Protecting Your Retail Brand: Intellectual Property Law Insights
20th May, 2024
The law of intellectual property ("IP") covers the protection of intangible assets through trade marks, copyright, designs, and patents. It is crucial for any business to understand the basics of IP law in order to protect its brand and products more effectively.
Investing in the protection of your IP can enhance the value of your business in the future. Having a robust and well protected IP portfolio can be attractive to future investors and business partners, as it can open up opportunities for revenue generation (through licensing, or franchising for example).
As a retail business, your brand is your most valuable asset. It represents your company’s reputation, values, and products. Protecting your brand (such as your name, logo, and other identifying features) from unauthorised use by others is crucial to maintaining your competitive edge and promoting the success of your business. Conversely, if your brand is copied or imitated, this can dilute the goodwill you have developed, and lead to a loss of market share and revenue.
In this article, we will explore the basics of protecting your brand through trade mark registration.
What is a trade mark?
A trade mark is a sign that identifies and distinguishes the source of the goods or services of one party from the goods and services of others. For most retail businesses, this is likely to be a word, phrase or symbol (such as a trading name, logo, product name or a motto), although trade mark protection can cover a variety of other things (such as colours, shapes and sounds).
It is important to note that you will not be able to register a trade mark which is generic, or descriptive of the goods and services you are selling – to register your trade mark, it must have distinctive character.
How are trade marks protected?
In the UK, trade marks can be either unregistered or registered.
Registering your trade mark will give you far greater protection compared to relying on an unregistered trade mark. This is because a registered trade mark grants you an exclusive monopoly right to use that trade mark in connection with the goods or services listed in your registration (i.e. to manufacture, sell or advertise such goods and services). This means that you can:
- Prevent others from using your trade mark to sell the same or similar goods or services without your permission.
- Bring an action for trade mark infringement against an infringer making unauthorised use of your trade mark, or a brand similar to the one protected under your trade mark.
- Prevent others from registering a trade mark which is the same or similar to yours, in relation to the same or similar goods and services to those covered by your trade mark.
- Licence or sell your trade mark to another business in order to generate revenue.
Alternatively, if you do not have a registered trade mark and you encounter another business making unauthorised use of your brand, you may have protection under the common law tort of ‘passing off’. However, the legal and evidential burden of bringing an action for ‘passing off’ against a suspected infringer is far more cumbersome, as you must establish all of the following:
- Firstly, that you have an established reputation and goodwill in relation to the products/ services you sell
- Secondly, that customers have been misled/ confused into believing that the infringing party’s goods and services are actually yours;
- Finally, that your business has suffered (or is likely to suffer) actual loss as a result of the suspected infringing actions.
Not only does this take far longer to establish, but it can lead to higher legal and management costs overall in comparison to the enforcement of registered rights. It is far easier to identify and challenge instances of infringement of a registered (rather than unregistered) trade mark, as the trade mark, its owner, the goods and services it covers, and the period of protection, are all publicly documented at the UK Intellectual Property Trade Mark Registry, and there is a presumption that the registration is valid.
How do you register a trade mark?
To register a trade mark, you must file an application with the UK Intellectual Property Office.
It is crucial to ensure that your trade mark application covers all of the correct trade mark classes, including all of the relevant goods and services that you want your trade mark to cover. The application process can be complex and time-consuming, so it is best to seek the guidance of a trademark attorney to ensure your application is filed correctly, and in a manner that sits well within your short and long term brand strategy.
Before filing a trademark application, it is advisable to conduct a thorough search to ensure that your desired trademark is not already in use. This can help you avoid potential conflicts and save time and money in the long run.
How long does a registered trade mark last?
Once registered, your trade mark registration will initially last for 10 years. You will then need to renew your trade mark, and can do so during the 6 months before, and 6 months after its expiry. If you renew your trade mark every 10 years, provided that it continues to be in use, your trade mark protection can last indefinitely.
Will my UK trade mark registration protect my business all over the world?
Like many other types of IP, trade mark protection is territorial, and trade mark laws differ worldwide. A UK trade mark registration will only be valid in the UK, and so it is crucial to ensure that you secure trade mark protection in every country in which you plan to operate.
In many countries, the ‘first-to-file’ principle applies, meaning that whoever registers a trade mark first will own the trade mark rather than the original use of the trade mark. Due to this, businesses sometimes face the unfortunate issue of ‘trade mark squatting’ where unscrupulous individuals register trade marks in their country with a view to selling them back to the original owner for an inflated price. For this reason, retailers should consider brand protection in both the short and long-term, in order to assess as early as possible which markets the business is realistically seeking to enter, and filing appropriate trade mark applications before launching.
Furthermore, just because a trade mark is available for registration in one country doesn’t mean it will be so in another. For example, your business name may already be in use by another business operating in a similar market abroad, or what is considered to be unique and distinctive in one country may be considered generic in another. Appointing a local trade mark attorney to carry out due diligence early in the process will help to reduce the risk of launching a brand which is subsequently challenged. The legal and reputational costs of having to respond to an infringement action should not be understated.
Post-registration tips
- Monitor your portfolio
Trademark monitoring is crucial to protecting your brand. By actively monitoring your trade marks, you can identify potential infringements and take action to protect your brand before any material damage is done. It is also important to proactively manage renewals in order to avoid inadvertently losing your valuable trade mark protection.
Outsourcing your trade mark monitoring to a specialised lawyer or trade mark attorney that offers a trade mark watch service can remove this burden from your organisation, allowing your teams to focus their resource on other aspects of the business.
- Review the scope of your protection
Brand protection is an ongoing process. As your business grows, you may need to consider expanding your trade mark portfolio, for example to protect your business in a new market abroad, or to cover the launch of a new line of products. If you re-brand your business, you will likely be creating something entirely new, which may require brand new trade mark registrations.
- Enforce your rights
If you discover that someone is using your trademark without your permission, it is essential to take action to enforce your rights. Failure to take action can undermine the value of your brand. The actions available can include sending a cease and desist letter, filing a lawsuit, or pursuing alternative dispute resolution methods. We would recommend taking legal advice if you find yourself in this position.
If you would like to discuss your trade mark protection, please feel free to get in touch with either Sonia Burgess or Bill Goodwin in our Intellectual Property Law team.
Please note that this briefing is designed to be informative, not advisory and represents our understanding of English law and practice as at the date indicated. We would always recommend that you should seek specific guidance on any particular legal issue.
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