When entrepreneurs and business owners start a new business, they are often unaware of the complexities of IP, both in terms of safeguarding their assets for the good of their business and its reputation, but also to prevent them from infringing any existing registered trade marks.
Businesses like Apple, Microsoft or Tesla wouldn’t be the powerhouses they are today if they hadn’t built strong and recognisable brands, fiercely-guarded from infringement, misuse and unauthorised use.
Your brand is no different.
So, before you embark on the exciting journey of building a business and brand, let’s look at the different types of Intellectual Property.
So, what is IP and why protect it?
Intellectual Property, or IP, is the collective term for trade marks, copyright, registered designs and patents that not only need protecting but help build consumer recognition and loyalty.
Trade Marks
What is a trade mark?
A trade mark is a sign, whether that's a word, logo, slogan or another type of sign, that allows customers to distinguish your products or services from those of other businesses.
It's an identifier that customers grow to recognise and can use to easily spot a company's products or services so they can buy them again if they enjoyed them (and can avoid them if they didn't).
Why are they relevant to me?
Your business, product or service may use one brand or several brands. Each of those brands contains a trade mark.
It's important that you are free to use the name or logo you have selected and don't tread on any toes. And it's equally important that you can protect your brands against infringement by others.
Searches
Whenever you're considering a new brand, you should conduct searches to clear the name or logo (or other element) for use.
It's not enough to look on Google and decide there's no one else using that name online in that field. It's also not enough to look at Companies House or domain names, or just 'know' that it's unique and unlike anything else.
Why?
Because a trade mark doesn't have to be identical to an earlier one to infringe - 'confusingly similar' is the test. And you can't find all possible confusingly similar iterations with a Google search.
The only way to assess the risk properly is to run 'full availability’ searches. The data from trade marks registers, company registers and online use is provided by specialist companies who run the searches using both technology and humans. The data is then analysed to provide a risk assessment report.
As trade marks are territorial, a separate process is required for each country you intend to use your trade mark in.
Registration
Once your searches are done and your brand is clear for use and registration, getting your trade mark application lodged quickly is crucial.
This secures a filing date, a ‘flag in the sand‘, and is the date from which your registered rights begin.
Goods and services
You have to designate a list of goods and/or services in your trade mark application. They are categorised into 45 classes, 34 for goods and 11 for services. Getting this right is key to ensuring your registration does what you need it to.
You need to cover everything you will offer under that brand. But it’s not always as obvious as it sounds. Too-broad coverage could increase the chance of disputes with third parties, but not listing all relevant products and services might mean your registration is useless and you’ll have wasted your money.
Enforcement and exploitation
Trade marks are assets which you will want to protect, like any other of your business assets. Unauthorised use of trade marks, or use of confusingly similar ones, can devastate businesses if it drives sales elsewhere.
You might also want to realise the value in your trade marks, for example by licensing them to others or franchising or selling the business. You may also be seeking investment.
Registering your trade marks will be paramount in all of these scenarios, so having this in mind at the very beginning of the brand creation process can only benefit your business.
Registered Designs
What is a 'design'?
In the UK it is possible to protect "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation". This is a registered design.
Designs are great for covering other bits of a brand that trade marks don't reach, like packaging (without the names and logos), a pattern or print, or the shape of a product.
The design has to be 'new' and it has to have 'individual character', which means that it must be different to any designs that have been made public previously.
Registered designs have a shelf life of 25 years, but that is long enough in many cases as designs tend to change fairly regularly. And they're relatively cheap to register.
If your brand has design elements that sit outside the scope of trade mark protection, or if your products have a distinctive look, pattern, shape etc., consider looking at registering designs.
Enforcement and exploitation
Like trade marks, registered designs can be enforced against misuse and copying of your rights. They can also be licensed or sold to other parties, bringing options for additional revenue, collaborations, and so on.
Use and monitoring
Why and how should you monitor use of your IP?
You’ve got your IP portfolio started so now you can sit back and relax, right?
Well, not exactly. There’s little point having registrations if you let others infringe them or encroach on your rights.
A professional ‘watch service’ can be set up to notify you if conflicting applications are filed so you can challenge them. Watch services can also monitor online use as well as company names and domain names so you can be confident your brand remains unique to you and take action if unauthorised use is made of your IP.
How you use it yourself is also important.
For example, if a trade mark is not used in the form in which it's registered over a five year period, the trade mark registration could be cancelled on grounds of 'non-use'. Changes to the name or style or colour of your brand should be reflected in your trade mark registration coverage (but note you can’t add to an existing registration, you’d have to start again).
A trade mark can also become generic if it is used incorrectly (think ‘escalator’ or ‘aspirin’ which were both once registered trade marks). Consider devising brand guidelines to help reinforce best practices and ensure a mark remains distinctive and can perform its function of differentiating your brand from others.
Brand guidelines can inform both internal and external parties of the correct, or preferred, way of displaying the brand on products, websites, marketing material, etc.
If you allow others to use your brand by means of a licence or collaboration, brand guidelines will be crucial to ensure uniform use of the branding. This maintains consistency among consumers and strengthens the brand’s image so that customers return again and again.
Marking
You can use the ™symbol at any time whether your trade mark is registered or not.
It simply means that you claim this word, logo, or other mark as your trade mark. Some companies prefer to use this even after a mark is registered as it is more widely recognised.
Once a mark is registered you are free to use the ® symbol. Use of this symbol without a registration is forbidden by law (and punishable by imprisonment, although no one has ever been jailed!)
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Rachel Harrison is a Trade Mark Attorney specialising in trade mark protection, enforcement and dispute resolution. She worked for over 20 years in London law firms and specialist trade mark practices before starting her own business in 2023. She offers the very highest level of service to clients of all sizes, in all sectors, with the comfort of agreed, upfront pricing.
