In this article, Dutton Gregory’s intellectual property expert Laurie Heizler explains the importance and value of trade marks.
Trade marks are a very important type of intellectual property (IP). They protect a particular kind of creative output as they are the graphical indications that distinguish the goods or services of one trader from those of another.
Trade marks can be words, logos, shapes, colours or the overall visible presentation of your offering which is sometimes called “get up”. Your customers’ brand loyalty and the value of your goodwill depends on your trade marks and their immediate recognisability.
Do trade arks need to be registered?
No. Just using your branding indications and generating goodwill at the same time establishes them as unregistered trade marks protectable under common law. You may identify them by the use of the ™ symbol. It reminds everyone that you may have enforcement rights if competitors try to divert business away from you by using similar branding.
What is someone copies me?
You have the right to take action in court for “passing off” if you can show that your competitor has misappropriated your goodwill by using branding sufficiently similar to your own. You must demonstrate that there is a least a likelihood of confusion on the part of the public and that such confusion would lead to loss of your goodwill or reputation. If you are successful, you may obtain a court order that stops the passing off your branding. You might also recover damages (or the profits your competitor has made from passing off) and legal costs.
How do I get a ‘registered trade mark’ (RTM)?
As soon as your brands have been established, we advise that you apply to register them in the intellectual property offices of the countries in which you are seeking protection. It is not necessarily difficult to obtain registration but it adds considerably to the power of your brand if you obtain registration.
Trade marks can be registered with respect to the goods or services which you sell. You will be able use the ® symbol to show that you have RTMs.
Registration does not usually cost a great deal. The expense is obviously increased if you need to seek registration for multiple kinds of goods and services or in the event that your RTM is challenged by a third party having grounds to claim prior entitlement through use or registration of a similar trade mark.
What if someone uses my trade mark?
Anyone using the same or a similar trade mark to yours on broadly similar goods or services may be sued for RTM infringement. This is generally easier to prove than passing off, but in practice it would be usual to argue both. The remedies you might obtain are much the same as for passing off – injunctions, damages and costs.
In our experience, most trade mark disputes are resolved by settlement. The winner is usually the party with the strongest rights but both parties will need expert legal advice to make the best of their arguments.
So what is the value of investment in RTMs?
There are very good reasons why a business with strong brands should register its trade marks:
- Unlike other IP rights, RTMs last forever if they are continually used and regularly renewed. They outlast copyright, registered designs and design right which may in some cases confer overlapping IP protection.
- RTMs give you the exclusive right to use your branding on your own goods and services which you can enforce in the courts without the more complex evidence needed to establish passing off
- They communicate attributes of your product or service and of their reputation
- RTMs make it easier to identify your offerings through search engines and in social media
- Although RTMs are relatively cheap to obtain, they are assets that have increasing value because they embody the goodwill in your business. The value they add can be realised when you sell your business
- RTMs give you more freedom to operate, allowing you to exploit them through licencing and transfer (assignment) in return for royalties and other revenues
- Using symbols such as ® (and ™) appropriately put everyone on notice of your rights, deter imitators, and contribute to good marketing.
If you have any issues in connection with the acquisition, enforcement or defence of trade marks or you anticipate any IP dispute, please contact Laurie on 01962 624423 or email him at firstname.lastname@example.org.
© Dutton Gregory LLP 2022