Partner Article

Tricks of the trade for protecting your mark

One of the more difficult tasks for a company with a great new product or service is to come up with a trade mark (brand). Intellectual Property specialist at Blacks Solicitors, Ailsa Pemberton shares her top tips on what to consider when registering a trade mark…

A trade mark could take the form of word, a logo, an image, a colour, (or even a smell!), but although it would first appear that the world’s your oyster when it comes to creativity, delve a little deeper and the whole procedure becomes a minefield.

Can you describe it?

The first requirement is that you must be able to describe the mark. Words and images, which are designed to be used in their graphic forms, are straightforward but this requirement becomes more problematic for unusual marks, such as sound marks, shape marks, smell marks, taste marks, and so on. Colours tend to use a well-known referencing system e.g. Pantone, to identify the exact shade. Sound marks might be represented by a sequence of musical notes or even a description, e.g. a rooster crow. Olfactory marks are even trickier; one example is the “smell of fresh cut grass” for tennis balls.

Is it distinctive?

Next, the mark must be distinct: it must make your goods and/or services stand out from those of others. It is not a good idea, for many reasons, to pick a trade mark similar to a successful one that is being used byyour nearest competitor. For a start, it is highly likely that you will be seen to be trying to trade off another’s reputation and the chance of an application for registration succeeding is remote. It is better to come up with a unique mark on which you can start to build your own reputation.

Avoid being generic

Marks should not be descriptive of the goods and/or services they are used for. So a trade markshould not indicate type, quality, quantity, intended purpose, value, geographical origin, etc. Some examples of marks which would be deemed too descriptive are: ‘The Law Co.’ – for a firm of solicitors; ‘Comfy Shoes’ – for leisure footwear; ‘Leeds Bargain Cars’ – for a car showroom, and so on. Atrade markshould also never consist exclusively of signs or indications usual in the trade, nor take its shape from the nature of the goods, e.g. ‘Sofa Sale’ or the shape of a banana.

Be wary of deception

Other reasons for refusal are marks which are amoral, deceptive or illegal. Marks that are also not allowed are those conflicting with protected emblems (for example the Olympic Rings or Coats of Arms),and applications made in bad faith, for example, where XCo registers a trade mark to prevent ZCo from using it, but there is no intention by XCo to use the mark.

Keep it unique

When considering a mark, the other marks in existence must be given due thought. In this case, identical or similar marks are relevant when being used on the same or similar goods and/or services. This process requires full searches to be carried out to ascertain what is already out there and, in this day and age of the World Wide Web, worldwide usage needs to be considered. This process is not easy and relevant marks can easily be missed. The search results tend to give a risk assessment for making the registration application. In many cases, especially multi-territorial applications, it is better to spend a few hundred pounds on legal searches to ascertain the risk, rather than missing out this step and heading straight into the application process, which fails at the first hurdle and costs thousands in wasted fees.

In practice, this means that it is quite common for many buddingtrade marks to be considered then discarded for failing one or more of the above points. It is always best, if possible, to fully explore a potential trade mark before making a registration application or carrying out full scale branding. There is nothing more frustrating, expensive and time-consuming than having to change a whole campaign.

Regardless of what you create, registration of your chosen trade mark is highly recommended as it’s far easier to stop someone using your registered trade mark, than it is to protect one that is unregistered. If someone does attempt to use your identity, you’re required to provide proof including showing that the unregistered mark has a reputation, that confusion is being caused by another brand’s mark and that you have suffered genuine losses as a result.

For further information on trade marks,or any aspect of intellectual property, please contact Blacks Solicitors at www.lawblacks.com.

This was posted in Bdaily's Members' News section by Blacks Solicitors LLP .