The protection of trade marks – names, logos, brands and other similar elements that are used to identify an organisation or its products – has never been so important.
Courts in the UK and further afield are increasingly ready to recognise the financial value of a trade mark which, when the brand is well-known, can be immense. In this climate, taking the necessary steps to protect your trade marks is essential for any business keen to keep ahead of the competition.
Also, for those who are members of trade associations (or indeed, for the trade associations themselves), there are two special types of trade mark registration which may be important. These are certification trade marks (sometimes incorrectly referred to as ‘kitemarks’) which are used to denote goods or services have met certain stringently-controlled quality standards; and collective trade marks, which indicate that the user is the member of a group or association, such as a trade association.
When looking to launch a new name or logo, we recommend conducting a two-stage process:
Trade Mark Clearance
Before committing to any new branding, you should conduct clearance searching to establish whether the proposed brand is free not only to register as a trade mark, but to use. Checking that adoption of your proposed name or brand will not infringe the rights of others could be as important as protecting your own use of it.
Clearance searching would involve looking at registered trade marks and pending applications to register trade marks, with a view to identifying marks which are the same as, or similar to, yours, in the same or similar areas. It should also involve some searching of names, logos and the like that are already used in the relevant marketplace. This is because trade mark owners can acquire rights in such elements through use, without seeking registered trade mark protection.
These comments apply equally if you are looking to launch a ‘normal’ brand (e.g. the name of a product or service); or whether your proposed activities are more tuned to ultimately obtaining a collective or certification trade mark (about which I say more below).
Trade Mark Registration
The second stage, assuming the clearance searching does not locate problems, is to apply to register the name or brand as a trade mark. A registered trade mark is a form of government certification, which, in the UK, is sought by applying to the Intellectual Property Office (the ‘IPO’).
Having a registered trade mark provides the power to stop others using the same or a similar name/logo in your sphere of interest. This leaves you free to build up recognition, reputation and goodwill in the brand, without concerns about third parties unfairly tarnishing these assets by using brands that are too close to yours.
It’s worth bearing in mind that trade marks are territorial in nature – if you have a UK registered trade mark, for example, this will only protect your brand in the UK. If you have overseas interests, you should consider conducting searches and obtaining trade mark registrations in the countries where you are likely to be active.
Is your current protection in good shape?
If you have not yet registered your key brands as trade marks, or have not reviewed your intellectual property for some time, here are some points to consider:
- What are your most important names and logos? Do you have trade marks which are not registered, but should be? This could include initials representing longer names, if those initials are frequently used. Also if you registered your trade mark(s) many years ago, are your registered rights still relevant to what you are doing now? Do they cover the goods and services you are currently interested in, or have your activities changed over time?
- Are you protected in the right territories? Many organisations begin by registering their trade marks in the UK, but neglect to expand protection further afield as the business grows. It’s not unusual for a company to expand into a particular country, and find its activities are stymied because another, possibly local, operator has already registered the same or a similar brand. If you are expanding into new territories, it’s always best to consider the trade marks position sooner rather than later.
- Do you have a watching service? Once your trade marks are registered, you need to police them. A watching service will advise you of anyone else trying to register trade marks that are too close to yours. This gives you the opportunity to object to their registration. Also, someone trying to register a trade mark often gives early warning that they are about to start, or have just started, using it. This provides the opportunity to raise objection to that use as well, before it becomes too big a problem.
Collective Trade Marks
Collective trade marks are defined by the law as a name, logo etc. ‘distinguishing the goods or services of members of the association which is the proprietor of the [collective trade mark] from those of other undertakings’. It is a badge that members of an association can put on their brochures, advertisements, websites and the like to show they are members of that association. This is a little different from the function of a ‘normal’ trade mark, which is simply to distinguish the goods and services of one business from another.
An example of a collective trade mark is ABTA – the Association of British Travel Agents. By using the collective trade mark, the member of the association can benefit from being recognised as a member of the association. Such recognition is particularly useful if there are benefits to the consumer from using the goods and services of the association’s members. To take ABTA as an example, consumers recognise its members as providing some degree of assurance in the event of e.g. an airline going bust, and are perhaps therefore more likely to use a travel agent that is a member of ABTA than one that is not.
In the case of a collective trade mark, the trade association is the legal owner of the rights in the trade mark. The collective mark is registered before the IPO in the same way as a ‘normal’ trade mark, but the owner must also file regulations at the IPO governing how the collective mark ‘operates’ – conditions for membership of the association, how members may use the collective mark, sanctions for misuse etc.
The collective trade mark registration gives the holder, in particular, the right to stop others making unauthorised use of the mark to indicate they are members of the association, when in fact they are not.
Certification Trade Marks
A Certification trade mark has some similarities with a Collective trade mark, but there are also fundamental differences.
Instead of distinguishing the goods and services of one undertaking from others (as is the case with ‘normal’ trade marks), or distinguishing the members of a particular association from those that are not (‘collective’ trade marks), Certification marks are used to denote that certain organisations or their goods and services meet certain objective standards.
By far the best known certification marks are the well-known ‘kitemark’ and its newer, EU-wide cousin, the CE mark.
Anyone can use a certification trade mark, provided their goods and services meet certain standards stipulated by the party which ‘owns’ the certification mark. The ‘owner’ has a very active role in how the certification mark operates – in particular it is expected to test the products/services certified to ensure they meet the criteria it sets (generally in exchange for a fee from the user of the mark). For this reason, the owner of the certification trade mark is generally a trade body or other responsible organisation. The provisions governing the requirements for using the certification mark, how they are tested, and the like, need to be set out in ‘regulations’ that are filed at the IPO.
Trade marks, including the less used – but very useful – collective and certification trade marks, are potentially powerful tools for trade associations and their members. To further explore any of the issues discussed above, please contact Philippa Hart, Solicitor or Mathew Healey, Trade Mark Attorney, at BWB.
Bates Wells & Braithwaite London LLP, 2-6 Cannon Street, London EC4M 6YH
Tel: 020 7551 7777 Fax: 020 7551 7800 www.bwbllp.com
BWB offer TAF members 20 minutes free advice over the telephone and a 10% discount on further work.