The hidden trade marks that could destroy your brand, and how to avoid them.

In this episode, Albright IP MD, Robert Games sits down with Trade Mark Attorney Katie Oliver to reveal the unseen risks that can derail a business before it even gets started.

Every founder thinks their brand is safe… until it isn’t.

If you’re naming a business, launching a product, expanding overseas, or building a brand you want people to remember, this is essential listening.

Katie reveals:

·        The number one mistake entrepreneurs make when choosing a name

·        Why using a brand before registering it can lead to a forced rebrand

·        The truth about company names (and why they offer zero real protection) 

·        How trade mark searches can save you thousands — and your reputation

·        What a word mark actually protects vs. a logo or slogan

·        The difference between ™ and ® and why it matters

·        How to think globally when protecting your brand

For anyone serious about building a brand with value, credibility and longevity, this conversation will change how you think about intellectual property.

Figure 1 – an IP conversation. Real stories. Real lessons. The protection your business needs.

Subscribe to Figure 1 – an IP conversation for more episodes on protecting innovation, creativity and business growth.

Want help protecting your brand?
Visit Albright IP: www.albright-ip.co.uk

Transcript

Intro

Katie Oliver 0:00

Let me quell the myth. A trademark is not just a logo. It's much more than that. Can I use my trademark before I register it? Yes, you can start using a trademark, but you could be playing with fire. Will your registered rights be sufficient to enable you to win in either a defence or an enforcement situation?

Robert Games 0:20

Brilliant. Thank you. Hello and welcome. I'm Robert Games, Managing Director of All Brights IP. Welcome to our podcast, Figure One, an IP Conversation. Today I'm joined by Katie Oliver, an experienced trademark attorney who heads our trademark team. Today we'll be discussing some of the more commonly asked questions that the team are asked on a day-to-day basis. Katie, thank you for joining me.

Katie Oliver 0:46

Thank you.

Why should you register a trade mark?

Robert Games 0:47

So why should I register my trademark in the UK?

Katie Oliver 0:50

Well, put simply, trademark registration will secure immediate legal rights. It will give you enforcement rights and exclusive rights to deter others and keep them away from your trademark. Whilst it's true that trademark rights are accrued on an unregistered basis by virtue of a mark's use, that's under the law of passing off. In contrast, registered rights are immediate, they're strong, and they're cheaper and easier to assert.

When should you register your trade mark?

Robert Games 1:16

Okay, so immediately enforceable rights and they're cheaper. So when should I register my trademark?

Katie Oliver 1:23

In a nutshell, early doors, and ideally before use of your trademark begins. Before filing, the first step is to search, and that's to check whether a third party has filed the same or a similar trademark. If you launch, you could then be forced to rebrand if you hit up against earlier conflicting rights. You'd have to change your trademark, your company name, your domain name, you even have to defend a legal action, and that could involve the payment of damages.

Robert Games 1:53

Okay, so that could be a really expensive thing if you get that wrong.

Katie Oliver 1:56

Very serious.

Are searches routinely conducted?

Robert Games 1:57

Okay, so so do do we do we routinely conduct searches? Yeah.

Katie Oliver 2:02

Yeah, we do. We do that on a daily basis. And we tailor our searching to our clients' needs. So MOTIS starting off in the UK, but then looking internationally. And we can do it on a different scale. So we could just be looking for identical trademarks, then we could look more broadly into similar marks as well, and also use on an unregistered basis.

Robert Games 2:22

Okay, so you're basically looking to avoid confusion on the trademark registers to avoid problems before they happen.

Katie Oliver 2:28

That's exactly right.

What should you be filing?

Robert Games 2:29

Okay. And so what should I be filing?

What is the difference between registering a word mark and a combined mark?

Katie Oliver 2:33

This is the critical question. And firstly, let me quell the myth. A trademark is not just a logo. It's much more than that. So the most common trademarks are word marks or combined marks that are made up of a trademark and a logo, a logo on its own or a slogan. But there's also non-traditional trademarks. So think of MGM's Roaring Lion, that's a sound mark. Christian Leboutin's Red Soul is a colour mark. So this might also be a good point to think about what is the difference between registering a word mark and a combined mark. So your word mark and slogan together.

Robert Games 3:13

Sure.

Katie Oliver 3:14

Essentially, it's the scope of your rights. But the fundamental rule is that a word mark gives the broadest protection, regardless of colour, style, or font. But it doesn't protect your logo. So that needs a separate registration. So ultimately the question is will your registered rights be sufficient to enable you to win in either a defense or an enforcement situation? So it's such an important question.

Robert Games 3:42

Okay. So you're just making sure you get off on the right foot.

Can you register a slogan?

