By Georgina Bagnall, below, patent attorney, Adamson Jones
Registering a trade mark in your chosen jurisdiction(s) is only half of the journey. You also need short and long-term strategies for strong brand identity and brand longevity. Here, I explain why investing in a watching service should be a key part of your strategy.
Some brands need no introduction. We recognise them by a simple image, font, or colour, before their names are even spoken. Since 1990, more than 15 million trade mark applications have been submitted worldwide, with the highest brand value estimated at more than $299 billion. According to the Chartered Institute of Trade Mark Attorneys (CITMA), a trade mark “can be any sign that identifies you as the owner of your goods or services to make it clear they belong to you. “It is the badge by which customers find your products or services in the marketplace.”
An asset worth protecting
With enough goodwill, a trade mark can also become your business’s most valuable asset. As such, developing a unique and recognisable trade mark that encapsulates your brand’s identity, goods, and services should be a top priority for most SMEs, as should registering that trade mark within the relevant jurisdiction.
Most SMEs will be aware of the importance of registering their trade marks. A registered trade mark provides the proprietor with means of legal recourse when a trade mark is stolen or copied, whether that is through the courts or shorter procedures such as takedown actions. In addition, the registered right in itself acts as a deterrent and can dissuade some third parties from copying it or creating one of a similar aesthetic to piggy-back off a trade mark’s accumulated goodwill. As CITMA explains: “Having a registered trade mark gives you peace of mind to concentrate on growing your business and a valuable asset that you can leverage or sell.”
Halfway there
Registration is not the end of the road, however. A registered trade mark can still be copied or stolen, often in other jurisdictions and without the owner’s knowledge. Furthermore, while the Intellectual Property Office to which an application is sent may conduct its own checks for similarities with existing registered trade marks, these do not come with a 100 per cent guarantee.
Take the UK Intellectual Property Office (UKIPO) as an example. After a prospective trade mark owner submits their application, the UKIPO will check the application against existing ones for signs of similarities, as well as publishing details of the trade mark and its application in its journal.
These details are publicly available and provide individuals and businesses with a two-month window in which to oppose the trade mark or voice any concerns.
If the UKIPO has not identified any similarities with existing trade marks, it is up to the registered trade mark owner to review the journal, spot any similarities, and make their case.
This may be particularly important if the owner is aware of any plans to develop the brand and its trade marks in the future, as the UKIPO will not factor these into its checks.
Furthermore, the checks and journal are both limited to marks applied to be registered in the UK. For businesses wishing to expand overseas, therefore, there is a risk that their trade mark will already be used or copied by the time they reach that market, unless they perform checks on that jurisdiction’s published applications as well.
Someone to watch over you
Reviewing trade mark journals and applications – particularly those of more than one intellectual property office – can be highly time-consuming. This is often a barrier to SMEs, which do not have the time and resource to spare for monitoring their trade mark in the UK and / or overseas.
Thankfully, a highly cost-effective and convenient solution exists in the form of a watching service. This essentially monitors IP offices in your chosen jurisdictions to check for conflicting or similar trade mark applications and notifies you if an application meets the parameters you have set.
To make the most of this service, it is important to identify the relevant parameters and jurisdictions, keeping in mind both the business’s needs and goals in the short and long terms. Working with a trade mark attorney at this stage is essential, as they can help you to set parameters that are wide enough to ensure a good scope of protection and oversight, but not so wide as to bombard you with endless notifications and false positives.
A trade mark attorney will also help you to understand the different processes in jurisdictions, and devise suitable responses for when, and if, a trade mark application conflicts with your registered trade mark, whether that response is contacting the applicant and coming to an agreement or filing a formal opposition.
A fast response here is crucial, as businesses only have a limited window in which to oppose an application before it is registered. While it is possible to challenge registered trade marks, this can severely diminish your own trade mark rights, and may result in lengthy and expensive legal action.
Registering a trade mark is a significant milestone for any business, ensuring your brand has the legal rights to protect its identity, reputation, and goodwill.
Watching services, complemented by specialist advice, ensure that the time, cost, and effort spent in developing your trade mark are not wasted. This then leaves you with the resource you need to develop your trade mark into one of your business’s most valuable assets across the sectors and jurisdictions that matter most.
Adamson Jones is highly experienced in all aspects of trade marks, including applications, oppositions, portfolio management, and watch services. For more information, visit https://gateleyplc.com/services/trademarks/
