Your trade mark has been registered, you’ve got a nice certificate from the trade mark registry (although they’re usually just pdfs these days), now what?
Trade mark registrations can be incredibly valuable assets, but there are things that you can do to protect and enhance their value.
Here are our top five tips for protecting and enhancing the value of your registered trade mark rights:
1. Use it!
There’s little point in having a trade mark registration if you’re not going to use it – and if it’s not used as registered for a period of 5 years, then it can be susceptible to cancellation for non-use. It really is a case of “use it or lose it”! Setting up and enforcing brand use policies (both within your business and with third party licensees) can help you to ensure that your trade mark is being used consistently and appropriately. You should also keep records of your (and your licensees) use of the trade mark, as this can be very useful evidence if your trade mark rights are ever challenged.
2. License it out
Licensing others to use your trade marks could be a core part of your business model, but even if it’s not, consider whether it’s something that you could do to generate revenue in the form of license fees – especially if you’re not going to use the trade mark yourself. Whenever you do allow someone else to use your trade marks, it’s important to ensure that you have a licence agreement in place, in writing and signed by both parties, clearly setting out the terms on which they can use the trade mark (including a requirement to pay license fees) and any prohibitions on use (e.g. by including a clear brand use policy, to make sure that the trade mark is only used as registered and in a manner you’re happy with). It’s also helpful to have provisions within that license agreement requiring the licensee to keep evidence of use of the mark and provide it to you on request.
3. Stamp out unlicensed use
Registered trade marks give you a monopoly right, but that can be weakened if you allow others to use the trade mark without your permission. Taking action against infringers can help you to maintain that monopoly right and can help to ensure that your mark stays distinctive and purely associated with you (which is, after all, the main purpose of a trade mark!). There are lots of monitoring tools available to help you to identify whether any third parties are using or trying to register your trade mark (or a similar mark), so you should use these to keep an eye on the market. Taking action doesn’t always mean costly court proceedings. Where you have registered rights, a simple letter can often be enough to persuade a third party to stop doing something you’re not happy with.
4. Take over the world
As trade marks rights are territorial, it’s important to ensure that you have protection in all the countries where you want to do business – and in most countries, it’s important to get your application in before anyone else, even if you’re not active there yet. This doesn’t necessarily mean filing national applications everywhere in the world, as you may not need protection everywhere. There are also some multinational filing systems that you can use, which can make international filings more simple and cost effective. You don’t need to file everything in one go, as once you’ve filed your first trade mark, its usually possible to file an application for the same trade mark in other jurisdictions within a six month “priority period”, in which case the applications you file in that period will effectively be backdated to the date of the original application (trumping anything filed in the interim).
5. Renew/rationalise your portfolio
Trade mark registrations generally need to be renewed every 10 years. For big portfolios that can mean a lot of expense. Keep track of your trade mark registrations to make sure everything you are using is renewed on time, and consider selling or licensing any unused trade marks, to generate some revenue for them, before letting them lapse.