To many the trade mark is simply a document that records a
business name at the local trade mark office. It's not
compulsory and it takes so long to obtain, that it is frequently
dismissed as an irritation. Ok, it's relatively cheap but why
else should one pay more attention to our friend, the registered
trade mark and those who look after it within the business?
Well, in short, it is the title deed to your brand. Your brand
is, of course, everything that encapsulates and communicates your
business, everything that keeps customers coming back. It may be a
name, it could be a slogan, it could be colours, it could be three
dimensional, it could even be a smell and all of these are capable
of being registered as trade marks.
Ok, so what's the fuss? Well, properly obtained, these title
deeds can be listed in your asset register. They can be valued,
used to raise finance and sold separately from the business. They
can be let for cash or be allowed to sit passively, preventing
others from communicating their offerings in a number of ways. They
protect the value generated by your brand. They protect market
share both actively (in the hands of an attorney) and passively
(just by sitting on the register).
But just like a Verimark ad - that's not all! The trade mark
can be attached in legal proceedings to enable jurisdiction of
South African courts or they can be used to transport goodwill into
a diversified space that may just provide a hedge for your
business, or enable it to grow. They can also be transferred to
enable efficient tax planning or to reduce the exposure of assets
to business under duress.
Brand protection using a registered trade marks is at least a
50% less costly than using alternatives methods such as passing
off, and there is significantly less risk to the proceedings.
It's a defence to a trade mark infringement thus minimising the
risk of the dreaded urgent court order for a product withdrawal
and, in the growing social media space, the registered trade mark
is frequently the only method of safely removing hijacked or rogue
sites aimed at discrediting your business or holding it to ransom
for a fee.
Still not convinced, consider the recent ISO standard (ISO
10668) for brand valuation which requires an audit of the legal
protection of a brand as a fundamental step in its valuation.
Skype's IPO which disclosed an everyday opposition against
BSkyB as a material threat to its brand, illustrates the
correlation between proper trade mark management and the value of
So, the next time you find yourself assigning an office admin to
look after a seemingly endless list of trade mark enquiries and
small bills, or dismiss them as an irritant, please stop and
reconsider. They protect probably the most important asset in your
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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