Trade marks: the 3 biggest mistakes to avoid
Wander around a supermarket, or browse the advertisements in newspapers and magazines, and you’ll see trade marks everywhere. And it’s likely, too, that your own business will also possess trade marks, linked to either the business itself, or to the products or services that it provides.
But there’s more—much more—to trade marks than just appending the ‘®’ character to your chosen brand. Time and again, we at The Legal Director see businesses make basic mistakes with trade mark law, leaving them open to serious commercial risks.
And as with any issue relating to intellectual property, the best way of avoiding those risks is to address them upfront—a tactic which is invariably more productive than attempting to settle disputes with third parties at some subsequent point afterwards.
How to best to achieve that? Avoiding these three common trade mark mistakes is a major step forward.
Mistake #1: Using trade marks that can’t be registered
Choosing an appropriate trade mark can be a complex matter, and professional advice is often very useful. What’s important is to avoid trade marks that are either descriptive of, or related to, the product or service that you’re trade marking.
Why? Because you won’t be able to register it with the appropriate trade marking authorities: they simply won’t accept it.
So, in simple terms, if you’re selling oranges, you can’t register the trade mark ‘orange’. But on the other hand, if you’re selling a telephone service, then ‘orange’ is fine. As is ‘apple’, if you’re selling computers and consumer electronics.
That said, it can be possible to get away with a trade mark that verges on the descriptive, provided that it is linked to a non-descriptive design.
Speaking of designs, though, tread carefully if you’re using a professional designer to create those designs. That’s because in law, copyright or rights in a design reside with its creator, and not the business that commissions the design. So always make sure that you get the design rights or copyright formally assigned to you.
Mistake #2: Failing to register—or renew—trade marks everywhere you trade
Having come up with a trade mark that can be registered, the next biggest mistake is failing to register it in all those territories where you might want to protect it.
That said, in the United Kingdom, and most former Commonwealth countries, there’s a right to sue businesses which are passing off their products or services as yours, and fraudulently using your trade mark.
But while that right exists, making use of it in the courts can be time-consuming and expensive—it’s better by far to simply be able to produce a registered trade mark, putting the onus on the third party in question to dispute your right to use that trade mark.
And, of course, in many countries of the world, that right to sue in respect of passing-off simply doesn’t exist, anyway. Japan, South America, and most of Europe—you simply have to have a registered trade mark, or see your intellectual property misappropriated in the form of brand infringement.
That said, remember that a trade mark registration only lasts for ten years: after that time, it will lapse—and so must be renewed, or risk further brand infringement.
Mistake #3: Failing to protect your trade marks
Finally, a further mistake lurking to trap the unwary is a failure to act both properly and promptly when it comes to enforcing your trade mark rights.
Acting properly involves two things. First, always attach the ‘®’ symbol to the trade mark, everywhere it is required. The ‘®’ symbol isn’t an afterthought: it is actually formally part of the trade mark, and must be used as such.
Second, avoid using the trade mark in a descriptive context, or risk losing its protective rights. The word ‘elevator’, for instance, was once a trade mark, but lost its protection through being used descriptively—and the word ‘elevator’ is now a generic term for what we in Britain call ‘lifts’ within buildings such as offices and hotels.
Acting promptly involves taking steps to exercise your trade mark rights immediately that you become aware of possible infringement—including potential infringement in the form of a trade mark that is similar, but not absolutely identical.
That’s because, at its starkest, if a third party makes use of a trade mark that is similar, and you don’t take action, you will have been deemed in law to have consented, leaving the third party free to continue unhindered.
Put another way, it’s a case of use it—or lose it.
Trade marks: the bottom line
Complicated? It can be, we admit. Is it worth the effort involved to properly conceive, register, and protect your business’s portfolio of trade marks? Frankly, only you can answer that.
How exposed are you in practice? And what are the real risks that you run? These, on the other hand, are questions that we can help you with.
So for a no-obligation initial consultation, pick up the phone, or e-mail us.
Posted Monday, February 29th, 2016 by Warren RylandTweet
Other Articles In This Category
- Are you ready for a Modern Slavery Act audit?
Quite possibly, your business’s website carries a Modern Slavery Statement. For huge numbers of businesses with a turnover of £36m or more, such a... read more
21st of June 2019 by Warren Ryland
- Blunt talking from the marathon finish line
At the end of April, I ran the 2019 London Marathon. I’d set myself a target of finishing in under four hours—and just managed it. My time: 3... read more
14th of May 2019 by Warren Ryland
- Can your business survive Tyson's 'punch in the face'?
