29th March 2022

Protecting your brand – how to avoid trade mark disasters

What’s in a name? When it comes to business, it can be everything – and failing to properly protect the names, words, logos and designs that identify your brand can be a costly mistake.

With the right preparation and advice from intellectual property experts, you can avoid trade mark disasters and ensure your business sets off – and stays – on the path to success.

Here are some of the most common pitfalls and mistakes we come across.

Being slow off the (trade) mark

Sometimes entrepreneurs can be so focused on the brilliant product, service or idea they are developing that they forget to get the fundamentals in place. This can mean they leave it too late to secure their trade mark protection.

Ideally you should apply to protect your brand as a trade mark before you start to market the business and others become aware of your brand. This can prevent someone else registering a name or logo the same as or similar to yours before you get the chance to do so, either coincidentally or with more malicious intent.

So – do your research, get in early and make sure trade marks are secured well before your brand starts to get traction in the market.

Not carrying out thorough checks and searches

Marketing a brand takes time and money, and before you launch your new venture, you should carry out extensive due diligence. This includes checking that there is not another business out there with a similar name, logo or brand.

Failing to carry out these checks in advance can lead to problems later on if a competitor or other business disputes your right to use the brand. If this comes after you have made a financial investment in branding and started to build a reputation for your company, you will end up wishing you had been more thorough at the outset.

A good Intellectual Property law specialist will carry out clearance searches at the relevant Intellectual Property Office before making trade mark applications. You will then be advised of any existing marks or applications which may be too similar to the mark you intend to apply for.

A lack of completeness in securing all the relevant rights can also become a hurdle further down the line if you intend to sell your business. In the process of carrying out their own due diligence, a potential purchaser may uncover a problem that could scupper the deal – a serious setback in your efforts to capitalise on the hard work you’ve put into your business and brand.

Not getting all the rights and agreements you need

As you build your business and brand, you are likely to work with external suppliers with whom you should have binding contractual agreements. This should make it crystal clear who owns the intellectual property rights of the work you produce together,

For example, if you use a brand designer or external agency to create logos, brand messages and other content, they may own the intellectual property for those elements. It is crucial that you own these assets – and you should seek legal advice to make sure that you have written agreements signing copyright over to you.

Not being specific enough…

The devil is always in the detail – variables such as the exact words used, design elements and even punctuation can dictate how well your brand is protected if your ownership of it is challenged.

It’s also important to be specific about the goods or services you want the trade mark to protect. This is because trade marks are registered in respect of specific classes for goods (such as ‘clothing’, ‘cosmetics’, ‘machinery’ ‘pharmaceuticals’) or services (such as ‘advertising’, ‘education’, ‘financial services’ or ‘accommodation.’)

Within those classes, you need to further specify the goods and/or services you wish to protect. So, for example, if you are applying for a trade mark in class 36 for financial services you would need to specify the services you intend to supply, such as ‘insurance services’ and ‘brokerage’. This is because two businesses could have trade marks which are the same or very similar but which coexist because they cover very different things.

For example, one business that manufactures play equipment for children could register ‘Jungle Gym’ in the relevant goods and services and another business could register the same mark for goods and services relating to a monkey sanctuary. This is because the two businesses are very different and not likely to be confused as being connected to one another.

The classifications and specifications are a very important part of trade mark applications and the part of the process you are most likely to require professional assistance with. If you get it wrong, your trade mark may not protect your brand and could be challenged by a competitor or other business.

… or being too specific

As well as zooming in on the detail, it’s important to take a step back and look at the bigger picture. What might you have missed? Being too focused on one element, such as a logo, may mean that you secure all the necessary rights for that but miss other elements.

In particular, you should make sure that your “word marks” – your business’s name and any words you want to be closely associated with it – are protected as well as your “device marks” which apply to your logo. In many cases the word marks give your brand more protection, so overlook them at your peril.

Failing to renew your rights

Once you’ve secured your trade mark, you’ll want to hang on to it!

Trade marks expire 10 years after the filing date, and can be renewed from six months before the expiry date. You can also renew up to six months after the expiry date within a grace period but the fees you will pay to the UK Intellectual Property Office (UKIPO) for renewal will be higher than for renewing before the expiry date.

If you belatedly realise a trade mark renewal has been missed, so long as you are within the six month period following the end of the grace period (i.e. it has been more than six months but less than 12 months since the mark expired) you can apply to restore the mark to the register. You will however need to show good reason for not renewing within the term or the grace period.

If it is more than 12 months since the expiry date of the mark you will need to file an application for a new trade mark – essentially starting all over again.

Failing to protect your brand

Just as others may challenge you, you should be vigilant and actively manage your trade mark by taking action against third parties who you become aware are using a name or logo similar to your registered trade mark. Failing to do this can lead to your brand being diluted or damaged.

If a third party makes an application for a trade mark which the UKIPO feels may be similar to your trade mark they should notify you, so you have the opportunity to oppose the third party application to prevent it being registered.

If a Thrings Intellectual Property specialist makes a trade mark application for you, we will remind you ahead of the renewal date. We will also monitor correspondence from the UKIPO in relation to similar applications being made by third parties and advise you when we feel it is an application you should consider opposing.

Find out more with our free webinar

Find out exactly what is meant by Intellectual Property and why it is so important for you and your business to protect your brilliant ideas, innovations and inventions with our free webinar.

Join experts in the field of Intellectual Property for business – Megan Jefferies, head of IP at Thrings LLP, and Andy Leppard, partner and patent attorney, at Script IP. They will discuss how to protect your vital company brand and key inventions and innovations: Join here.

How we can help

We are able to assist you with clearance searches and trade mark applications in the UK or overseas. If you would like to discuss registration or any other aspect of brand protection or intellectual property please contact: Megan Jefferies.

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