A business’ brand is the foundation on which the business is built – it’s how customers find their way back. It’s important. It’s capable of being sold, licensed, franchised or stolen. Investing a few hundred pounds in registration in the territories in which it is to be used enables the first three. Failure to register assists the fourth.
Originally produced for Pro Manchester’s SME Club, Joanne Goodchild highlights the need for trade mark protection when building brands within business.
Misconception: the first use of a trade mark is determinative
Not necessarily. Using a trade mark without registering puts a business in a very vulnerable position – if a competitor registers your trade mark when you are just starting out and before you have generated goodwill then they could force you to rebrand. Register first.
Registration doesn’t give you the right to use a trade mark. Registration is a “negative” right, enabling you to prevent competitors from subsequently adopting the same or similar trade mark.
I’ve already registered my name with Companies House
Companies House name registration is not the same as trade mark registration. It gives no trade mark rights in the name itself.
The only way of checking you are safe to use a trade mark is by searching for potential sources of objection using resources such as trade mark registers and online to ascertain risks from trade marks that are registered or those that might have generated protectable goodwill in the UK.
Choosing a descriptive name is perfect – it does just what it says
Customers will have difficulty finding you in a sea of competitors if you use words that are common in your business field. Be different, be bold and be distinctive. It increases your chances of securing registered trade mark protection and makes your rights easier to enforce.
Official looking invoices for registering your trade mark in a “publication” should be treated with caution. Only the UKIPO and EUIPO can grant trade mark rights covering the UK. Similarly, emails from domain name registrars warning of the imminent registration of a domain name incorporating your trade mark could just be a way of generating business. If you want the domain name, register with a trusted registrar.
It is important to be a responsible trade mark owner. If allegations of trade mark infringement are not appropriate you may find yourself at the receiving end of an action for “unjustified threats”.
It is an offence to falsely claim that a trade mark is registered, including the inappropriate use of ®. Care must be taken to register the mark as used and to ensure that that it is used in the form registered, and for the goods or services listed.
Allowing someone to use your intellectual property, usually in return for payment, is a common method of trade mark exploitation. However, not licensing properly can endanger the rights that are providing the income.
