Navigating the world of trade marks can be tricky and confusing, particularly for small and medium-sized business. The guide below intends to demystify some of the misconceptions and provide some ‘top tips’ for protecting and enforcing your brands.

Part 1 of this guide intends to cover the key considerations for trade mark protection, whilst Part 2 will cover effective portfolio policing and management strategies.

Trade mark v Domain Name v Company 

It is important to understand the difference between trade mark rights, domain names and company registration. All too often, business owners confuse these things to their detriment. Each are explained below.

Company Registration

Setting up a Limited Company (done via Companies House) is a step taken by most business owners at some point, often resulting in tax advantages whilst limiting the personal liability of the business owners and directors.

Whilst the Company Registration can be used to prevent registrations of another company with the same name at Companies House, it does not confer any trade mark rights and is powerless to prevent competitors using a particular name/brand in commerce.

Domain Name

A domain name registration gives you the right to a unique web address, essentially giving you a virtual ‘plot’ for your online offering.

However, securing a domain name does not confer any trade mark rights. As such, they cannot be used to prevent competitors using your brand. Furthermore, the holders of trade mark rights can object to the registration of a domain name should they feel it is too close to their trade mark rights.

Trade Mark Registration 

In the UK, a Trade Mark Registration enables the owner to prevent the use/application for any identical or similar trade mark for identical or similar goods/services. As such, a Trade Mark Registration is a powerful tool for any brand owner looking to protect their reputation.

Whilst there is a scheme of ‘unregistered’ trade mark rights in the UK (called ‘passing off’ rights) that are acquired through the use of a brand, such rights can be difficult to prove and enforce. It is almost always cheaper and easier to enforced registered trade mark rights.

Investing in the ‘right’ brand(s)

It is important that brand owners protect as much as they possibly can. Nonetheless, 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. Nonetheless, 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.

Seek advice from a Chartered Trade Mark Attorney

A Chartered Trade Mark Attorney is best placed to advise on any trade mark related queries that you have and can create protection strategies that are bespoke to your commercial aims and budget.

If you would like to speak with a Chartered Trade Mark Attorney, please do not hesitate to get in touch.