BRAND PROTECTION: COMMON MISTAKES

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When building a brand, securing a trade mark by registering it at the official registry/ies is a crucial step towards protecting your intellectual property and establishing a unique identity.

Some overlook this crucial step. Don’t think that securing company names, URLs, etc., does the job, because it doesn’t.

The next most common mistake is failing to do proper research before choosing your brand name and applying for a trade mark. In this blog, Savva Kerdemelidis, our trade mark expert, explores why this can have significant implications.

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THE IMPORTANCE OF RESEARCH

Imagine pouring time, effort, and resources into developing a brand identity, only to find out that another company already owns the trade mark you’re using. This is not only disheartening but can also lead to a legal dispute and a forced rebrand, with associated financial consequences and management time.

Conducting thorough research beforehand is essential to avoid this. So before settling on a brand and applying for the trade mark, conduct thorough searches to ensure it’s not already in use or registered. Use online databases, professional trade mark search services, and legal counsel to identify potential conflicts.

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CHECKING AVAILABILITY

You need to check that neither your brand name nor anything similar is already being used and/or registered as a trade mark for the same or similar products/services as yours.

If you don’t, it can result in several potential issues:

• Rejection of a trade mark application: If your trade mark conflicts with an existing one, your application will likely be refused by the trade mark office.
• Legal disputes: Using a trade mark that infringes on someone else’s can lead to legal action, and you’ll likely receive a cease-and-desist letter.
• Forced rebrand: If you infringe on someone else’s trade mark rights, you may be forced to rebrand.

These outcomes will delay your branding efforts and likely require you to go back to the drawing board. In the worst case, they can disrupt business operations, harm your reputation, and drain financial resources due to costly legal advice, work, and management time.

It’s not only time-consuming and expensive but can also erode the brand equity you’ve worked so hard to build.

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THE SUBJECTIVE NATURE OF TRADE MARK INFRINGEMENT

While conducting a trade mark search can help identify potential conflicts, it’s essential to recognise that the test for infringement is based on confusing similarity, which is subjective.

Some third parties might be more protective of their mark than others, leading to potential challenges even if a trade mark search yields no direct conflicts.

At LegalEdge, our trade mark search and guidance can help minimise this risk by providing comprehensive insights and recommendations. See how here.

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HOW ELSE TO AVOID BRANDING PROBLEMS

• Choose a distinctive mark
  Select a name/trade mark that is distinctive and unique to you. Avoid descriptive or generic terms that are difficult to protect and enforce. A strong trade mark will help you stand out in the market and enjoy better legal protection.

• Provide complete and accurate information
  When filing your trade mark application, ensure that you provide all necessary information accurately and completely. Any errors or omissions can result in delays or rejection by the trade mark office.

  • For example, filing in the incorrect classes of goods/services or filing a logo instead of a broader word mark are common errors that can leave your mark open to attack and require re-filing.

• Consider international protection
  If you want to grow internationally, make sure you apply for trade marks beyond just your home country. Conduct international trade mark searches and file applications in key markets to safeguard your brand.

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CONCLUSION

It’s easy to overlook important details in the rush to bring your brand vision to life. However, when it comes to trade marks, thorough research and careful planning are essential to protect your brand and avoid costly mistakes.

Don’t forget to invest in clearing your trade mark before filing.

LegalEdge provides a fixed-fee trade mark service. Check out our Quick Fees Calculator to see how much it will cost to file your trade mark – our fees and the official filing fees.