MARK YOUR TERRITORY – CHOOSING AND PROTECTING YOUR BRAND
Here we discuss some of the key points to consider when choosing a new brand, as well as how to use your brand and why you should think about registering it as a trade mark.
Freedom to Use the Brand
It is important to ensure you have freedom to use your branding. If your chosen brand is too similar to that used by another entity, especially in relation to similar goods and services, that entity may be able to stop you using it. They may also be able to seek damages or other compensation for any use that you have made of the brand. Before proceeding to launch a new brand, we strongly recommend that a search is carried out for registered rights that might have an impact on your freedom to act.
To secure your brand, you may wish to register aspects of it as a trade mark. Whilst simply using aspects of your brand may well mean that you develop some rights, registration as a trade mark will make your position considerably stronger. A registered trade mark gives you an exclusive right to use that mark in relation to the goods and services for which it is registered, in the jurisdiction of registration. It is much easier to enforce a registered trade mark against a third party than to rely on unregistered rights, and, often, enforcement isn’t necessary: the mere presence of a registered trade mark is enough to deter a third party from using the mark in question.
When choosing your brand, it is helpful to consider what might be registrable. Anything that can be used as a sign of origin of goods and services can act as a trade mark. Many different aspects of a brand may be registered, including names and phrases, logos and images, even sounds and smells. There are some exceptions to what can be registered, including anything offensive, misleading or overly common. It is also not possible to register marks that are descriptive of the goods and services to which the mark will relate (such words must be available for third parties to use). You may also be prevented from registering anything that is too similar to a mark already owned by a third party. Such marks may be found by searching the trade mark registers, as mentioned above.
In addition to checking that your mark is registrable as a trade mark and free for you to use and register, it is also advisable to check that any domain names you might wish to use are available.
Using your branding
Registered trade marks usually come with use requirements – it is necessary for the owner, or their licensee, to use the mark, or it may become vulnerable to an invalidity action. This prevents entities squatting on marks to simply frustrate third parties. You should ensure that you use your mark across the scope of the goods and services for which it is registered, and in all the jurisdictions in which it is registered. If you have a European trade mark, it is important to use it in a number of European countries, not just one. The mark should be used in the form in which it is registered, e.g. if you have a stylised word mark, it is important to use it with that stylisation. If you change your branding, you should revisit your registrations to make sure they still cover the marks you want to use.