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IP rights provide an invaluable means for protecting the heart and soul of a brand. That's why identifying what trademarks to protect and proactively maintaining those rights is so crucial to the brand development process, says Trademark Attorney Laura Morrish.
We recently discussed the importance of tracking and recording decisions relating to new brand development and why trademark availability and clearance checks are vital for brand protection and enforcement. The next major steps in the brand development process are the creation of an IP filing strategy and a post-registration enforcement strategy that will secure trademarks in your chosen markets.
Designing your filing strategy for the brand development process
Several factors must be taken into account when creating your trademark filing strategy for new branding, such as a brand name and logo, including:
- the nature of the market;
- the product;
- the nature of the trademark and the elements that might be capable of protection;
- the longevity of the mark;
- any plans to license the mark; and
- the brand category.
Registered and unregistered trademark rights
While it is generally advisable to obtain registered protection for a trademark, not every mark justifies the expense of registration. During the brand development process, it is important to conduct a legal and commercial analysis to identify if protection is worthwhile, including how the resulting registration might be used.
In addition to checking that the use of a proposed trademark will not infringe any earlier rights, clearance searches provide a valuable tool to assess whether it is necessary, or even possible, to register a trademark. In some cases, clearance search results may indicate that, while it might be possible to register a trademark, the value of doing so would be so limited that it would not be justifiable from a commercial perspective.
It is also necessary to consider where protection might be required.
You should apply for registrations in all countries where you plan to use your trademark, and applications should cover the appropriate goods and services ('classes'). Depending on your planned activities, this may require applications to be made to several national trademark offices or via a regional system, such as the European trademark (EUTM) system, administered by EUIPO or the International system via WIPO. Depending on your strategy and budget, trademarks can be filed in several countries at the same time, or a staggered approach can be used.
Product and service specifications
When applying to register your marks, you must specify the goods or services for which you are seeking protection. Not only should this list include goods/services upon which your trademark is currently or imminently in use, but also those of future interest. Including prospective goods at an early stage can ensure that, when you are ready to launch, you have a degree of certainty that the market/register is clear for your brand’s entrance.
However, it must be borne in mind that in certain jurisdictions (including the UK), there must be a genuine intention to use the mark for the goods/services applied for. In addition, filing too soon might leave the registration vulnerable to cancellation on the grounds of non-use if the mark is not put into use during the relevant timeframe after registration (generally, three or five years). This would negate any advantage gained by an early filing. (Find out more about Trademark grace periods and proof of use.)
The best strategy to use when considering how to protect your brand will depend on the factors listed above, as well as any other relevant commercial factors.
Post-registration maintenance and protection
Trademark watches identify potentially problematic marks from the perspective of enforcement and potential for future use. Knowing what earlier marks might cause an issue if you plan to extend your brand into other countries/product areas can be useful in the brand development process. It can guide marketing teams to consider whether it might be appropriate to use different marks in different territories or to create sub-brands to differentiate the new brand from existing marks.
In addition to trademark watching, online brand protection tools will notify you of infringing use on the web, including e-commerce marketplaces, social media and apps. Find out more about our trademark watching and online brand protection services.
To maintain your rights, it is important to take prompt and proportionate action if a third party infringes your trademark rights. It is often enough to send a warning (cease and desist) letter or to file a takedown action with the relevant online marketplace, for instance. However, in some cases, stronger action might be required.
Keeping clear water around your rights by being proactive in monitoring and enforcing them at a tribunal level will strengthen them and put you in a better position should you need to rely on your rights in a more serious matter.
Maintaining your brand
How you use your trademark may change over time as you extend into new countries, add new products or services, or even change how you present your brand.
Ensure your activities remain protected as you grow by scheduling regular trademark portfolio audits. These should identify any gaps in protection in terms of geographical markets, new products and new marks. They also provide an opportunity to assess the value of existing registrations, and whether these should be maintained.
This type of audit could help you to highlight vulnerabilities in the portfolio. For example, registered marks that are not in use. This can allow you to assess whether you need to start using a mark to avoid losing your rights.
If you would like to explore which IP rights you can protect when starting the brand development process, please speak to your Novagraaf attorney or contact us.
Laura Morrish is a Chartered Trademark Attorney at Novagraaf in the UK.