Trademark management and brand protection
- Himanshu Dasare
- Updated: Fri, 25th Nov 2016
We create trade mark registration and brand protection strategies to establish and maintain the brand. We prevent problems from arising as part of our trade mark and brand portfolio management service. The advantage of our service is we are not remote on-line providers clueless about your business. Working with us is personal and will open up access to the full range of commercial solutions should you need them.
Our trade mark service includes:
The sectors in which we operate are diverse including designers, media personalities, merchandisers, technology businesses and retailers. There is no artificial intelligence available to replace the intellect we apply to design the strategy which builds the brand. We work with businesses seeking to establish one trade mark through to managing a large portfolio in the UK, EU and worldwide.
How to create a trade mark strategy
Planning for brand protection is increasingly more important as the market becomes more crowded.
Factors making up a strategy
The pointers which we use to start the planning of an effective strategy include:
- Analysing a company and its products and establishing the number of marks that can be registered as trade marks.
- Converting the registered trade marks into commercially exploitable assets through licencing and using them to generate funds for your business.
- Protecting your brand by stopping others from infringing your trade mark.
Assets to include in the strategy
Trade marks are not confined to merely the name of a company or product. Other concepts associated with the trade mark brand can be registered and protected such as:
- Logos ;
- Colours; or
- A combination of the above.
For many businesses sitting alongside the trade marks, are other assets that need protecting to support the brand.
Cost of the trade mark strategy
If costs permit, we recommend that you consider seeking registered trade mark protection for all marks (such as brand names, trading names and logos) which are of value. A basic registration costs around £500 plus VAT. We do bring costs into account when developing your strategy and adopt a lean start up approach where possible.
Example of a branding strategy in action
Take for example, a mobile phone.
A mobile phone product can give rise to the following assets requiring registration:
The name and logo
- The company will have to register its name and logo. If the logo is a word it can be registered as both a word and image.
- The company will need a website and a domain name tying in with the brand name. The content of the website is copyrighted.
- The Internet Corporation for Assigned Names & Numbers (ICANN) are responsible for allocating IP addresses and manages the domain system to make sure that no two names are identical. If the company finds that there is another similar domain name as them is trying to divert customers away from their site, they can use the Uniform Rapid Suspension System as a means for getting a quick solution.
The name of the product
Each phone will have a unique trade description – the name. Each name can be registered as a trade mark.
- As part of the strategy, the company might decide to check the availability of a name before investing money on marketing. If they find out at the start that someone else is using the same or similar name, it is then easier and cheaper to change it early on.
- Obviously it is better to register the name than stop at a check but if budgets are tight a check is better than nothing.
The Operating System
- There will be operating systems to enable the phone to work. The software itself will be protected by copyright and confidential information. The name of the operating system can be trade marked, provided it is unique.
The design of the product
- The look of the mobile phone could be trade marked. However it can also be protected though design rights. Trade mark duration lasts longer than design rights so it is favoured by a number of companies. In practice, it can be difficult to register packaging, but Apple have managed it, with sheer creativity and clever communication with the IPO which is what we can help you with.
Special features developed under patents
In order to stay ahead of competitors, research and development teams may develop inventive features to incorporate into the mobile phones.
- They may look at patents that have expired and released in the public domain.
- They may then use that patent such as the patent for a camera, and develop it to make it novel for the product – in our example the mobile phone.
- They could then register the adapted camera technology as a new patent under a new and unique name. The patent can be registered.
- The name of the patent can be registered as a trade mark.
The app on the phone
Most vendors develop apps to include in the phone. There are several registrations connected with the app:
- The source code used in the software will be protected by copyright and confidential information;
- The display of the app can be protected through design rights;
- The name of the app can be trade marked; and
- Any logos used to identify the app can be registered as trade marks.
Maintaining the trade mark strategy
The best way of protecting trade marks is through registration. There is no worldwide register for trade mark protection, so the company must register the trade mark it wishes to use in every country where it is operating. A full description of the trade mark and uses has to be given, and once the trade mark has been registered the company has the legal right to stop other people from using their trade mark.
The work undertaken at the very start will be the foundation that future revenues are rested upon.
Steps for trade mark registration
In order to register effectively, as with many things, there is more to it than you may think. The worst position to be in is to think you have registered sufficient trade mark protection only to find the registration is ineffective and a waste of time. We do see that problem more often than should be the case.
As part of our portfolio management service we will:
Identify the trade marks
Every business will have a number of trade marks to register. We can look at your business as a whole and your products and services and identify which trade marks you should consider registering in the UK, EU and internationally.
Identify the jurisdiction
We will speak to you about your business objectives in order to find out whether you need to register your trade mark in other jurisdictions. In a bid to save money, it is tempting to limit the number of registrations. However this can be detrimental to growth and expansion. If in the future you start trading in another country, you might not be able to register your mark there, as someone else has already beaten you to it.
Conduct due diligence clearance search
Not all marks are capable of registration and not all marks will successfully be registered. Our service includes conducting due diligence before applying to register a trade mark. This ensures two things:
- That there are no other companies in the market who use similar marks as you on similar products.
- It establishes if you are infringing another’s trade mark and gages your odds for successful registration.
Due diligence before heavy investment is incurred, can save money and time as it allows for going back to the drawing board before it is too late.
If the clearance search reveals some similar trade marks you do have the choice of continuing with the application on the understanding that any oppositions, objections or infringement actions can be dealt with if and when these are received.
Deal with any objections raised by the Intellectual Property Office
The next hurdle is communicating with the intellectual property office and addressing any issues they might have with your trade mark. Our expertise will put you in the best position of securing your requirements as we draw on years of past experience.
