Trade Marks: what is all the fuss about? 

This article serves as an introduction to trade marks and unpacks their importance when it comes to brand growth and protection.

What is a trade mark? 
A trade mark is a sign that distinguishes the goods and services of one business from those of another. Typically a trade mark can be words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of the goods or their packaging or any combination of these.

What is the value of a trade mark?
Trade marks help to protect brand identity and reputation and function as a deterrent to would-be infringers. Without trade marks, a business risks losing its unique identity (and potentially revenue) to competitors and copycats. It also risks being blocked from certain markets or being sued for trade mark infringement because of existing third-party trade marks.

Online market places and social media platforms also have processes in place for brand owners to report infringing products, posts and/or profiles but they require proof of trademark ownership. In most cases, a trade mark registration is the only acceptable form of proof.

Those looking to invest in and/or purchase a business will also expect to see a robust trade mark portfolio – trade marks help to boost confidence in the viability and longevity of a brand and the security of any investment.

Ultimately, trade mark registration is the only route which will guarantee brand protection and provide cost certainty.

When do I need to think about trade marks?
Whenever possible, file for trade mark registration before brand launch in those markets where you intend to have a presence in the next 5 years.

Are trade mark applications expensive? 
They don’t have to be – the official filing costs for national trade mark applications are usually around 200-300 USD and there are cost effective options if you’re considering international protection. It’s all about getting your strategy right given your company’s budget, activity, plans for growth and undertaking the necessary due diligence.
International and EU trade marks are much more expensive, but they represent a much more cost-effective option if you are looking for protection in several countries/jurisdictions.

Are trade mark applications easy? 
National trade mark applications are straightforward but, more often than not, it’s better to seek the help of an IP professional rather than do them yourself. Getting trade mark applications right involves the following (which isn’t always straightforward):

• Ensuring your trade mark is capable of registration – some phrases, words and images are a non-starter (i.e. descriptive or laudatory marks or marks which contain national flags or emblems).
• Searching for existing third-party trade marks so that you are fully aware of potential problems and/or limitations with your trade mark and able to make any required changes before fully committing.
• Identifying which of the 45 classes of goods and services are relevant to your application – getting this wrong may compromise your level of protection or leave you exposed to a non-use claim. As a word of warning, a number of classes have overlapping goods and services which can be confusing – for instance, both class 09 and 42 cover software, and both class 25 and 14 cover scarves, albeit very different types!
• Deciding on how your trade mark is to be represented (i.e. black & white or colour).
• Ensuring that your filing strategy is both cost effective and compatible with your company’s growth strategy, and that you understand any regional nuances.

It should be noted that applications for International (Madrid) and EU trade marks are much more complicated than their national counterparts!

Why are trade mark searches important?
Undertaking trade mark searches to establish whether there are identical or “confusingly similar” brands already in existence, is strongly advisable. They can help you to identify problematic trade marks in markets of interest and alter your approach to increase your chances of a successful registration (i.e. adding graphics to a word mark to make it more distinctive). Ultimately, the earlier you identify problematic trade marks, the more control you’ll have over branding and legal costs/exposure.

Make sure that you allow enough time for trade mark searches to be undertaken – international searches can take several weeks, even months, depending on the scope.

What does a trade mark search entail?
Google isn’t a bad place to start but it will not provide an accurate representation of active trade mark registrations. Proper due diligence involves searching trade mark registers in your key and current markets. Accessing these registers is straightforward but, in order to get the right results, you must input the correct search criteria.  For instance, if you’re searching for a logo, you will need to search for the word elements as well as the figurative elements in accordance with the Vienna classification which is far from straightforward.

Once you have your search results, you will also need to assess whether any existing trade marks are “confusingly similar” to your own, given the visual/phonetic similarities as well as the goods/services that they are being applied to.  The question as to whether something is “confusingly similar” is a matter of law and is a hard question to answer without an in-depth understanding of the relevant legislation.

What’s the value of an IP professional when it comes to trade marks?
IP specialists aren’t cheap, but getting brand protection right is priceless. Ultimately, getting the right support from the outset can save money in the long run by helping you to avoid costs associated with rebranding and trade mark infringement (which can cost hundreds of thousands of dollars). IP specialists will also help you to file applications correctly (avoiding costly refusals) and in the most cost-efficient way. For instance, Hong Kong is one of the only territories in the world where you can file a series of trade marks (up to 4 in total), paying roughly the same price as you would for a single trade mark application. That said, series marks have the highest failure rate as applicants generally fail to understand the relevant filing requirements.

What should I do if someone infringes my trade mark?
First, take a step back and do your homework. Infringement isn’t always clear cut and, before you take any action, you need to be sure that: (i) the legal requirements for a trade mark infringement claim have been met: (ii) your trade mark rights are enforceable; and (iii) the other party doesn’t have any rights which may trump yours. You should also undertake some research on your opponent to make sure that you want to take them on – a wealthy business may fight your infringement claim and fights cost money.

All being well, trade mark infringement claims generally start with a “cease and desist” letter, asking the other side to cease all infringing activity. This generally results in one of the following: the other side ceasing all such activity; a legal dispute (involving threats of legal action and court claims); or some sort of settlement.

If you want to take action for trade mark infringement, always seek the help of an IP professional as the stakes will be high.

Re-think Legal is a boutique legal consultancy, Founded by Ellie Patel in January 2023. Ellie’s mission is to help start-ups and small-medium sized companies identify, protect and grow their brands and commercialize their intellectual property.

© Ellie Patel 2024