22 Sep 2021

Creating Value; Registration Is Only The Start

TMOA

A decade of dramatic change means that 80% of a company’s value now comes from it’s intellectual property: your Brands, Copyright, Data and Innovations. More than ever, your ideas, when protected buy legal rights, are a source of considerable value and profit.

The laws concerning Intellectual Property protection are evolving faster now than at any time in their history. Successful brands invariably attract imitators, but brand owners now have a wide range of tools and options enabling them to safeguard and maximise the value of their rights.

Registration of a brand as a trade mark is obviously very important to protect the business goodwill established through use in the market. Whilst a trade mark registration is an important tool in a business’ protection strategy, it is vital that it is used and enforced against third parties intending to launch competing products or services under names which are clearly identical and/or similar such that commercial confusion would arise leading to damage to the brand owner’s business. Registration is therefore only the start of brand protection. Brand owners should always monitor their market and be prepared to enforce their rights against third party infringements. As part of any protection strategy, it is advisable that you:

Set Up an Archive

Set up an archive of key documents showing their brand in use e.g. keep brochures, copies of advertising materials, screenshots of webpages and social media activity, log exhibition attendances and any further materials clearly showing the use of their brand in the market. Please note that external materials are key to showing proof of use and reputation created in the market which are helpful should you need to enforce your rights.

Review commercial contracts

Ensure that there are clauses in commercial contracts with employees, contractors, licensees and others clearly stating your ownership of your brands and that any exploitation/goodwill created through use of the brand name is owned by you. IP is a valuable business asset, and so it is important to review IP clauses in detail. It is best to ensure that the IP clause aligns with your business’s expectations by:

  • clearly defining the IP types in the contract;
  • considering how your business plans on using its and others IP;
  • the contract reflects your business needs.

Monitoring

Monitoring of the market/social media by employees and authorised users. Any complaints/ queries from customers highlighting potential confusion with others’ activities should be logged to determine if legal enforcement is needed to protect the business.

Watching Services

Put in place commercial trade mark register watching services. In the UK, the Intellectual Property Office (IPO) no longer polices your rights against third party attempts to register identical/ similar marks for confusingly similar goods or services – the onus is on brand owners to file formal oppositions against such attempts by third parties. A Watching service is vital in flagging these confusingly similar rights, giving the brand owner “early warning” of potential commercial confusion. Please note that many trade mark applications are filed before they are used commercially in the market and therefore, a watching service gives brand owners the ability to challenge confusingly similar marks at an early stage before commercial damage occurs.

Engage Legal Professionals

Engage the services of a legal professional ( a Solicitor or Chartered Trade Mark Attorney). They can work with you to ensure you have an ongoing and effective brand protection strategy.

Budget

Ongoing financial investment in brand protection is advisable and allocating a yearly budget where possible will allow you to enforce your valuable rights.

Do not delay

If an infringement is found. Immediate action is vital to mitigate against significant commercial damage!

If we can help, we would be very happy to assist, We would be very happy to arrange a free, no obligation meeting please contact Katie Waite katie.waite@tmoa.com 07946412481 or visit www.tmoa.com

IPOA Limited trading as Trade Mark Owners Association, Regulated by IPReg

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