The trade marks and brand names you use to sell your goods or services could be your most important business asset. Properly protected, your trade mark rights can prevent competitors using the same or similar marks, secure your freedom to use in new markets ahead of launch and create licensing opportunities.
- What is a Trade Mark?
Anything which is capable of distinguishing your goods and services from those of your competitors. A trade mark may be a word(s), logo, label, device, slogan, sound, colour or shape. Rights to a trade mark can be acquired by use as well as registration. There is a trade mark registration process in almost every country of the world.
- Selecting a brand name or trade mark
The marketing appeal of marks which describe the goods or services needs to be balanced against the difficulty of obtaining enforceable rights in such marks. The more distinctive the mark, the easier it is to protect. If you cannot register, competitors may be free to use the same or a similar mark to the detriment of your business.
Marks also need to be sufficiently different from marks registered or used by competitors to avoid infringement or an action for unfair competition / passing off.
- Searching and use
A search of the Trade Marks Register and the market-place should be effected before use to ensure that your use will not infringe others’ rights. Trade mark rights are essentially national so searches should be effected even against an existing mark if it is to be used in a new territory.
A properly conducted search may enable you to use before the registration process is complete.
- The registration process
The process and the time it takes varies from country to country. After an application is filed, the local Trade Marks Office will carry out an examination covering formalities, and in some cases, the capacity of the mark to distinguish your goods and services from those of others and conflict with other trade mark applications or registrations.
In most countries, if the Office accept the mark, it is advertised to enable others to oppose its registration based on earlier rights in the same or similar mark. If there is no successful opposition, the mark will be registered.
A registration generally lasts for 10 years when it can be renewed for like periods on payment of a fee.
- Community Trade Marks and the International Trade Mark Systems
It is possible to cover a range of countries in a single trade mark registration.
A registration at the European Community Trade Mark Office (OHIM) provides protection in all Member States. EU registrations are unitary so a mark must be available in each Member State to be effective. A conflicting right in any Member State will invalidate the EU right in its entirety.
Through the International registration system administered by WIPO it is possible to cover a large number of countries around the world in a single registration. The territories in which protection is required are nominated by the applicant.
Both Community Trade Marks and the International registration system can offer significant cost savings compared to the equivalent national trade mark filings.
- Oppositions and Cancellations
Marks can be opposed or cancelled based on earlier rights in the same or a similar mark. A successful opposition will prevent the registration of a mark and may have implications for the use of the later mark.
Just as others may oppose the registration of your marks so you may oppose theirs if they conflict with earlier rights you have by registration or use.
In most countries failure to use a mark for a period of time (generally 5 years) renders the registration vulnerable to cancellation.
- Watching
Subscription to a watching service enables you to monitor trade mark applications filed by competitors which might conflict with your rights. In the event of conflict you can oppose or seek cancellation of the competitor’s mark on the basis of your earlier rights.
- Infringement and Passing Off / Unfair Competition
The use of a mark which conflicts with a registered trade mark may result in an action for infringement. The use of a mark which conflicts with the rights acquired by others through the use of their mark may result in an action for passing off or unfair competition.
A successful action for infringement or passing off / unfair competition is likely to lead to an injunction preventing further use and possibly an award of damages.
In certain circumstances, an Interlocutory Injunction may be granted ordering the cessation of use until the main Hearing takes place. The potentially serious consequences of a claim against you for infringement and/or passing off / unfair competition should be avoided by effecting pre-use searches (see above).
- Licensing and Merchandising
In certain circumstances it is possible to licence the use of a trade mark for consideration without undermining the trade mark itself. Generally it is necessary for the trade mark owner to exercise some degree of quality control over the licensed use.
Licensing is at the heart of the activity commonly known as merchandising.
In certain circumstances licensing between related companies can affect the tax liability.
- Renewals
Trade mark registrations can continue in perpetuity provided they are renewed at the appropriate time. The usual renewal period is 10 years. In a small number of countries it is necessary to produce evidence of use of the mark at or between the renewal dates.
It is important from a cost perspective to carefully review marks due for renewal. Renewal may not be necessary if use has ceased and will not recommence, or a revised, updated trade mark has been registered since the filing of the original mark.
- Assignment
A trade mark may be transferred to or acquired from a third party. In some jurisdictions trade marks can only be transferred with the goodwill of the business. Failure to record a transfer on the Official Register can affect the new owner’s ability to sue for infringement or the amount of damages awarded in a successful action. When purchasing a trade mark(s) it is prudent to carry out a Due Diligence check (see below).
- Due Diligence
It is important to obtain assistance and advice before acquiring trade marks or brand rights, whether purchased independently or as part of a business acquisition. The due dilligence exercise should address the right of the owner to dispose of the property, the validity of the marks and any limiting conditions or restrictive agreements all of which could affect the validity of the transfer or the value of the trade marks to your business.
- Counterfeit Goods
This represents an increasing problem to brand owners. The issue of counterfeit goods is often handled by Customs officials but they require the help and assistance of the trade mark owner. It is possible to register trade marks with Customs and this can greatly assist the seizure process.
- Portfolio Management
A trade mark portfolio should always reflect the current commercial requirements of the company. As new marks are used and the use of others cease or change, so the portfolio should change to reflect the new circumstance. Effective portfolio management will not only ensure the usefulness and currency of the portfolio but will also save costs.
Trade Mark & Brand Rights - FAQs go ››
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