On brand: what start-ups need to know about registered trade marks

If you’re setting up your own business then you know that your brand is one of your most powerful assets. You’ve put time and creative energy into developing it, but how can you be sure that it won’t be used by someone else? Ensuring brand protection with a registered trade mark, start-ups win on every front – their brands are offered the best protection from infringement by competitors.

What is a trade mark?

A trade mark is a sign which distinguishes the goods or services that you provide from competitors. Most commonly they are words and pictures, like the iconic Nike tick and the phrase Just Do It. Trade marks can also be sounds, 3D shapes, colours or even smells.

Registered vs unregistered trade marks

A registered trade mark, denoted by the ® symbol, is a mark which has been legally registered as representing a company or product. An unregistered trade mark, denoted by a ™ or not denoted at all, is a mark which has not been registered and is therefore not afforded the same protections.

If you have a registered trade mark, you benefit from stronger right to take legal action against marks which are likely to cause “consumer confusion”.  Your brand is protected even before you have started using it, making registration crucial for startups which are still in the developmental stage but wish to take early precautions to safeguard their brand from competitors.

Without a registered trade mark your rights can only be enforced if you can demonstrate that the mark has an established reputation in the market and loss has been incurred by someone misrepresenting your mark as theirs – an impossible situation for a startup company in the process of establishing itself.

As well as affording you greater legal protection, a registered trade mark brings commercial benefit. Registered marks are easier to transfer between businesses, licence to others under a franchise and, charge others for using by licensing it to them for royalties. The security and value added to a business by a registered trade mark also makes it more attractive to investors.

Dos and don’ts when applying to register a mark

Do check that you are free to use the mark without infringing anyone’s pre-existing trade mark rights

You can avoid any subsequent issues by conducting a trade mark clearance search.

Don’t submit a brand which describes a characteristic of your good or service

For a trade mark to be registrable it must be distinctive rather than descriptive. A distinctive mark is a sign which can identify the product without describing it – ORANGE would therefore be distinctive if filed in respect of the mobile network, but descriptive if applied to fruit juice.

Logos vs word marks: what type of mark is best for my business?

A word mark gives you the rights to the product or business name generally, whereas a logo only gives you rights to the use of the word and logo in conjunction with each other, therefore offering weaker protection. For wider protection, it’s advisable to register the brand name as a word mark first, and if your business provides a service with less scope for a visible logo this might be all that’s necessary. In the social media-influenced world of fast-moving consumer goods, however, a visually striking logo can be essential. Here it might be advisable to register both a word mark and a logo separately.

How can I register my mark in different territories?

You can apply country by country, in all EU member states under an EUTM or you can obtain protection for a number of countries worldwide through one application under the Madrid Protocol. You may also apply directly in other member states through our network of local lawyers.

And what class of goods and services?

You should register for a trade mark in all classes of goods and services which you actually provide and intend to provide in the next few years. Marks cannot be cancelled for non-use until it can be shown that the mark has not been used for a continuous period of five years from registration.

How can Briffa help?

Briffa can assist and advise you at every stage of the process, both in acquiring your marks and on effective brand protection once your marks are registered. By delegating the task to specialist lawyers you can spare yourself dealing with complex trade mark law and extensive paperwork, leaving you free to put your time and energy into developing your business.

If you require further information regarding registered trade marks, please contact info@briffa.com to arrange a free consultation with one of our expert trade mark solicitors.

Guest post by Eleanor Booth