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 Ryland



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