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5 key points to consider when creating and protecting a new brand name

8 Oct 2024 | 1 minute read

A registered trade mark is a valuable asset for brand protection, enforcement and monetisation purposes (to name a few). When building a new brand, it is easy to be sidetracked away from protecting your intellectual property at the outset. Where trade marks are forgotten about or filed without due care and a wider strategic aim, it can lead to unnecessary and unforeseen additional costs, legal advice and gaps in brand protection.

Below are 5 key points to consider when creating a new brand name and obtaining trade mark protection:

1. When inventing a new brand name, all brand owners should conduct an initial search for the proposed mark

This should at least be via an internet search engine and an ‘exact’ trade mark search on the UK Intellectual Property Office (UK IPO) trade mark register (accessible free of charge here).

2. If initial searches appear clear, a full clearance/availability trade mark search is recommended

This will identify third parties with (i) existing registered identical and similar trade marks covering identical and similar goods and services, and/or (ii) existing use of an identical or similar mark (for instance, on websites, domains and/or in company names). Find out how you can carry out an availability search.

3. Where budget is limited and only one trade mark can be filed, consider which trade mark will give the broadest protection

Word only trade marks typically offer the widest protection as they are not limited by stylisation or colour so are more likely to stand the test of time and will outlast a rebranding exercise.

That said, a logo mark can also be particularly useful especially where word elements are descriptive and aspects (such as the colour and/or an icon) in the logo are particularly important.

 

4. Attention should be paid when choosing your trade mark specification

Goods and services comprised in a specification are grouped into 45 classes. A specification should cover any goods and services you currently and intend to use your mark upon.

Filing too widely could encourage unnecessary third party disputes and lead to your mark being invalidated or cancelled whereas filing too narrowly could omit important protection that impedes future enforcement and enables another third party to prevent the future use and registration of your proposed mark.

5. Where concerning earlier third party rights have been identified, filing a narrow specification may prevent disputes from the get-go

Along with the UK IPO notifying earlier trade mark owners about newly filed trade marks they consider to be identical and/or similar, trade mark owners often have watch services in place that equally alert them of concerning trade marks. If you are concerned about a third party objecting to your trade mark, a narrow trade mark specification which is tailored to your desired field may reduce the likelihood of a dispute arising.

We have expertise at assisting in the full life cycle of trade marks. If you require any advice on the most suitable trade mark filing strategy for your brand, please contact us via the details provided below.

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