Brand protection

Brand protection is becoming increasingly important to all types of businesses as the European Union enlarges and more competing businesses enter the same market. Many companies neglect this area of intellectual property and leave themselves vulnerable to attack from similar companies operating in the same space. Businesses must face the fact that if they don’t register their brand as a trade mark they could very easily lose them. 

Registered trade marks, as well as being a transferable property right which add value to a balance sheet, enable their owners to prevent competitors from using the same or similar brand names or logos. 

Registration of a brand as a trade mark grants the owner a statutory monopoly in the mark, which means they would have the right to sue, for infringement, when another party uses the same or a confusingly similar mark relating to the same or similar goods/services to those covered by your registration. 

A trade mark readily distinguishes a product or service from that of its competitors. In other words, it has to be distinctive and non-descriptive. It should not theoretically consist of words, which are commonly used/needed in the trade that is being carried out. 

It is still possible to rely on the law of 'passing off' in order to implement rights in brands. However, actions for passing off are complex and costly and owners require a substantial and exclusive reputation in order to succeed. 

Any individual or corporate body (e.g. Company, Trusts etc) may apply to register a trade mark as long as they intend to use it. 

ADVANTAGES OF REGISTERING BRANDS. 

Registration acts as proof of ownership and entitlement to the brand and owners are entitled to prevent competitors from using the same or similar trade marks on the same or similar goods. 

Registration grants a statutory monopoly in the brand. Even if a competitor at a later date comes to the idea totally independently, the owner of the registration still has the right to sue for infringement, when another party uses the same or a confusingly similar brand (trade mark) relating to the same or similar goods/services to those covered by the registration. 

Registration enables, without proof of actual damage, an infringement action to be brought against any identical or similar mark adopted after the filing date, for identical or similar goods, or where there is likelihood of confusion or association with the earlier trade mark. 

Registration can be obtained before the brand has been used as long as there is genuine 'intention to use it. 

Registration gives 'security of mind' to the owners of the registered mark. Owners of similar but unregistered brands cannot claim infringement but have to rely upon common-law rights. 

Any individual or corporate body may register a trade mark. 

Registered brands are classed as intellectual property and ownership can be transferred, or the rights to use the mark can be licenced. 

Owners of registered trade marks cannot be sued for trade mark infringement for use of the mark in relation to the goods/services of the registration. 

Unlike patents and designs, Trade Marks remain registered as long as the renewal fees are paid every 10 years. 

PROTECTING YOUR BRAND - THE PROCESS (UK applications) 

In general it takes six to nine months to register an uncomplicated brand as a UK trade mark. The final registration date is backdated to the date of application. Costs vary, but on average are approximately £1000 per mark in a single class. This reduces for additional classes filed as multi-class applications and increases where there is objection or opposition. 

Trade mark applications are dealt with on a 'first filed' basis. It is therefore prudent for an owner of a mark to file as soon as possible. We recommend that applications be filed at the conception stage of a product or service, allowing time to be registered before a product launch. Full word searches conducted in three or more classes are charged at a discounted price. 

We also need to know if there are any logos associated with your trade mark or if you intend to use the mark in any particular stylisation (colour / font). Logo searches have to be conducted separately. As previously, we would be pleased to cap the cost of logo searches in three or more classes. 

We recommend that a trade mark is filed exactly as it is intended to be used. If colour is involved, we recommend filing a series of marks in the UK to include the colour version as well as in monochrome. In other countries this means either filing more than one application or choosing one colour or monochrome version. Should the version in monochrome achieve registered status, this should allow use of the mark in any colour. 

Once a UK trade mark application is filed it is examined to determine whether it is acceptable as a trade mark, including whether there are conflicting earlier trade marks on the Registers. If the mark is acceptable it is advertised in the Trade Marks Journal for a 3 month period during which interested parties are entitled to object to its registration. If it is not opposed then the mark is registered. 

PROTECTING AND REGISTERING YOUR BRAND IN THE EUROPEAN COMMUNITY 

If you intend to trade in the future in other EU countries, it is important and cheaper to register from the start in the European Community. Therefore for slightly extra cost you get protected in 25 countries. 

It is possible to register a trade mark for the whole of the EU by filing a single Community trade mark application. 

It costs in the region of £4,200 to register an uncomplicated Community trade mark. 

It takes an average of 18 months for a Community mark to be registered, assuming it is not opposed. Unlike the UK system Community marks are not examined on prior rights, which means that owners of similar brands have to challenge each other as to who owns them. 

BRANDS – AFTER REGISTRATION 

Upon registration, the details of the registration and its owner are entered on the trade marks register. Third parties can search the register in order to check whether particular marks are available for use. A registration thus alerts third parties to the existence and ownership of trade mark rights. 

There is no formal record of unregistered marks, making their existence and ownership uncertain. 

It is estimated that in the region of 30% of research and development conducted in Europe is wasted on products, which already exist. Early filing deters competitors from pirating the Mark. 

Owners of trade marks need to be vigilant to ensure that their marks are not being used by third parties. We recommend subscribing to a name watching service, which will alert you to applications made for the identical or similar trade mark in the jurisdictions where you trade. This is particularly important as the Community System will accept the same trade mark in the name of various owners, for the same or similar goods/services.