Katie Oliver 3:44

And can I can I register a slogan? Yes. Slogans are registrable. Think of McDonald's, I'm loving it, or Nike's, just do it. But they have to fulfill the registration criteria like all other marks. So the trademark or the slogan must be distinctive, inventive, memorable. It can't just be descriptive words or generic. It must distinguish and differentiate your goods and services from those of other parties.

Can you use your trade mark before you register it?

Robert Games 4:15

Sure. So can I use my trademark before I register it?

Katie Oliver 4:19

Yes, you can start using a trademark, but you could be playing with fire. So a recommendation is always to register it first. Before registration, you don't have the same legal and enforcement rights that you do once you have your trademark registered. Remember the harsh reality is that if you don't have a registered trademark, even if you've used it, if a third party registers the same or a similar trademark, they could turn the tables and stop you using your trademark.

What's the difference between a company name and a trade mark registration?

Robert Games 4:50

And I think this is quite a common question. What's the difference between a company name and a trademark registration?

Katie Oliver 4:56

You're right. This is one of the most commonly read articles on our website, and it is commonly misunderstood. So trademark registration and company name registration are two different and distinct systems. Company names are registered with companies house, trademarks with the UK IPO. Essentially, a company name identifies your business and it stops a third party from using exactly the same company name, but it doesn't give you exclusivity to use your trademark or enforcement rights to keep others away in your marketplace.

Robert Games 5:31

And actually then, so even if I'm thinking about naming a company, I should be really thinking about the trademark possibly first.

Katie Oliver 5:39

Absolutely. Early doors, think about that trademark, check that it's free for use, and then move forwards from there.

Are trade mark rights territorial?

Robert Games 5:45

Okay. And are trademark rights territorial, like other IP rights?

Katie Oliver 5:50

Yes. Trademark rights are territorial. So you have the you are protected in the country where the trademark is registered or the territory where it's registered. So UK trademark covers you in England, Scotland, Wales, Northern Ireland, and also the Isle of Man. Looking further afield to the EU, the European trademark covers all 27 EU member states in a single registration. It's a very efficient and cost-effective system. And then if you're looking for protection internationally, you have the option of filing national trademark applications in those countries. Or you could use the Madrid Protocol, where again, under a single registration, you can designate many different countries. This is again another useful system. It's renewed centrally every 10 years.

As a business where should you register your trade mark?

Robert Games 6:38

Okay, well that's great, isn't it? And and you know, as a business, you know, where should I think about registering my trademark?

Katie Oliver 6:45

It's another key question. Ideally, your trademark should be registered in the countries where you use it, in the countries where your customers are and where you manufacture, also where infringement is likely. So most UK-based clients will start with a UK trademark, so they have a strong home right, and then look abroad as they need to. There's a useful period called the priority period, where if you file in the six-month period following the filing date of your UK trademark, then you can claim the filing date of that UK trademark in your foreign applications.

What is the difference between ™ and ®?

Robert Games 7:21

Sure. This is another common question. Uh, what is the difference between the symbols R and TM?

How long does a trade mark registration last?

Katie Oliver 7:29

You're right. It is a common question and one that can be misunderstood. So TM means trademark. So the person will be claiming that the trademark is theirs, but critically it's not registered. In contrast, the R shows that the trademark is registered. You can't use it before you have your trademark registration, but it's a much stronger legal deterrent. So it's showing that you have invested in your trademark and that you're IP aware.

Robert Games 7:57

And how long does a trademark registration last?

Katie Oliver 8:00

So a trademark registration lasts for 10 years and it can be renewed indefinitely, provided that you pay the renewal fees. One point to keep in mind is non-use. So there are different grounds of revocation, but one of them is if you haven't used your trademark for a period of five years after grant, then a third party could challenge that registration for non-use if you haven't used it in relation to some or all of the registered goods and services. So our advice is to use your trademark consistently and to keep records so that you can show that use in relation to the full range of goods and services. Things like invoices, websites, screenshots, advertisements.

Robert Games 8:44

So what happens after my trademark application has been filed?

Katie Oliver 8:48

So this is a really important point, and we have to keep all deadlines monitored. Once the application has been filed, the next deadline will be the six-month priority period where you can file abroad. After that, it's then renewal every 10 years. And this is where Albright's Bespoke IP portal comes in really useful so that you can see your portfolio at a glance, you can see where it's registered and also any deadlines or dates that are associated with those trademarks.

Outro

Robert Games 9:15

Brilliant. Thank you for sharing answers to these questions, Katie. For anyone starting a business, adding brands, or extending products or services overseas, a good brand protection policy is absolutely essential for building value in your business and getting on the right foot. I hope that you've enjoyed listening to Figure One, an IP conversation today, brought to you by Albright IP. We look forward to you joining us next time. Thank you.