A unique name or logo can differentiate your product or services from others in the market. It becomes the ‘calling card’ for your brand in the marketplace and for successful companies it can be their most valuable asset. Therefore, it is essential to fully consider any proposed mark before launching it on the market…it may be with you for a long time and gain significant value so chose wisely!
Deciding on a mark is not an easy job and there are certain issues you should always consider before finalising a design: –
1. What’s out there? Research the marketplace thoroughly to see what marks are being used already. A trade mark is generally recognised as the vehicle for investment into a brand or logo and it aims to protect the reputation and goodwill associated with that brand or logo – it provides the trade mark owner with a protectable right which can be enforced if infringed. When selecting a brand or logo it is essential to consider its ability to be registered as a trade mark and the process involved. It is frustrating to go to the effort and expense of finalising a design to then realise it is likely to be objected to by the owner of a similar mark.
All member states in the EU have harmonised their trade mark laws. If you envisage yourself trading in more than one member state a Community Trade Mark (“CTM”) offers you protection throughout the EU. Carry out general searches online and also on the databases of the Office for Harmonization in the Internal Market (OHIM). In the final stages of a CTM application OHIM will search their databases and will inform the holders of any identical and/or similar marks of your application allowing them an opportunity to object. You are better off knowing in advance what potential challenges your application could face, enabling you to change your proposed design if necessary. Practically speaking trade mark searches should coincide with a search of ‘domain names’ also – as both aspects are typically central to any marketing strategy.
2. Consider your design from all angles – Your proposed mark must meet certain legal requirements for trade mark registration – it must be distinctive (i.e. it must be unique) and not overly descriptive. You can register several varieties of trade mark; however, the most common are:
• a word mark (word only);
• a figurative mark (graphic only); or
• a figurative mark with letters (i.e. a design with graphics and words).
Always consider the life-cycle of your product/service and whether it could be exported elsewhere. If your mark contains words ensure they do not have an adverse meaning in a foreign language or in slang. Ideally a logo should be easy to read and spell.
3. Look to the future – Clarify what goods and/or services you intend to associate the mark with so you can determine what classifications you should register the trade mark under. A trade mark must be clearly defined otherwise third parties will not know what your application covers. The classes selected should encompass all goods/services that could potentially be connected with the mark. However, if the classes are too broad, there is a chance that the application will be opposed. CTM classifications cannot be added to after registration (though they can be restricted) – so be careful not to be too narrow in your selection at the early stages.
4. Plan ahead! – Even if your good or service is not ready to launch consider submitting a trade mark application in advance. By registering your trade mark you will have greater comfort knowing that you have a protectable right before incurring the expense of a full branding or marketing campaign. Trade marks are protected at common law even if not registered, though unregistered rights are more difficult to enforce. Registration provides greater certainty and highlights any potential conflict with competitors or similar mark holders. Registering a trade mark at the outset removes the uncertainty and stress of applying to register a mark already in use later down the road.
5. Maintain your rights – A trade mark is a tangible asset which can be licensed or sold – an investor or purchaser will generally always require proof of ownership of a trade mark associated with the goodwill of a company or business before investing. The relevant legislation requires a trade mark to be put to use. If not, a third party could challenge your trade mark for non-use. CTM registration lasts for 10 years but can be renewed indefinitely. Once registered you can display the ® symbol or the CTM number next to the trade mark to deter others from using it or a similar version.
Contact Maria Edgeworth for more information.
Disclaimer
This publication is for guidance purposes only. It does not constitute legal or professional advice. No liability is accepted by Ogier Leman for any action taken or not taken in reliance on the information set out in this publication. Professional or legal advice should be obtained before taking or refraining from any action as a result of the contents of this publication. Any and all information is subject to change.