercise classes, toiletries and more. Without a forward-thinking brand owner, your trade mark protection may be found lacking. It’s therefore important to constantly review your trade mark portfolio to ensure that all your goods and services are protected, or face the difficulty of proving that consumers would make the relevant connections between your brands.
Having said this, hindsight is a wonderful thing. Not every brand owner has the insight or resources to cover all relevant classes of goods and services. In this scenario, when faced with potential infringement, you’ll need to show sufficient reputation in the goods or services such that the alleged infringer would be seen to be taking unfair advantage, diluting or tarnishing your reputation, or passing themselves off as the brand owner.
In recent cases on behalf of our clients, we’ve prevented the adoption of the mark HOOVER for lawnmowers based on a reputation for vacuum cleaners and household appliances, and CLARIDGE for candles based on a reputation for hotels.