Brand aid

Terry McDermott, dispute resolution solicitor at Mogers Drewett, explains the role of trademarks and how they help protect a brand.

Building a brand takes blood, sweat and tears and the last thing any business owner wants to see is someone else trading off their hard work and hard-earned reputation. Protecting your product or service is therefore crucial, and a key way of doing that is to trademark it.

A trademark is a ‘sign’ that distinguishes your brand from others. Once registered, it becomes a valuable asset to your business as it gives you the right to its exclusive use, you can use the ® symbol next to it showing that it belongs to you, and you can sell and license your brand. Coming under the heading of intellectual property, a trademark is one of four types of protection for a piece of work, products or services. They are all aimed at preventing others benefiting from them financially, claiming credit for them or taking unfair advantage of their reputation. Broadly speaking, the other three types are: copyright, which protects an author’s work; patent, which protects a new invention; and registered designs, which protect the look of a product. For some brands, having one or more of these in addition to a trademark might be prudent.

Even a smell

A trademark can take any form, from words, letters, slogans and sounds to colours, shapes and even smells, as long as it’s distinctive enough to identify the goods or services and distinguish them from their competitors.

There are grounds, however, for a trademark to be refused. The ‘distinctive’ requirement is key. A high-profile case in point is confectionery giant Nestlé’s recent failed attempt to convince the European Court of Justice to let it trademark the shape of its four-finger version of a KitKat in the UK. The company argued that even without the red and white packaging and the brand name embossed on the chocolate coating, the actual shape of the bar is unmistakably KitKat and therefore worthy of a trademark. The court  disagreed and refused the application on the basis that the shape is in fact not distinctive enough for people to associate it with the product.

Rights in action

Having a registered trademark enables you to take legal action against anyone who is financially benefiting or gaining recognition from your company’s work without your permission. As your trademark forms part of your reputation and the value of your business, its use by someone else could also cause harm to your company by association.

If you own a UK registered trademark, you have exclusive rights and protection against infringement or use of it without your consent. You have the right to sue anyone who uses an identical or similar mark in connection with identical or similar goods. If the mark is well known, you can prevent the same or a similar one being used even if the other person’s goods and services are not similar to yours. For instance where unfair advantage is being taken of your trademark and use of it is detrimental to its distinctive character or reputation.

If you haven’t registered a trademark and you believe your brand is being used without your permission, you can still take action but it’s a complex and lengthy process so having one makes sound business sense.

Staying on top of trademarks 

How Mogers Drewett can help

Protection: We assess whether a mark or brand meets the criteria for a trademark, if other areas of protection might be worthwhile, such as design rights, and whether you would benefit from registration in countries other than the UK.

Action: If you suspect a trademark infringement, we act quickly to limit the damage. In many cases, companies are not aware they are infringing and a letter from us may be sufficient to close the matter. If matters escalate, we can advise accordingly on your options including whether or not to issue court proceedings to protect your mark.

Advice: We can advise if you get an infringement letter. It may be that you haven’t infringed and you might even have a greater right to a name.

Permanence: Trademarks can last forever as long as they continue to be used in business and are renewed every 10 years. A trademark attorney is often hired to deal with applications and renewals.

Monitoring: We do not offer an ongoing monitoring service but we can advise on effective monitoring techniques that companies can incorporate in to their business.

Mogers Drewett

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