Trade marks are valuable assets. Good trade marks help you stand out from the competition, and allow you to take action to stop third parties using the same or a similar mark in relation to the same or similar goods and services.
Investing in your trade marks early can help you to build a really strong brand, and can save you lots of time and money in the long run.
Here are our top five tips to think about before using or registering a trade mark:
1. Be distinctive
In order to be registrable, a trade mark needs to be capable of distinguishing your goods and services from those of your competitors. You can’t “trade mark” descriptive words, just to stop your competitors from using them. So think of something catchy and easily recognisable, that is easy to repeat, and which conveys something about your brand identity. Your trade marks will be a valuable marketing tool, so make sure that you are able to protect them before investing heavily in using them.
2. Think about what goods and/or services you want to cover
Trade marks are registered in relation to specific goods and/or services, and can only be maintained where they are being used in relation to those goods and services. The more goods and services you want to cover, the more expensive a trade mark application will be. The ‘specifications’ of goods and services should be carefully drafted to give you the broadest coverage possible, but still be narrow enough to maintain. If there are similar trade marks already in use (see number 4 below) then it might be possible to craft the specifications to avoid any conflict with those prior rights.
3. Think about where you want coverage
Trade mark rights are territorial, and registered trade marks are afforded protection in the jurisdiction(s) where they are registered, so the broader the geographic coverage you want, the more expensive it will be. In the UK, it’s possible to register a UK trade mark, which will give you coverage throughout the UK, or an EU trade mark, which will give you coverage in every EU member state (which currently includes the UK, but will not post-Brexit). Most other countries have trade mark registers, and there are a number of multinational filing systems that can be used to reduce costs. It’s also possible to stagger applications for the same mark over a period of six months following the first filing, to help spread the initial cost.
4. Make sure that you’re the first to use it
If a third party is already using or has already registered “your” mark (or a mark which is confusingly similar to your mark) in relation to goods or services which are identical or similar to yours, then they may have prior rights that could be used against you should you try to register or use the mark. These could be used to block or oppose a trade mark application, as the basis of a claim against you, or to cancel a trade mark registration. Trying to overcome a challenge based on a third party’s prior rights can be extremely expensive – especially if you’re faced with a threat of trade mark infringement. Before investing in your trade mark (whether on packaging, in marketing material, or through trade mark registrations), we strongly recommend conducting clearance searches to identify any prior rights.
5. Invest now to save later
Registered trade marks are easier and more cost-effective to rely on than unregistered rights, and unregistered rights can only really be relied on if you have been using the trade mark extensively, to the point that everyone recognises it as yours. You will also need significant evidence to back this up. Trade mark applications are considerably cheaper than the investment you would need to make to develop any valuable unregistered rights and, generally, can give you protection that you can rely on before you even start using the trade mark.
Investing in clearance searches before using or applying to register your trade mark can help to identify any prior rights that could be relied upon to challenge your proposed use or registration of a trade mark. The results can be used to assess the extent of these risks, and to help you try to navigate around any identified prior rights or to make an informed, risk-based decision about whether or not to proceed with your proposed trade mark. Failing to identify these could result in increased costs that could otherwise have been avoided. This could include the costs of the application itself, dealing with a registry refusal or any third party oppositions, dealing with an infringement claim and/or cancellation action, and ultimately the potential cost of rebranding.