So you've spent months developing the prefect brand name, it
sounds great and you've started telling everyone about it.
Maybe you've got a little further and you've bought a
domain name or registered a company name? Maybe you're really
far down the road, you're selling your goods, advertising and
looking for investment? If any of this sounds familiar then you
need to register a trade mark.
Unfortunately, there's no such thing as a single worldwide
trade mark and so brand owners need select individual countries for
trade mark registration. The only exception to his rule is the EU,
where there is a multi-country trade mark which covers all EU
member states. This has always been good value (in terms of the
'cost per country') and the UK is included... until Brexit.
Essentially the country selection comes down to cost, there's
no point investing thousands protecting your brand in a specific
country if you don't trade (or manufacture) there however, if
you do have a presence, particularly a growing presence, then then
the country should be listed in your trade mark portfolio.
Once you've worked out which countries to cover you'll
then need to think about the classes of goods and services. There
are 45 in all and they deal with everything a business can offer,
from car tyres to cultural activities. The idea behind this is that
brands should be able to co-exist if they trade in completely
different industries. Take for example the trade mark
'PENGUIN', this is owned by a clothing brand in class 25, a
chocolate manufacturer in class 30 and a book publisher in class
41. All of these companies can co-exist because they have distinct
brands which do not get confused with one another.
Now you've got a bit of an idea of which countries and
classes to cover the next thing to think about is what to register
– in short, there are two (main) types of trade marks, word
and logo marks e.g.
These are separate trade marks and they require separate
applications. However, one protects the brand name (the most useful
mark in this regard is the word mark, which covers different sizes,
font, colours etc) whilst the other protects the way in which it is
depicted (if for example, a competitor or counterfeiter decided to
copy the logo without using the same words).
As a general rule the bigger your trade mark portfolio, the
better, but if you to start off with just one trade mark, the word
mark is usually the better choice.
Now you know what to register and how, you need to justify the
cost. Fortunately, it's not hard to do this because a trade
mark is a valuable asset. It turns something intangible and
unquantified (your "brand") into a tangible asset,
registered in your name or the name of your company, which can be
bought, sold, licensed or invested in.
Aside from being a company asset, a trade mark is a valuable
defence mechanism. If your brand is copied by a competitor or
counterfeiter, and you don't have a trade mark, you'll have
to rely on unregistered rights and a claim called "passing
off". Unfortunately, this is a notoriously difficult claim to
succeed on (requiring you to prove goodwill, misrepresentation and
damage) and it requires a very expensive fight. This is likely to
mean that you can't stop the infringement in the same way that
you would with a trade mark.
Finally, you need to consider timing, yes you've come up
with a brilliant brand name but what if someone else has too? If
they file for a trade mark first (providing there is no evidence of
bad faith) then the certificate will be in their name and not
yours. This will then give them the power to oppose your later
application for the same or a similar mark, in the same or a
similar class. This normally forces companies to rebrand, losing
the goodwill and reputation the have worked so hard to build
If you would like to apply for a trade mark, then then next step
is to seek legal advice. In particular, ask your lawyer to: (a)
check the trade mark registry for existing conflicting trade marks,
and (b) advise on the registrability of your chosen mark
(applications will be refused if, for example, they are considered
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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