“Everyone has a plan—until they get punched in the face,” boxing champion Mike Tyson famously observed. Here at The Legal Director, we recognise... read more
1st of April 2019 by Warren Ryland
- Selling your business: getting the price you deserve
Take two businesses, of comparable size, revenues, and profitability. Why would one sell more quickly than the other—and for considerably more money? Here at... read more
26th of February 2019 by Warren Ryland
- IR35 for the private sector: six key questions answered
As we warned in our March 2018 blog, there was always a high probability that the IR35 reforms the government introduced to the public sector in April 2017 would be... read more
18th of January 2019 by Warren Ryland
- The hidden dangers of Christmas parties
It’s the season for Christmas parties. And, as an employer, you may well be holding one for your staff—a Christmas party is, after all, a popular way of... read more
3rd of December 2018 by Warren Ryland
- Managing external legal providers: 3 pointers to a better outcome
In an earlier blog, we looked at how best to instruct external legal providers—providers such as barristers, solicitors, or legal consultants. Why? Because... read more
5th of November 2018 by Warren Ryland
- Can your staff verbally modify your contracts?
It’s a common enough scenario. You have a contract with one of your key suppliers, and you—or one of your staff—agree over the phone with... read more
20th of October 2018 by Warren Ryland
- Funding Fair: from concept to commercial reality
The Legal Director is proud to be co-sponsor of the latest Informed Funding "Funding Fair - Funding for Deep Technology: from concept to commercial reality" on... read more
19th of October 2018 by Warren Ryland
- Funding your business: debt vs equity
The Legal Director is proud to be co-sponsor of the latest Informed Funding workshop on Wednesday 3 October from 12:00-13:30 hrs or 17:00-18:30 hrs. This... read more
4th of September 2018 by Warren Ryland
- Exit Planning and Growth Strategy Workshop
The Legal Director is proud to be co-sponsor of the latest Informed Funding workshop on Tuesday 9 October from 11:00-13:30 hrs or 14:30-17:00 hrs. This... read more
4th of September 2018 by Warren Ryland
- What does an Investor want to see in a Business Plan?
The Legal Director is proud to be co-sponsor of the latest Informed Funding 90-minute workshop on Wednesday 12 September from 10:30-1230 hrs or 14:00-15:30... read more
22nd of August 2018 by Warren Ryland
- Instructing external legal resource: 5 questions to think about
Even when a business has an in-house legal team, there are times when instructing external legal resources—barristers, solicitors, or legal... read more
14th of August 2018 by Warren Ryland
- Talk to a lawyer: the ROI of legal advice
What do legal and regulatory issues cost your business each year? And - perhaps more worryingly - what is the cost of those commercial and contractual disputes that... read more
22nd of June 2018 by Warren Ryland
- Planning an Exit Strategy to sell your business?
The Legal Director is proud to be co-sponsor of the latest Informed Funding workshop on Wed 4 July, where you'll be able to discuss with experts and other... read more
5th of June 2018 by Warren Ryland
- Is your business facilitating tax evasion?
Is your business facilitating tax evasion? Put like that, most of us would automatically answer ‘no’. But let’s re-phrase the question. Does your... read more
8th of May 2018 by Warren Ryland
- IR35 and the private sector: are changes on the way?
As the government considers extending to the private sector its public sector reforms of the rules relating to the engagement of contractors through so-called... read more
22nd of March 2018 by Warren Ryland
- GDPR: 3 practical questions facing businesses like yours
In just a few months—on May 25th—compliance with the General Data Protection Regulation (GDPR) becomes mandatory. The biggest change to data protection... read more
1st of March 2018 by Warren Ryland
- I'd like to work from home, says an employee. Now what?
Conversations about employees working from home were once very short. In those rare instances where employees did venture to enquire about the possibility, the... read more
8th of January 2018 by Warren Ryland
- Is a domain squatter set to steal your brand?
It’s fair to say that many businesses are unprepared for the new .uk Internet domain - which is unfortunate, as from June 2019, they could find that their... read more
5th of December 2017 by Warren Ryland
- Did you negotiate your last loan agreement - or just sign on the dotted line?
