Trade Mark Trials and Tribulations

We are often asked whether trade marks are a worthwhile investment by prospective clients. The answer for the majority of clients is undoubtedly yes: whilst securing one does involve some small initial outlay, this is minimal in comparison to a number of other intellectual property rights and particularly so for those such as patents.

In addition, trade marks are a key asset for any brand: they are the only way to record the intangible ‘good will’ with which the public associates a particular sign or word relating to that brand. They have been used since ancient times, typically by traders to indicate ownership of a particular product or as a source of origin from that particular trader. During the medieval ages in particular, trade marks were used by certain guilds in particular to ensure that only members of that guild could affix its brand or ‘seal’ on the products in question, attesting to the associated quality in it.

We have discussed some of the other ways in which trade marks can be valued as an asset in previous blogs such as here. In the modern age, it remains to be said that they also remain valuable for another, rather more different reason: as a means of stopping someone else securing your dream name for a brand before you do.

This can happen in a number of ways, some of which are innocent and some of which are less so. We have seen increasing incidents of large scale trade mark pirates who file for numerous brands at a time. Some of these might be perfectly legitimate but the fact remains that there are entities out there that make a living from making speculative filings for numerous trade marks at a time in order to sell them back to their rightful owners once they discover that someone else has secured them.

What appears to be trade mark “squatting” can also happen entirely innocently: someone may secure a prior registration for your brand without ever knowing you or your company and just as a matter of sheer bad timing. This is a particularly important factor when considering not just the UK but also further afield: trade mark rights are territorial and different countries around the world have different legal systems which stipulate how such filings are to be treated.

In the UK, there is the avenue to argue that a particular application has been made in ‘bad faith’, particularly where an opponent can show that the applicant had no intention to distinguish its goods from those of other traders. However, this is by no means guaranteed to succeed and the situation is different in different territories such as China. There, largely speaking, it is simply those who are first to file a trade mark who obtain rights to it.

The above goes to show the importance of securing your rights early, particularly where you envisage trading in more than one territory. Here at Briffa, the team benefits from over 25 years’ experience filing in nearly every jurisdiction in the world: we are able to assist you from Albania to Zambia; if you need any further information in this regard please do feel free to get in touch with us sooner rather than later.

Written by Tom Synott, Solicitor