Brand Tuned - Smart Marketing, Better Branding

Shireen Smith (from YouTube) - How to Protect a Trademark Internationally

December 07, 2020 Shireen Smith Season 3 Episode 58
Brand Tuned - Smart Marketing, Better Branding
Shireen Smith (from YouTube) - How to Protect a Trademark Internationally
Chapters
Brand Tuned - Smart Marketing, Better Branding
Shireen Smith (from YouTube) - How to Protect a Trademark Internationally
Dec 07, 2020 Season 3 Episode 58
Shireen Smith

Trade marks are your “badge of origin”, and serve to identify your products and services.  Without trade marks, it would be impossible to find the products and services we like and to avoid those we don’t. So, trade marks are tools enabling consumers to identify products and services they have enjoyed and want to buy again.

  • Trademarks protect the reputation and goodwill of a brand.
  • Any sign unique to your business may be registered as a trademark. The most commonly registered marks are words, logos, and slogans.
  • There is no such thing as an international trademark. Trademarks are territorial, meaning you need to register in each country in which you intend to trade.
  • Trademarks give you rights in the country or territory where you register. For companies trading in UK or Europe, the first step will be to apply for a UK or EU trademark. Those businesses that purely trade in this country will just want to register a UK trademark. For example if you run a restaurant and have no intention of franchising your business in other countries, the UK is the only country that is relevant to you.
  • There are two possible approaches to take when it comes to searching. Either do some searches before applying to register your mark in a particular territory, or simply take your chances and apply to register your mark in a territory and see whether the application encounters any problems. If a local trade mark blocks your registration then you might need to trade under a different brand in that country.
  • It is important to be strategic about extending your protection to other classes and other countries thereafter. 
  • if you don’t protect your mark in countries in which you trade, you could find yourself in a situation similar to what happened in Plenty of Fish/Plenty More Fish.
  • Plenty of Fish, a well-established online dating site objected to PlentyMoreFish setting up a rival online dating site in the UK under a similar name.  They opposed PlentyMoreFish’s UK trademark application, arguing that PlentyMoreFish was riding off its reputation by setting up the rival dating site. They lost because they couldn’t show that they had UK customers and as they hadn’t protected their brand with an EU trademark they were powerless to stop PlentyMoreFish.
  • That situation would never happen inside a single country like the UK. There are passing off laws and other remedies which would enable business in Plenty of Fish’s situation to stop PlentyMoreFIsh by injunction or other steps. However, online it’s possible for this sort of scenario to arise unless you are vigilant about protecting your mark in countries in which you trade.
  • Best to cover off your home market and the important jurisdictions in which you trade.

 

Thank you for listening!

 If you liked today’s episode or have learned something new from the series, please consider giving a review.

 

Links to my books

The 7 Costly Mistakes People Make When Branding or Rebranding - https://bit.ly/2VuUmsV 

Show Notes

Trade marks are your “badge of origin”, and serve to identify your products and services.  Without trade marks, it would be impossible to find the products and services we like and to avoid those we don’t. So, trade marks are tools enabling consumers to identify products and services they have enjoyed and want to buy again.

  • Trademarks protect the reputation and goodwill of a brand.
  • Any sign unique to your business may be registered as a trademark. The most commonly registered marks are words, logos, and slogans.
  • There is no such thing as an international trademark. Trademarks are territorial, meaning you need to register in each country in which you intend to trade.
  • Trademarks give you rights in the country or territory where you register. For companies trading in UK or Europe, the first step will be to apply for a UK or EU trademark. Those businesses that purely trade in this country will just want to register a UK trademark. For example if you run a restaurant and have no intention of franchising your business in other countries, the UK is the only country that is relevant to you.
  • There are two possible approaches to take when it comes to searching. Either do some searches before applying to register your mark in a particular territory, or simply take your chances and apply to register your mark in a territory and see whether the application encounters any problems. If a local trade mark blocks your registration then you might need to trade under a different brand in that country.
  • It is important to be strategic about extending your protection to other classes and other countries thereafter. 
  • if you don’t protect your mark in countries in which you trade, you could find yourself in a situation similar to what happened in Plenty of Fish/Plenty More Fish.
  • Plenty of Fish, a well-established online dating site objected to PlentyMoreFish setting up a rival online dating site in the UK under a similar name.  They opposed PlentyMoreFish’s UK trademark application, arguing that PlentyMoreFish was riding off its reputation by setting up the rival dating site. They lost because they couldn’t show that they had UK customers and as they hadn’t protected their brand with an EU trademark they were powerless to stop PlentyMoreFish.
  • That situation would never happen inside a single country like the UK. There are passing off laws and other remedies which would enable business in Plenty of Fish’s situation to stop PlentyMoreFIsh by injunction or other steps. However, online it’s possible for this sort of scenario to arise unless you are vigilant about protecting your mark in countries in which you trade.
  • Best to cover off your home market and the important jurisdictions in which you trade.

 

Thank you for listening!

 If you liked today’s episode or have learned something new from the series, please consider giving a review.

 

Links to my books

The 7 Costly Mistakes People Make When Branding or Rebranding - https://bit.ly/2VuUmsV