Protecting the brand
The retail sector has undergone significant challenges and changes over the past decade. Advances in technology matched equally with evolving consumer shopping habits continue to propel the retail sector forwards. Our clients come to us for legal and commercial advice to anticipate risks and opportunities so that they can make the rights decisions. We offer the legal and commercial solutions to retailers and brand owners whether you are an established businesses or just starting out.
We combine our expertise of intellectual property, brand and merchandising law with a thorough understanding of commercial contracts, employment issues and data protection laws. We are also able to advise when things go wrong and offer mediation and dispute resolution solutions.
Typical retail and merchandising law problems we solve:
- Legal issues around fund raising for new platforms and investment into e-commerce
- Avoiding breaching regulatory requirements such as the regulations relating to e-commerce and data protection law;
- Negotiating favourable terms in commercial contracts including procurement, supply, agency, distribution, franchise and merchandising agreements;
- Ensuring technology agreements such as software development, collaborative and licencing agreements adequately protect rights and provide genuine commercial benefits;
- Protecting and monetising intellectual property rights including designs;
- Keeping abreast of changes to the corporate structure to support business growth such as the arrival of new shareholders and investors;
- Managing employment issues such as director service agreements, employee incentives and employee exits; and
- Managing acquisitions, disposals and re-financing arrangements.
We create trade mark registration and brand protection strategies to establish and maintain the brand. There is no artificial intelligence available to replace the intellect we apply to design the strategy which builds the brand. 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:
- How to create a strategy;
- Maintaining the strategy;
- Trade mark portfolio management; and
- Ideas for generating more revenue.
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
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.
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.
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.
Generating 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.