Many companies do not realise the value of their brand’s intangible assets, but they are often fundamental to building a relationship between customers and businesses. Elements like a logo or brand-specific colours help your brand to stand out and enable customers to quickly identify your products within the market. However, if your business has built success and goodwill, your intellectual property may be vulnerable to attempts to copy these elements by competitors. Registering a trade mark to protect each of these assets is a vital way to protect your business’ reputation and avoid losing customers.
In this guide, the expert media law solicitors at JMW will help you to understand what intangible assets you can protect, how to apply for a registered trade mark, and what to do if you’re concerned about a brand you haven’t registered that has now been copied by someone else.
The first step towards protecting your business’ intangible assets is to identify the IP assets that you want to protect and determine how best to do so from a legal perspective. Every business will have some form of intangible assets, whether it’s brand recognition and reputation, or registered assets like patents and trade marks. Intellectual property law experts can help your business to identify any elements of your brand that can be registered, as well as any unprotected elements that may be subject to infringement.
Companies can run into trouble if their intellectual property isn’t legally registered; it makes it harder to prevent other companies from copying these assets for themselves, and this can ultimately lead to financial losses or damage to your business’ reputation if these assets become associated with another brand or business. Elements like a logo, slogan or brand colours are among the most recognisable aspects of your brand and it’s vital to protect them in order to secure your overall brand identity.
If you feel that another company is infringing on your intellectual property rights, but you haven’t registered these assets as trade marks, you may still have legal grounds to prevent the infringement and protect your intangible assets. There is more information later in this guide to help you understand when unregistered assets may still be protected by law.
Trade marks are designed to protect distinctive brand assets. There are a number of elements that may be included in (or wholly constitute) a trade mark, including:
Your brand may be a combination of these elements or be composed of just one. However, you must ensure that the brand itself is distinctive enough and unique to your business, it may be easier to achieve this if you combine elements. For example, general statements like “We go above and beyond!” may not qualify to be registered as trade marks; but in combination with a distinctive shape, or accompanied by a short melody or jingle, they are much more likely to be uniquely identified with your brand and therefore qualify to be trade marked.
The ability to trade mark a brand element will often depend on how strongly the element is associated with your brand. Some companies have trade marked specific shades of certain colours to protect their brand identities, but it is not possible to simply choose a colour and try to register it. Generally, the more unique the brand is, the more easily you’ll be able to register it, but there are many stipulations that make this process more complicated.
You must also decide in which categories you wish to register your trade mark. This will vary depending on the products or services you sell, or those you wish to associate with your brand. It is more cost-effective to be thorough with your application and account for future offerings when registering the trade mark, but this can also result in worthless trade marks in classes that you do not need, so it’s important to plan your application carefully.
There are also criteria that will directly prevent your content from qualifying for a trade mark - for example, if it contains offensive language or describes your product in a way that is misleading, it will be automatically disqualified from registration as a trade mark. If you’re unsure about your intangible assets and which elements of your IP you can (or should) legally protect, speak to an expert solicitor for tailored advice to your specific case.
Once you’ve decided which assets you want to protect, you need to ensure that a trade mark is the best option. There is some degree of flexibility in the definition of a trade mark and what can be registered, but there may be other options to consider depending on the nature of your assets.
Longer written pieces - for example, a company mission statement - cannot usually be protected by a trade mark, but will be protected by copyright. Other legal mechanisms may also apply in such cases.
Before you have registered your trade mark - for example, if you’re debuting a new product and you’ve applied for a trade mark that has not yet been approved - you can use the ™ symbol to indicate that you consider a brand to be a trade mark. This can also be used to earn extra distinctiveness over time for brands that are initially considered too general to be registered as trade marks. For example, a common phrase may be ineligible to be trade marked, but you may be able to reinforce its association with your brand over time and ultimately obtain a trade mark.
However, the ™ symbol does not confer any legal trade mark status onto a brand or provide any legal protection and can be used by anyone. For this reason, you cannot rely on the use of this symbol to indicate that an asset is protected.
For registered trade marks, the ® symbol can be used to indicate that an asset is protected. However, use of the symbol does not automatically register a brand as a trade mark, so you will not gain any legal protection from the use of this symbol unless your assets have been formally registered.
Copyright protection, meanwhile, is conferred automatically upon the creation of a written work. Use of the © is not necessary to register copyright on works you have created in the UK, but may be necessary to protect your work in other jurisdictions. It’s often advisable to add the symbol to any written content you have created to ensure you benefit from the protections afforded by copyright.
Before you begin the process of registering your trade mark, another consideration to make is whether any identical or similar brands have already been registered.
You should search the government’s trade mark database and the EU’s trade marks register to ensure that there are no existing trade marks or pending applications for similar or identical assets. If there are, you may still be able to register but you’ll need to contact the owner of the earlier trade mark.
This process can be complicated and it’s important to be thorough, so it’s best to instruct a solicitor with expertise in trade marks, intellectual property and media law to assist you. Mistakes in this area can result in a failure to properly register your trade mark and leave your assets unprotected.
You can apply to register your trade mark online or in writing. Applications cost £170 for one class and an additional £50 for each additional class. This is non-refundable and applications cannot be adjusted or altered once they have been submitted, so it’s important to plan your application carefully.
Having an expert trade mark solicitor consult with you on the application can give you the best chance of success and ensure that everything is in order before you make your submission.
It is possible for other trade mark owners to object to your application and the Intellectual Property Office may decide to inform trade mark owners if they believe that your application is similar to (or overlaps with) someone else’s trade mark, and these owners may decide to challenge your application. In response, you can either withdraw your application, negotiate with the existing trade mark owner or take legal action to defend your application.
You should speak to an expert solicitor before deciding which option to take, as it may be possible to pursue alternative dispute resolution options that are far more cost-effective than court proceedings.
It’s always best to register a trade mark at the earliest possible opportunity, but if you have failed to do so, you may still be able to take legal action against a competitor or other entity using a similar trade mark to yours. This is known as “passing off”.
To prove passing off requires a strong standard of evidence. Without the legal protection of a registered trade mark, you must demonstrate that a mark belongs to your business or is strongly associated with it by your customers. The longevity of your relationship with the brand in question will be taken into consideration. If you have used a ™ symbol to indicate your intention to register the trade mark, this may also help, but it’s best to seek legal advice to discuss the types of evidence you may need to collect and present in your specific case.
To pursue legal action, you must also demonstrate that the use of the trade mark by another party is causing harm to your business or reputation. For example, if a competitor begins using a similar trade mark to yours to try to mislead your customers or imitate your products. However, if a competitor releases a product with a descriptive name that is similar to one of your products, it is less likely that you will be able to pursue legal action.
Failing to protect intangible assets can cause serious financial losses for a business and allow competitors to imitate your products or poach your customers. Your recognisable brand elements may be protected, but by the time they have been infringed it may already be too late, and a proactive approach is vital.
To speak to a solicitor about your business’ intangible assets, registering a trade mark or protecting your intellectual property, call us today on 0345 872 6666, or fill in our online enquiry form to request a call back.