04/05/2022
Intellectual Property (IP) is regularly discussed, but rights such as patents for technical inventions, or registered designs for the shapes of products, might first come to mind. And these may not be relevant to many companies. But IP also includes trade marks, or brands, and every company has a trade mark.
A trade mark is a sign (often a word) which does not describe goods or services but identifies the company selling the goods or services. When Ford sells a car or the Cambridge Judge Business School provides training, Ford and Cambridge Judge are trade marks which tell customers what characteristics to expect, based on their previous awareness of their products, reviews and marketing – High quality or low quality? Cheap or expensive? Reliable or unreliable? Delivered on time or late?
A trade mark right allows its owner to stop competitors using or registering similar trade marks for similar products. In the UK, trade marks rights are based on registration at the UKIPO, or on “passing-off” rights (which are generated when a company uses a trade mark for a period of time, typically several years, so that customers learn to recognise the mark). Registered rights are much quicker to obtain, and are much more secure.
Should a company take any action on its trade marks? I think that all companies should at least consider two questions.
First, does it matter if a competitor (accidentally or intentionally) starts to use a trade mark similar to yours? Second, does it matter if a third party tries to stop you using your own trade mark, because it is similar to theirs?
Without answering these questions, a company may be taking significant and unknown risks.
If a consultant sells services and wins new work based on their personal reputation, then perhaps their trade mark is not important. But if a company sells consumer goods, or pharmaceuticals, or runs a shop or restaurant, then their trade mark may be mission-critical. If Coca-Cola tried to sell brown fizzy drinks in plain packaging, without displaying their trade mark, they might struggle to sell any product at all. The trade mark is absolutely essential to the business. Of course most companies fall between these extremes.
So what action should you take?
1: Think whether your trade mark is, or will be, commercially important. Would it matter if someone else used the same trade mark? Would it matter if someone threatened to stop you using it?
2: If so, check whether your trade mark infringes any existing third-party rights, in countries where you want to operate. Searching on Google (other search engines are available) is a good start, but a Chartered Trade Mark Attorney can advise on more reliable searches. A search is also a good idea before you launch any new trade mark.
3: If your trade mark is important, consider registering it at the UKIPO and in other countries if you trade abroad. A Chartered Trade Mark Attorney can help to make sure that your registration gives you the scope of protection you need.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
