Registering your trade mark is just the start
Businesses have been officially registering trade marks since the late nineteenth century to help consumers identify the origin of products, although the practice of placing a distinctive mark on goods goes back hundreds, if not thousands of years. The first mark registered in the UK was that of brewery Bass, which lay claim to its distinctive triangle to denote its pale ale in 1876. In the US, the honour belongs to Averill Chemical Paint company, which registered its mark in 1870.
Trade marks act as shorthand for consumers, helping them make assumptions about the source and quality of a product or service based on their previous interactions and knowledge of the company or brand. This can make a trade mark one of a business’s most valuable assets.
Act early on trade mark registration
As a new company, it’s advisable to register your desired trade mark or marks early in your corporate journey for good commercial reasons. First, even if you have been using a company or product name successfully for some time, without trade mark registration you have limited grounds on which to challenge a competitor who begins to use an identical or similar mark. As you become more successful, you may well find imitators trying to trade off your name and reputation; if it isn’t protected, broadly speaking your business won’t be either.
Second, and on the other side of the coin, you may find that the brand you have developed is unacceptably similar to an existing trade mark. This puts you at risk of being legally required to stop using your brand, a costly and disheartening process for a young business. It is therefore highly advisable to start the trade mark registration process as soon as possible – even before you have finalised your branding – in case trade mark searches show that your trade mark is too similar to an existing mark.
It is possible for individuals to register trade marks with the government bodies in the countries in which you plan to trade, but we would always recommend consulting a qualified trade mark lawyer to help you navigate the complexities of the issue – from conducting clearance searches to check you haven’t chosen a mark that is already in use, to guiding your trade mark through registration and dealing with any issues that arise. This post from Ward Trademarks explains why even small businesses should invest in professional support when registering trade marks.
Once you’ve made your mark you need to manage it…
Simply registering a trade mark is just the start of your IP protection journey. Once you have secured rights to your mark in your chosen product or service classifications, you need to keep a record of it and work to maintain and protect it. This is the process of trade mark management.
Renewals and records
For organisations with a small number of marks this is not too onerous, but as your trade mark portfolio grows – perhaps you begin trading in more countries or launch additional brands – keeping track of all the relevant dates, document and deadlines becomes a challenge. Trade marks are typically valid for a period of ten years although this can differ in a few jurisdictions, after which they must be renewed or they will lapse. Generally, renewals can be carried out up to six months before the date of expiry and up to six months afterward – albeit with the risk of additional official fees. Missing a renewal date can pose serious risks for your brand, as this article explains, so it’s vital that you – or your IP lawyer – stay on top of all the filing deadlines.
When you’ve invested in building up your brand and reputation, you don’t want to see someone profit from all your efforts by putting a confusingly similar trade mark on a copycat product or indeed any other product or service. Trade mark watching is the process of monitoring newly published trade mark applications to check whether any are visually similar or phonetically similar and are being used to sell the same or similar goods or services. An example might be Anchor butter, a brand that would certainly have a case for opposition if a rival were to launch a sandwich spread called “Encore” butter. Though written differently, the words have a similar ring when read aloud.
Trade mark applications are public records, so it is possible to do your own watching but, again, it is advisable to engage the services of a trade mark watch specialist such as e.g Compumark, TrademarkNow, or Corsearch to identify any new trade mark applications as well as a trade mark lawyer to review the ‘citations’ and benefit from specialist expertise in what constitutes a potential threat to your trade mark.
Trade mark Infringement
If a competitor uses your trade mark on goods they have produced this is trade mark infringement. Thanks to your registration, you can legally challenge them to prevent them from using the mark and force them to destroy counterfeit goods. This certainly requires the assistance of a legal representative, either in-house counsel or an external law firm. Once again, there will be a wealth of critical dates, documents and deadlines to manage during the course of the proceedings and records to maintain to support the case.
Dates, documents and deadlines
Reading the above it might seem that owning trademarks involves a lot of administration and meeting deadlines. This is true, but there are tools to help your in-house legal team, or law firm, stay on top of searches, watching and trade mark portfolio management. Industry stalwarts such as TrademarkNow and Compumark offer access to millions of trade mark records, while here at WebTMS we specialise in providing software that simplifies portfolio management, with features such as automatic renewal date calculation and alerts to ensure you never miss a deadline and also keep tabs on all live cases. We also offer access to trade mark records in more than 180 jurisdictions thanks to our partnership with Compumark and TrademarkNow.
Registering your trade mark is an important part of starting a business; it protects your future success. As we’ve seen, getting that registration is just the start of a process that, should your business prove a winner, could extend for hundreds of years. Take that Bass trade mark, for example: registered back in 1876, it is up for renewal on 1 January 2022. You can bet that someone has that renewal deadline on their radar!