UK: All Businesses have Intellectual Property: Part 2

All businesses have a trading name. Most modern businesses also have a website domain name and more often than not, one that is the same as the trading name. The importance of these two names cannot be stressed enough – both underpin your business by clearly identifying it so customers can find you and your products, which increases the value of your business by developing its goodwill and reputation.

Failure to adequately protect these names can be catastrophic for a business. It can lead to dilution of your brand identity in the marketplace and could ultimately result in reduced sales and a loss of market share for your business. A complete rebrand may be the only solution, but this is time consuming and expensive.

In the second of her three part series, Emma Lambert explains how to use and protect your names to strengthen your market position.

A trade mark is a sign or device that is capable of distinguishing one business (or brand) from another. A trade mark can be made up of words, signs, shapes and numbers¹. It can also include personal names.

Pictons’ IP Team has written extensively on trade marks in recent months and more information can be found in the Intellectual Property section of our website at www.pictons.com.

• Who owns a Trade Mark?

A trade mark is owned by the person or business who has registered it and/or used it for long enough to have established a reputation in it (unless another business was using the name first, in which case that business can claim priority).

Trade Mark ownership becomes more complicated when you consider that copyright may also subsist in your corporate logo. Copyright exists in drawings, logos, pictures and stylised words which, when used in the course of business, can identify your business and the goods or services you provide. So, although you as the business owner may own the trade mark, you may not own the copyright as you did not design the logo yourself .

Often problems arise when a business commissions someone else to design a logo. Just because you are the commissioner does not mean you automatically own the copyright, enabling you to register it as a trade mark².

So, for the purposes of logos created by designers or employees the same rules apply as for copyright - if an external designer created your logo, it may be that the designer owns the rights in the design and you (as the commissioner) only have an implied licence to use it in certain circumstances. That is, unless a formal agreement has been made with the designer, which assigns all rights to you. However, if one of your employees created your logo as part of their employment, copyright will be owned by the company unless circumstances dictate otherwise.

• How can you protect a Trade Mark?

As with designs, trade marks can be registered and unregistered. Their rights and protection differ depending on their status:

The best form of protection for a trade mark is to register it. It is always far easier to claim infringement if you have a certificate of ownership with your name on it. Plus, the process of trade mark registration includes a search of the trade mark register which will quickly tell you if another business has already registered the mark you want to use for your goods or services. (If a third party has registered the trade mark you have been using there are various strategic options that may be available to you. Your IP Specialist will be able to explain those options.)

It is possible to obtain trade mark registration in almost every country around the world. The Community Trade Mark is popular with UK businesses and now covers all 25 countries of the EU. As with designs, you can check trade mark registrations online. Go to the Patents Office website at www.patent.gov.uk/tm/dbase/index.htm to search for UK trade marks or the OHIM (the Office for Harmonisation in the Internal Market) website at http://oami.eu.int/en/default.htm#_Hlk72041254 to search for Community Trade Marks.

Unregistered Trade Marks

Trade names, logos and brand names that are unregistered can be protected in the UK by asserting a claim of ‘passing off’. To increase your chance of success, you need to prove you have gained a reputation in the name with evidence such as marketing, advertising and/or turnover figures. Gathering such evidence from your clients and the marketplace can be a costly exercise.

If your mark is unregistered, it is possible to warn people off, by marking it with TM. You can indicate that a trade mark is registered by printing ® next to it. However, please note that it is a criminal offence to mark an unregistered trade mark with ®. The differences between registered and unregistered trade marks are explored further in my previous article ‘Trade Registration – v – Trade Use’ (to read this article please click on the 'Next Page' link at the bottom of this page) .

• General Trade Mark protection points

If you have a trade mark – registered or unregistered – use it as much as possible on your marketing materials such as headed notepaper, business cards, packaging and your website. The more exposure you get, the faster you will develop a reputation. Make sure you keep the representation of your mark consistent – use the same colours, font, design and name. Varying the way in which the trade mark appears dilutes its value and can make it difficult to claim trade mark infringement.

To maintain a strong brand it is also important to oppose applications for trade marks that are identical or similar to your own – particularly when the applicants are trading in similar goods or services. An excellent, low maintenance way of preventing similar marks entering the register is to use a service like Pictons’ Watch It! Service. Services such as this monitor trade mark applications in each geographical territory you trade in. You will receive a regular update of all marks applied for that are identical or similar to yours. If you use the Pictons’ Watch It! Service, your contact in the IP/IT Team will advise you as to which applications you should take action against and those you can ignore. If you value your brand and take brand protection seriously, this is an essential yet cheap tool.

