It is important to use a Chartered Trade Mark Attorney to register your trade marks because they understand the importance of "future proofing" the goods and services claimed in an application in order to ensure that your brand is adequately protected as your business grows and expands into other product and service lines.
However, during these unprecedented times "brand pivoting" has occurred regularly, with businesses manufacturing products that were not foreseeable before the crisis, or moving into other service delivery methods due to the lockdown.
As a result, it is essential for businesses to reflect on whether their current trade mark registrations protect them for the goods and services they have pivoted to.
When you file a trade mark application it is necessary to specify the goods and services for which you wish to protect the mark in question. In most territories, the manner in which goods and services should be claimed in trade mark applications is governed by the Nice Classification System. There are 45 classes of goods and services. A Chartered Trade Mark Attorney will work closely with you to assess what your business is currently doing but they will also consider reasonable expansion into other areas, in order to ascertain which classes should be claimed in your application. For example, if you have developed a brand for a line of toasters, it is reasonably foreseeable that your brand will move into other appliances as your business becomes more successful. As a result, a trade mark application should not just claim "toasters" in class 11 as this narrows the scope of protection of the resulting registration and doesn't anticipate expansion into other areas. It may also be appropriate to include any additional appliances in class 11 that may be of interest as well as products falling into other classes, such as "cutlery" in class 8 or "household or kitchen utensils, containers and cookware" in class 21.
However, during the coronavirus crisis, many businesses have been forced to move into new areas that were never anticipated when their trade mark applications were filed.
A large number of businesses have started to manufacture branded PPE, or fashionable face masks for use when lockdown has eased, and their current registrations will not be protected for goods of this nature. If they intend to commercialise these products in future then they should consider filing new trade mark applications claiming the new goods of interest to them.
Another area that has seen significant transition is the entertainment sector, where a huge number of services are now being delivered online due to the closure of public spaces. Whilst entertainment sector businesses may already have protected their brands for the provision of entertainment services, they may not have included references to online entertainment and related services, or the nature of the entertainment they are now providing online may be entirely different to what they were doing before, so they should assess their registrations accordingly.
The food services industry has also been forced to transition. A large number of restaurants are now offering delivery services that were never a part of their business prior to the lockdown or developing packaged food and drinks products. Again, registrations may protect them for restaurant services in class 43 but not for food delivery services in class 39 or for branded food and drinks in classes 29, 30, 32 or 33.
Chartered Trade Mark Attorneys regularly work with clients to assess their portfolios and consider whether any gaps need to be filled. Therefore, if you have recently moved into entirely new product ranges or started delivering entirely new services, you should contact a Chartered Trade Mark Attorney to conduct this gap analysis in order to identify whether your trade mark registrations protect you for the new normal.
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.