IPIf a business does not have registered trade mark protection for its core brands, it risks being unable to prevent third parties from adopting an identical or similar brand. This is therefore a very important issue to consider carefully.

Without a trade mark registration, a business would need to rely on the law of passing off, which entitles the owner of goodwill to prevent the use of an identical or similar mark in certain circumstances where the relevant public are being or are likely to be confused over the source of the goods or services. Proving passing off can often be very expensive and there are
significant challenges in succeeding in a claim. 

In the right circumstances, we encourage brand owners to register their brands for a variety of reasons including:

1 Broader Rights

A trade mark registration grants the proprietor far broader rights than the law of passing off to prevent others from using or registering an identical or similar mark for identical
or similar goods or services covered by the registration. In some cases, it is not necessary to prove any confusion (for example, where the marks and goods/services are identical to those protected by the trade mark). For registered marks which have a reputation, it is sometimes possible to obtain protection for dissimilar goods or services.

Registered rights also provide a valuable deterrent from copycats (even if the proprietor of the trade mark ultimately decides not to enforce its rights).

2 Indefinite
protection
Trade marks are registered initially for 10 years but can be renewed for further 10 year periods indefinitely.
3 No need to use

There is no need to use a trade mark in the first five years from the date of registration.

This allows a company to "plant its flag," and once it has done so, it will have protection for its mark in relation to those goods and services even if it does not use them immediately. This is in contrast with the law of passing off, where you need to use the mark to acquire rights. Where a company decides to launch a new product in the future, it would be important to register a trade mark as soon as possible so that the owner can be confident that no third party can acquire better rights between the date of the application and the date of first use.

4 Adds value to
your business

A registered trade mark is a property right and therefore an asset. This means that it can hold its own inherent value. Revenue can be secured by selling or licensing a trade
mark to another person.

It is also possible to raise finance against the asset and banks often take charges over trade marks which have, over time, established their own significant value.

5 Counterfeit
Goods
A registered trade mark can be used to prevent counterfeit versions of your products entering the UK or EU. This is done by filing a Customs Notice which empowers Customs officers to retain and seize counterfeit products. The sale of counterfeit goods also amounts to a criminal offence.
6 Saves money

It is far easier to prove your rights when it comes to taking legal action against a third party or when opposing a trade mark application made by another person or company.

You simply need to show the trade mark certificate evidencing the registration and ownership of the mark. In contrast, when relying on the law of passing off, it is necessary to prove your goodwill by producing evidence of trade and customer recognition of the mark in relation to specific goods, which is expensive, and not always
easy to evidence.

7 Inexpensive The cost of securing a trade mark is not expensive.
8 Damages Should a third party infringe a trade mark, the proprietor would be entitled to an account of profits or damages. In some cases, this can produce a revenue stream.
9 International
Scope
By securing a trade mark, it can be used as a basis to secure rights around the world in a cost effective way.
10 Different marks It is possible to register a broad range of different marks including word marks, logos, shape marks, smells, gestures, and colours.

Learn more

Please contact Paul Cox, partner in our intellectual property team on T: +44 2380 172212 | E: paul.cox@footanstey.com or Charlene Nelson, trade mark manager on T: +44 1392 685332 | E: charlene.nelson@footanstey.com

Tags: Intellectual Property2017


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