And remember the saying "Use it or lose it". If you have not used a registered trade mark for 5 years, a third party can apply to have your mark revoked. If your trade mark is unregistered then sustained usage is even more important. There are cases where rights in an unregistered mark have been lost within 3 years of non-use as the goodwill attached to the mark had evaporated.

The final tip, which applies to all IPRs, is to keep clear and up-to-date records. Record the date that the name or logo was created, who created it, when it was first used/marketed and whether or not it was registered (so you can keep track of renewal dates). Your IP specialist will track renewal dates for you but having your own record allows you to regularly review your intellectual property portfolio – this is particularly useful when budgeting for renewals. It will also help you to make decisions about whether renewal of a trade mark is appropriate, considering the present direction of your business.

Much of my advice about trade marks applies equally to domain names as they are the way your company is identified and located on the World Wide Web.

• What is a Domain Name?

A domain name is a means of identifying an Internet website. Each domain name sits on what is called an Internet Protocol (IP) address – a sequence of numbers that directs you to the computer server that is hosting the website. The Domain Name System translates domain names into the IP address.

The ‘name’ part of your domain name is referred to as the second level domain name. So, in www.pictons.com, ‘pictons’ is the second level domain name. Top level domain names (TLDs) are generally split into two types – generic and country codes. Generic TLDs are .com, .org and .edu and can be used globally by entities that comply with the registration requirements. Country Codes are designated to countries. Examples are .uk for the United Kingdom, .tv for Tuvalu, and .jp for Japan.

No two IP addresses can be the same and so each domain name is unique. However, it is possible to have two identical second level domain names as long as the TLD is different – for example, pictons.co.uk and pictons.com. Therefore, a third party can register a domain name which includes your trading name/trade mark.

• Who owns a Domain Name?

The basic principle is that the person who registers a domain name owns it unless there is evidence to the contrary. For example, registrations in ‘bad faith’ can be reversed where the sole purpose of the registration was to extract payment from a business legitimately using a similar or identical name. In May’s edition of "In The Know" we wrote about Google obtaining the domain name "Froogle" from a third party registrant who had no legitimate interest in the name. This is a very good illustration of how bad faith registrations are being overturned in practice. In fact, Nominet – the registrar for .co.uk domain names – provides a free dispute resolution service to handle these conflicts over ownership.

To avoid a name being registered by a third party when setting up a new company, it is important to register the company name and domain name on the same day. We have had a number of clients who neglected to do this and discovered, the very next day, that a third party had registered their name. We can only conclude that the third parties making these registrations are monitoring the Companies House register.

• How can you protect a Domain Name?

The best way of protecting a domain name is to use it. Even if it is not your main domain name, have it pointing at your server to pick up traffic. Pictons owns pictons.com and pictons.co.uk – pictons.co.uk is the domain name we have on our stationery but pictons.com is used to capture customers who type in this address instead of the .co.uk alternative. We recommend that clients try to register both domain names and use them in this way if they can.

The best domain names are those which are identical to your business name or your brand as they maintain consistency. Consistent use of your business and brand names will give more credence to a claim of bad faith registration or similar.

Also, when registering a domain name, consider how your customers identify your business. Perhaps they refer to you as "Joes" rather than "Joe Bloggs" in which case it is more likely that your customers will look for "Joes" when trying to find you on the web. So, the domain names www.joes.co.uk and www.joes.com are also worth registering to divert traffic to your website. Registration of additional domain names like this can be a shrewd move. (If you discover your customers refer to you other than by your company name, you may wish to consider rebranding. Your IP specialist will be able to advise you on this.)

When you apply to register your domain name you may discover that someone else has already registered it. If this is the case you should consider your usage to date and how the domain name is being used by the registrant. It may be possible to retrieve it if you have been using it legitimately and have developed a reputation in it. Alternatively, you could use a service such as the Pictons’ Watch It! Service to monitor domain names that are identical to yours or contain your name. As these names come onto the market, having not been renewed by their present owner, you can register them yourself.

The main piece of advice I can give in regard to your trade marks and domain names is to ensure that at all levels of your business, use of your trade mark is consistent – the same colours, font, design and name. Use your trade mark whenever you can. Each time it is used you are protecting it and a step closer to making sure no one else can.

In the final part of this series I will explain how to identify and protect patents and know-how.

©Pictons 2004. First published in Pictons’ "In the Know" email newsletter.

Footnotes

Pictons Solicitors LLP is regulated by the Law Society. The information in this article is correct at the time of publication in June 2004. Every care is taken in the preparation of this Article. However, no responsibility can be accepted to any person who acts on the basis of information contained in it. You are recommended to obtain specific advice in respect of individual cases.