Securing trade mark registration for your brands is now more important than ever. Deirdre Kilroy and Brian Johnston look at the difficulties faced by those who failed to register their brands early and how registering can maximise your brand identity online.
Businesses often assume that a social media name (such as a Twitter handle or Facebook username), a business or company name, or a domain name will be enough to protect their brand name. It isn’t. The only way to be sure that you have exclusive rights to your trading identity is to register the mark, logo, colour, slogan and so on as a trade mark. A trade mark registration offers brand owners a robust, frontline defence to prevent impersonation, dilution and exploitation of their most valuable intangible asset – their brand.
What could happen to my brand if I haven’t protected it?
Nowadays, businesses are facing threats from fake websites passing themselves off as the real thing, fake Twitter and Facebook accounts, and the sale of counterfeit goods on websites such as eBay. If they’re not policed properly, these threats will directly affect the brand image and business of an organisation and they can drive away existing and potential customers.
Having a registered trade mark will not stop others trying to impersonate or exploit it, but it will make it much easier and cheaper to stop them from doing so. Many social media websites, online auction sites, hosting providers, and other website operators, have what are known as ‘notice and takedown’ policies. These policies set out when a service provider will respond to a request to remove content, branding or goods. Demonstrating the existence and infringement of a trade mark registration is often a necessary requirement for ensuring that swift action will be taken to protect your brand online. For example, generally on Twitter, impersonation is not enough to require an account to be deactivated unless an element of deliberate confusion or deception is present. However, action will be taken to deal with an account that infringes a trade mark.
A trade mark registration also provides for more direct enforcement and policing of your brand. It can form the basis of a ‘cease and desist’ letter and litigation against those trying to exploit your brand, if it should come to that. While other legal routes exist to protect against the misuse of a word or a logo – such as an action for ‘passing off’ – none is as effective, both in terms of time and cost, as being able to rely on infringement of a registered trade mark.
What if I just wait until my brand has really taken off before trying to protect it?
There are many examples of businesses (particularly start-ups) failing to register their brand due to considerations of time, cost and so on: just ask Twitter itself. The social media giant was founded in March 2006 and rapidly gained popularity. Despite this, steps weren’t taken until 2007 to register the trade mark ‘Twitter’ and it wasn’t until 2009 that it tried to register the now-familiar ‘t’ logo and the trade marks ‘Tweet’ and ‘Retweet’.
Because it didn’t invest in its growing brand by registering trade marks early, Twitter had no straightforward, cost-effective way of preventing others from using ‘Twitter’ or similar variations in an attempt to free-ride on the popularity of Twitter. Predictably, lengthy and avoidable litigation ensued. Twitter also incurred further expense in subsequently having to take steps to secure the rights to its brand by having to block numerous applications in the USA to register trade marks for Twitter, Tweet.me, Tweetmarks and others.
The lessons learned from Twitter’s trade mark difficulties do not just apply to large organisations; small and medium-sized businesses also need to take steps at an early stage to protect their brand.
The bottom line
The bottom line for any business is this: if you think, hope or dream that one day your business and your brand will be worth something, then you cannot risk not taking the necessary steps now to secure the rights to it – for a fraction of the effort and cost of doing so later.