Example of registering trade marks for a pop star
A pop star’s name and image is their brand and that is what needs protecting.
Our client approached us to protect her name which she was going to use on merchandising. She also wanted to make sure that no other company exploited her name by using it on products which may trick people into thinking that she was involved with it.
We talked to her about her plans and helped her decide in which jurisdiction she wanted to register her trade mark.
She came back to us and felt that she only wanted to target the UK, EU and US market as that is where her target audience would be.
Therefore we proceeded to register trade marks in these jurisdictions only. We conducted due diligence and filed an application. The IPO came back with a few objections regarding the name. We used our experience and an innovative approach to manoeuvre around the objections and convinced the IPO that the trade mark was distinctive enough to be registered.
Managing trade mark portfolios
Our service can include managing your trade mark portfolio. The service helps to minimise your risk and provides a cost benefit as we have a team who do this work all the time.
Benefits of portfolio management
When we manage trademark portfolios, we look for and solve the issues relating to:
- Similar trade marks to yours that should not have been registered and handle an opposition;
- Trade marks registered in dissolved companies;
- Trade marks that are obsolete through lack of use;
- Trade marks that are unregistered, but may be building goodwill; and
- Trade marks in slogans or packaging that promote a company’s brand or product.
When managing trade mark filing we have a strategic ability to register and monitor trade marks anywhere in the world. Where appropriate, we work with trusted advisors through our panel of international lawyers to ensure all rights are fully protected and commercially exploited at all times.
Trade mark infringement
Most businesses have to deal with infringement of trade marks and branding at some stage. Our portfolio management service does include a full offering to cover any IP infringement including trade mark infringement.
Often, strong, early intervention coupled with appropriate evidence is sufficient to deter infringers. Most cases are settled without recourse to the courts.
Opposing trade marks which challenge your brand
If a trade mark is filed that you think is similar to your trade mark you may oppose registration. In the UK this period lasts for 2 months after publication and for European Community Trade Marks (CTMs) it lasts for 3 months after publication.
Generate revenue from your trade mark
Trade marks along with other brand assets are there to be used creatively, pro-actively and with imagination. We work with you to find ways in which the assets can be transformed into commercially valuable assets.
Ring fence the trade mark asset
It is not unusual to protect the revenue stream from intellectual property assets, such as trade marks, by placing the ownership in a different company to the trading company with a licence back to the trading company for use of the trade mark and other assets. The reason for this type of planning is to be able to retain control of the IP assets if the trading company goes into liquidation.
Without a structure, upon liquidation, the IP ranks as any other asset which is sold basically to the highest bidder by the liquidator.
Ideally, the ownership of the IP is placed in a separate company from the start. We do deal with moving IP assets once the business is trading but the risk is there may be tax liabilities arising on the transfer of IP if the brand has gone to market and has value such as identifiable revenue streams. The starting point in ring fencing of IP is to establish the estimated tax charges HMRC may place on the asset – we do provide guidance.
Franchising and licensing
A franchising agreement or a licence agreement can be used to gain further revenue. Through this agreement you as the owner of the trade mark can retain ownership of the trade mark but grant others the right to use and exploit the trade mark on terms that have been agreed upon.
Brand protection takes on a wider meaning under many commercial agreements involving trade marks because it is so easy to damage the brand. In practice, the agreement needs to be looked at in connection with how you will police the good name of a brand.
Selling trade marks
Trade marks, like any other asset, can be bought and sold on such terms as are agreed. You do not have to have a registered trade mark in order to sell it. In practice unregistered trade marks are unlikely to fetch a premium.
Our trade mark registration track record
- We registered a confectioners’ new range of products as trade marks, based on acquired distinctiveness.
- We registered a sports manufacturer’s portfolio of unregistered trade marks, based on acquired distinctiveness and goodwill. Our quick registration protected their trade marks from third party use.
- We registered the name of a new software product in development stage. Before they invested money on marketing we did due diligence on a proposed name on a world wide basis and found out it was already in use in some jurisdictions. We reported our findings and the company proposed a new name which we successfully registered worldwide.
Trade mark portfolios
- We manage the portfolio for a mobile phone service provider and its subsidiaries. As part of our service we continually monitor renewal dates of trade marks. We send our clients reminders of when they are up for renewal so that they can assess whether they wish to renew the trade mark. Upon our clients request we proceed to renew them.
- We look after a computer software company’s trademark portfolio. We locate overseas entities that hold similar marks and remove their trade mark registrations.
- We registered multiple trade marks for a media personality. We now manage her trade mark portfolio. Our client licences her trade mark to a select few companies to use on merchandising. These licences are limited to a specific period of time. We monitor the licence agreements and notify our client when the timing has lapsed. If our client wishes to extend the licence we proceed to do so. We further identify companies that are infringing her trade marks by using it on merchandising without our client’s consent. We then proceed to stop the infringement.
- We manage the trade mark portfolio for a large food manufacturer. We constantly monitor the market for new products that use our client’s trade marks or a similar trade mark. We then proceed to take swift action to stop our client’s mark from becoming generic.
- We manage the trade mark portfolio for a large retail company and its subsidiaries. As part of the registration process, we successfully registered a number of trade marks worldwide. As part of our portfolio management service we take care to make sure that trade marks that have been registered do not lapse as a result of non-use.
Trade marks are important assets. They should be used creatively, pro-actively and with imagination to turn them into commercially exploitable assets. We can develop a trade mark strategy and look after your trade mark portfolio to make sure you get the best value.
There is more to building an effective trade mark strategy than may meet the eye. We can help you achieve your first trade mark or to manage a large portfolio. Please do give us a call if you have any queries.