For businesses wanting to grow or invest, external finance can be an attractive option: access to the funds that they need, without equity dilution or... read more
2nd of November 2017 by Warren Ryland
- Protecting the value of your newly-acquired businesses can be a challenge
Buying a business is exhilarating. Hard work, to be sure - but undeniably exciting, and with a rich sense of the opportunities that lie ahead. So perhaps... read more
2nd of October 2017 by Warren Ryland
- GDPR. The clock is ticking: a tough new take on data protection is fast approaching
With effect from 25 May 2018—in other words, less than a year away—your business is exposed to a new regulatory regime backed by hefty fines. And by... read more
6th of September 2017 by Warren Ryland
- Persons of Significant Control: important changes to reporting requirements
It’s barely a year since the introduction of the PSC regime - and already, the compliance requirement has been tightened. And at a time when many businesses... read more
23rd of June 2017 by Warren Ryland
- Avoiding conflict when forming a business: probing questions for potential partners
Every year, several hundred thousand new businesses are created. In 2015, according to the Office for National Statistics, the total was 383,000—the highest... read more
28th of April 2017 by Warren Ryland
- Is your business at risk from the Uber decision? Why your self-employed contractors could really be employees
Fuelled by companies such as ride-hailing business Uber and personal courier firm Deliveroo, the so-called ‘gig economy’ is on the rise. So much so,... read more
12th of January 2017 by Warren Ryland
- The Legal Director - Commended for Innovation in the FT Innovative European Lawyers awards
Law firm The Legal Director (TLD) has been commended in the FT Innovative European Lawyers awards, which were announced at the beginning of this month. TLD ranked... read more
28th of October 2016 by Warren Ryland
- Debt versus Equity - Financing for SMEs
The need for additional finance is often the price of success for small to medium-sized enterprises (SMEs) that are looking to grow. The question that faces the... read more
14th of October 2016 by Warren Ryland
- The deceptive complexity of the Modern Slavery Act
At the end of July, Prime Minister Theresa May launched a cabinet-level government taskforce to eradicate modern slavery in the UK. It was, she said, “one of... read more
31st of August 2016 by Warren Ryland
- How our clients will benefit from the Bar Council's escrow account
Outside the narrow realms of consumer technology, there’s often an inevitable trade-off between cost and quality. In other words, you can have something at... read more
7th of July 2016 by Warren Ryland
- As the net starts to close, the Bribery Act prosecutions begin
As we have written before, the Bribery Act 2010 is a law with undoubted teeth. Fines are potentially unlimited, and custodial sentences can be up to ten... read more
1st of May 2016 by Warren Ryland
- New rules on shareholder identification are now in force
New rules on shareholder identification are now in force - and yet many businesses aren’t aware of them. Does your business have corporate or nominee... read more
12th of April 2016 by Warren Ryland
- First SRA-regulated law firm signs up to Bar Council's escrow account
PRESS RELEASE: The Legal Director has become the first law firm regulated by the Solicitors Regulation Authority (SRA) to sign up to the Bar Council’s... read more
31st of March 2016 by Warren Ryland
- Avoiding flexible working's hidden pitfalls
You don’t have to look too far to see that traditional modes of employment are increasingly giving way to more flexible working arrangements. Returnee... read more
9th of November 2015 by Warren Ryland
- Are you paying your workers the right amount of holiday pay?
A recent ruling by an Employment Appeal Tribunal is set to cause many businesses a headache. Quite an expensive headache, at that. Simply put, it means that... read more
15th of July 2015 by Warren Ryland
- The Bribery Act 2010: are you running a risk of breaking the law?
To see the difficulties that businesses can get into through bribery - or even allegations of bribery - look no further than the reputational damage suffered... read more
11th of June 2015 by Warren Ryland
- It's official: "Lawyers are not cost-effective"
Imagine, for a moment, that when faced with a serious illness, significant numbers of people took no action. And of those who did take action, around... read more
20th of January 2015 by Warren Ryland
- Could a Shareholder Agreement save your business?
Here at The Legal Director, we’ve recently come across a business where the two co-founders have fallen out -- one is now leaving, in order to set up on his... read more
1st of December 2014 by Warren Ryland
- The high-fee culture that's hobbling British business
Another week, and yet another critical item in the press on the cost of obtaining corporate legal advice. And to be sure, it’s certainly a fairly open goal at... read more
11th of November 2014 by Warren Ryland
- Is crowdfunding the answer to your business's financing challenge?
As the credit crunch and ensuing recession of 2008 began to bite, lending to businesses dried up. To their shock, even long-established, profitable businesses... read more
2nd of September 2014 by Warren Ryland
- Complying with the Data Protection Act: 3 business bear-traps awaiting the unwary
Visit the website of the Information Commissioner’s Office, and there’s an interesting section entitled ‘Enforcement’. In it, the... read more
1st of September 2014 by Warren Ryland
- What might a Legal Audit reveal about your business?
When we start working with a business we assess their existing legal arrangements to determine how these can be improved and aligned with commercial objectives. We... read more
9th of July 2014 by Warren Ryland