Introduction
The guide below intends to provide helpful pointers to brand managers with regards to protecting and enforcing the brands under their care.
Part 1 of this guide will cover crucial considerations when beginning to protect a particular brand, including key considerations for protecting your brand in the UK and elsewhere.
Investing in the ‘right’ brand(s)
It is important that brand owners protect as much as they possibly can. , not all brands are created equal, and some brands are easier to enforce than others. Ideally, a brand needs to be distinctive and unique.
In order to be registrable, a trade mark must not be descriptive and/or non-distinctive with respect to the goods/services covered. When a UK trade mark application is filed, the UK Intellectual Property Office (UKIPO) examines the application to make sure that the application does not fall foul of these requirements. It is their job to ensure that nobody can acquire powerful monopoly trade mark rights for words, phrases or images that others within the industry legitimately expect to be able to use.
Some brand owners are happy with a brand that has a ‘does what it says on the tin’ message. That is of course a legitimate commercial choice. , any brand owner that goes down this path must be mindful of the risks and pitfalls.
Without a trade mark registration, the only way to attempt to prevent others using your brand is to rely on unregistered trade mark rights acquired through use (also known as ‘passing off’ rights). Indeed, it is very difficult to prove the existence of passing off rights for descriptive/non-distinctive trade marks.
Before applying to register/use a particular brand, it is strongly advised to conduct searches to ascertain what existing trade mark rights could block your path. Essentially, it is to find out whether anyone else has beaten you to it.
Trade mark clearance searches (involving a search of the UK trade mark register) are used to ascertain whether there are any earlier rights that could block your path (i.e., is your brand ‘unique’ or merely the same as/similar to an existing brand). For any new brand, it is strongly recommended that clearance searching is conducted prior to applying for/using the brand helping to avoid an embarrassing and costly rebrand further down the line.
The more distinctive and unique your brand is, the easier it is to register and enforce.
Defining your offering at the outset
When applying for trade mark protection, it is necessary to declare what goods/services you wish to protect your brand for. Goods and services are divided in 45 separate ‘Classes’.
Before applying for a trade mark application, think carefully about what Classes best reflect your current offering, as well as what is likely to be your offering in the short to medium term.
This helps to avoid ambiguity further down the line as and when it becomes necessary to ‘prove use’ of your trade mark (see discussion below).
Deciding what person/entity will be the owner of any trade mark applications at the outset is also crucial. Arranging and recording a change of ownership at a later date will incur further costs.
International considerations
Trade mark rights are territorial rights, meaning that they are enforceable only in the territory for which they apply. For example, a UK trade mark registration can be enforced against entities trading in the UK, but not in Europe.
Consequently, brand owners should seek trade mark protection in every territory where they are using the brand. There are some cost-effective ways of obtaining protection in several territories at the same time. For example, a pan-EU trade mark registration is enforceable in all 27 EU member states, and the ‘Madrid’ international trade mark system allows an application to cover multiple territories within the same filing (assuming that those territories are a party to the international system – the system at present covers around 130 different countries).
All of the considerations for UK trade mark protection discussed above also apply when seeking to protect your brand abroad i.e., is the brand distinctive in that territory, are there earlier rights that could be problematic etc. It is always pertinent to seek advice from local attorneys on these points.
Brand owners should carefully consider the appropriate brand identity in each territory. In an ideal world, most brand owners would want the same identity and brand messaging across the board, but this is not always possible. The brand may be a strong one in the UK but could have unfortunate and/or distasteful connotations/meanings in a different country.
There are countless examples of accidental branding faux pas. For example, Coors ran a branding campaign with the strapline ‘Turn it Loose’, without realising that this phrase is used in Spain to refer to someone suffering from diarrhoea. Taking local advice is crucial.
Indeed, perhaps the brand has already been ‘taken’ in another territory, and a different brand identity is required in certain localities to avoid infringing other brands.
Care must be taken to avoid investing in a brand internationally that could fall into one of these traps, resulting in a painful and expensive rebrand.
Equip for the modern world
As technology evolves and consumer trends change – so do the IP and trade mark challenges. Accordingly, brand managers need to react and respond to these challenges. Some of the most prevalent modern-day challenges include:
1. Dupes
and leaders attract envy from competitors; invariably, this envy encourages those competitors to cut corners and take advantage of the goodwill and reputation accrued by the brand leader. ‘Dupe’ products are routinely used by discount supermarket chains to try and mimic the brand leader, using similar packaging and colour schemes to try and deceive consumers.
Consider what steps you can take to minimise these risks. The most successful brand owners look to protect whatever they can. For example, alongside your ‘core’ brands, consider also filing to protect product labels, mock-ups and packaging wherever possible. In the recent ‘Thatcher’s v Aldi’ case (see here), the brand leader (Thatchers) enjoyed success when tackling Adli’s ‘dupe’ product largely because of their trade mark filing strategy.
2. Social media
Social media has connected the world in ways that could not have been imagined 20 years ago. Social media has opened a window to countless opportunities for brand owners, offering an entirely novel sales and marketing dimension.
, this is a double-edged sword, and the consequence of this massive exposure is massive vulnerability. Social media is awash with bad faith actors and flooded with offers for counterfeit goods and fraudulent posts.
Are you in a position to react if one of your brands is attacked?
As brand manager, you should know what steps to take to monitor and enforce your brands on social media. Social media platforms usually have IP takedown policies and notices – as a brand manager – it is imperative that you have knowledge of these policies. The specifics of this are discussed in Part 2 of this guide.
3. AI
AI has the potential to revolutionise the world and will undeniably have some positive implications for humanity as a whole.
, AI in the hands of bad faith actors is bad news, particularly for big brands. AI ‘deepfakes’ are a particular challenge, with it being increasingly difficult to differentiate between the real and the fake. A robust trade mark strategy is the best means of defence against this risk.
Conclusion
Effective brand protection begins long before a dispute arises. Choosing a distinctive brand, securing appropriate trade mark protection, and considering international and modern commercial risks at an early stage can significantly strengthen your position as your brand grows.
Taking the time to build a robust protection strategy at the outset helps avoid costly obstacles, rebrands and enforcement challenges further down the line.
In Part 2 of our Top Tips for Brand Managers series, we look at how to manage, maintain and enforce your trade mark portfolio once protection has been secured, including record keeping, portfolio audits, enforcement strategies and brand governance.
If you would like guidance on protecting your brand or developing a trade mark strategy, our trade mark attorneys are happy to help.
Contact our team to discuss your brand protection strategy.