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Trade Marks: Why Bother?

Date: 16/02/2021 | Corporate

Studies have found that pre-school children can associate brands with their logos before they can even read; this shows that effective branding is a powerful tool.

From starting a website or blog to setting up shop as a specialist takeaway, hospitality or beauty business, entrepreneurs take the time to create unique and distinctive names, logos and slogans to help their business stand out from the crowd.  However, with all that is involved in starting up and running a business, trade mark registration can easily end up at the bottom of the ‘to-do’ list. So, why is it worth taking the time to register your mark?

Statutory protection for at least five years

Registration gives you a right to the exclusive use of your trade mark in connection with the goods or services against which it is registered.  In the UK, you have up to five years to start using your trade mark.  During this period, you can still prevent another person from using an identical or similar mark in connection with identical or similar goods without your permission.  An unregistered mark, on the other hand, cannot be defended until you have started trading.

Registered trade marks don’t necessarily die

Unlike other intellectual property rights, a properly managed trade mark can last forever.  Once registered, a trade mark requires renewal every 10 years although there is no upper limit on the number of times it can be renewed.

Registered trade marks can add financial value

As your business grows and the more widely a trade mark is used in connection with the goods or services against which it is registered, the greater the value it can add to the business’s overall brand.  As such, the registered trade mark can become a valuable asset in its own right.

Registered trade marks can be used to prevent ‘piggyback’ selling

Many small and medium sized businesses rely heavily on e-selling platforms such as Amazon to widen their reach.  However, counterfeit goods and unauthorised selling have been a major concern for businesses and e-selling platforms alike.  One example is the use of ‘piggybacking’ where official listings are used to sell cheaper, similar products.  In 2017, a company selling flagpoles, Jadebay Ltd, successfully sued another company, Clarke-Coles Ltd, for using Jadebay’s amazon listing (which contained its registered trade mark) to sell their flagpoles which had been sourced from a different supplier but contained similar branding to Jadebay’s. Clarke-Coles had undercut Jadebay’s price and replaced it as the default seller, which resulted in the majority of the sales going to Clarke-Coles.  Because Clarke-Coles was selling identical products using branding which was similar to Jadebay’s, it was found to have been infringing Jadebay’s trade mark.  It was ordered to stop and to pay compensation to Jadebay for lost profits on each sale of a flagpole made using its listing.

Amazon itself has a programme which aims to tackle counterfeiting activity and empowers businesses to take action against counterfeiters themselves.  To join this programme, you need to have (among other things) a brand with a government registered trade mark.

The registration process is (relatively) simple

The UK Intellectual Property Office offers ample guidance on the process of registering trade marks in the UK.  Whilst the process is relatively user-friendly, advisers can add value by:

  • analysing your mark at the outset, to assess whether it meets the legal criteria for registration;
  • providing advice on whether you ought to be registering your mark in other territories (which would not be covered by the Intellectual Property Office);
  • carrying out searches of the online database to check whether there are any prior-registered marks that might prevent you from registering your new mark;
  • providing advice on the classes of goods and services against which you should register your mark; and
  • assisting you with the registration process, including liaising with advisers at the Intellectual Property Office.

A trade mark is a vitally important part of a business’s branding and tells consumers, ‘this product is mine’.  Registering it can provide protection for your brand and prevent third parties from using similar marks where there is a likelihood of confusion.

If you require advice or assistance with your intellectual property, please contact a member of our Corporate team.

Disclaimer 
The matter in this publication is based on our current understanding of the law.  The information provides only an overview of the law in force at the date hereof and has been produced for general information purposes only. Professional advice should always be sought before taking any action in reliance of the information. Accordingly, Davidson Chalmers Stewart LLP does not take any responsibility for losses incurred by any person through acting or failing to act on the basis of anything contained in this publication.


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