Ten trade mark myths
05/10/2022
Jeremy Morton shares his myth-busting tips for business brands.
1. It’s not worth checking a new brand in advance
It pays to check at an early stage whether another business already owns clashing rights. This helps manage risk of infringing those rights, and problems with registrability.
Unlike some territories, the UKIPO does not refuse applications because a similar mark is already on the register. But it will notify owners of prior rights. Also, some will have a watch service in place.
Interested parties can oppose you within two months from publication (extendable by one month on filing a request).
2. We can’t afford clearance searches and it’s best if we just get on with launching
A solicitors’ claim letter just after launch is less than ideal. You will need to spend money on specialist advice, changing your brand is costly and inconvenient, and you may have to pay damages for past infringement.
You can choose whether to go for a low-cost “knockout” search to identify major obstacles on the UK register, or spend more and include phonetic equivalents, web searches and other territories.
Then you can adjust your brand proposal to head off clashes. Even if you have already adopted the brand without searches (naughty…) the process can be help us to avoid certain goods and services when filing for registration, to reduce risk of opposition.
3. No one else owns our brand
Are you sure…? Trade mark rights are territorial, so if you plan to grow overseas you need to check in each territory. Mere use is often enough to create problem rights, even without registration. And – to bust one of the biggest myths – a brand can be a problem if it is merely similar to yours (verbally, visually and/or conceptually).
4. We own our logo
Logos are protected by copyright automatically. But if your logo was designed by a contractor, they own the copyright unless they transfer it to you under a properly drafted written contract.
5. Our brand is not protectable
Whilst you should avoid descriptive words as brand names (such as ‘BANANA SHOP’ for a fruit business), even ordinary words like ‘ALWAYS’, ‘YES’ and ‘VERY’ can be protected by trade mark registrations. Oh yes.
6. We have protected our brand
You may have registered your main brand, but have you protected individual product names as well?
7. I can do it myself
Many businesses do. We can often add value, however, in drafting lists of goods and services, heading off potential registry objections and clashes, and navigating tricky areas such as online retail services, NFTs or the metaverse. Appointing professional representatives can also help ensure your registrations are managed and deadlines observed.
8. Our brand is a logo so we can just rely on copyright
If – see 4. above – you own the copyright, it is an extra protection. But it is only infringed by copying, not coincidental similarity. And a trade mark registration is a much simpler basis to oppose someone else’s later filing or use.
9. I know someone has a similar brand, but their business is totally different
If they have a strong reputation and the marks are similar, they can complain even if there is no likelihood of confusion.
10. Our registration is strong because we have had it for a long time
If you don’t use your mark on the listed goods and services for a defined period (five years in the UK), your registration is vulnerable to revocation for those items, and may be ineffective against rivals.
This article is not legal advice, which it may be sensible to obtain before you take any decisions or actions in the areas covered. Please do contact me if you would like an initial discussion of your situation.
