According to Brand Finance, Amazon now has the most valuable brand in the world, valued at a whopping USD 187,905bn. While not every business is an Amazon, all have important brands that should be protected. Here are six key steps for anyone to follow to ensure that your brands, which may well be your most valuable assets, are protected with IP rights — affording you legal exclusivity.
1. Choose a distinctive brand that isn’t descriptive
Descriptive trade marks are simply those which describe the goods or services they are used to identify — such as if ‘Apple’ sold apples. Such marks may not be memorable in the minds of customers, and can be difficult (and in some cases, impossible) to protect with IP rights.
Choosing a brand name that has a little more character than something which simply describes the goods, or a characteristic of them, gives you a much more distinctive brand. This also makes it easier to keep your competitors at a distance. Invented words, such as XEROX, can also provide the broadest protection, as they have no meaning in your industry (such as EGG for financial services).
You may want to read our guide on what makes a good trade mark and choosing a brand name, for more information.
2. Search before committing
You’ve thought of a great brand name for your product or service. Rather than go full-steam ahead to launch, spending lots on materials and packaging, your next step should be to conduct ‘searches’ to find out whether this brand name is actually available for you to use or register.
If someone else already owns a trade mark registration for the same or a confusingly similar brand as the one you have chosen, your use might infringe their rights. If someone else is already using the same or a confusingly similar brand then your use could constitute passing off. Infringement and passing off could see you be taken to court.
It’s sensible to conduct some of your own searches of competitors’ websites and trade mark registers to make initial assessments, but bear in mind that clearance searches from specialist trade mark attorneys provide the best possible view of any risks you may face before you commit to and invest in a brand.
3. Register a trade mark
A registered trade mark gives its owner the right to stop others from using the same or a confusingly similar brand in relation to the same (or similar) goods or services. This is a powerful monopoly right. Without it, if someone copies your brand, your only option to try and stop them is to rely on unregistered rights under the law of passing-off in the UK. This would be much more difficult and expensive to do than if you have a registered trade mark . At worst, this may not even be an option that’s available to you.
With this in mind, it’s always better to secure trade mark protection at the earliest possible opportunity. Any costs involved will be much more manageable than those involved in legal proceedings further down the line if you’re having to rely on unregistered rights to make your case.
4. If you enter a new market, or expand your product or service offering, repeat steps 2 and 3
Trade mark rights are territorial — a UK registration gives rights only in the UK, for example. If you’re expanding into new markets, searches should be run in to assess infringement risk and you should consider registering your own trade marks there.
If you use third parties to distribute your products or services abroad, you should ensure that your trade marks are registered in your name. Often, distributors will take the opportunity to register IP in their name, which would technically mean that they owned the infringement rights in that country, rather than you. There can be ways around this, but it’s usually more expensive and less certain to try to recover rights, rather than simply registering them yourself in the first instance.
If you’re expanding your product or service offering under a brand, then again you should consider new searches and filings for registered protection.
5. Police and enforce
To maintain value, IP rights should be looked after. This means that you should police use and registrations by third parties, and take action where you feel your rights are being infringed, your reputation taken advantage of, or your brand’s distinctiveness eroded.
Trade mark ‘watches' can be set up to enable you to keep an eye on trade mark applications that are being filed. This ensures that you identify any potentially conflicting applications early and take a decision as to how you might want to deal with them. The UK and EU IP Offices won’t refuse a trade mark application on the basis of identical or similar earlier rights, so if you want to stop something going through, it’s up to you to raise an objection (usually in the form of an opposition). We also recommend that you set up domain name watches, as this can often provide an even earlier indication that a third party is trying to get into your space.
Ultimately, you should keep an eye on the marketplace and your competitors to ensure they don’t adopt any marks which come too close to yours. Allowing unauthorised third parties to use trade marks can dilute your brand, reduce its value and weaken any rights you might have. Furthermore, if lots of entities are using the brand in a manner to describe the product rather than indicate origin, the brand can ultimately be considered generic — and if this can be shown, your registration may be revoked.
To maintain the value and validity in your brands and registered rights, you should be prepared to police and enforce them when necessary.
6. Use in the correct way
A trade mark should be used to denote the trade origin of a product or service, not to describe the product or service itself. If it’s used incorrectly, a brand can ultimately become generic (think Aspirin for a good example of this) and you can lose your rights.
It’s also necessary to use a trade mark in the form in which it’s registered. If you use a different version, your registration can become vulnerable to being cancelled after five consecutive years of non-use.
If your brand changes over time, new applications ought to be filed to ensure that your registered rights match what you’re using. This ensures that you have suitable enforcement rights and also that your registration isn’t vulnerable to being cancelled for non-use. If your brand changes substantially, fresh searches are also advisable to ensure that your use of any new elements doesn’t present an infringement risk.