Protecting Your Brand
Trademark and Design Rights | Intellectual Property Law
Here is the world’s first ever website:
It went online in 1991 and looks ancient compared to some of the sites you see today.
Back then no one envisaged the world wide web in its current form; the ”net” is now so imbedded and intertwined into our daily lives, we use it for work, shopping, socialising, research and even to find love.
Most of us would struggle to function or imagine life without it! It is the new Wild West but its evolution has resulted in wider issues including the need for website owners and designers to better protect their work.
Mahatma Gandhi once said imitation is the sincerest form of flattery, but that will give little comfort if your website or design has been copied without you knowing, especially if others have profited from it.
Our intellectual property lawyers have seen a steady increase over the years in the number of intellectual property disputes involving trademark abuse and unauthorised copying of website designs. If you have any on-line business presence then it is vital for you to protect your brand, your logo, your website and indeed your profits by following our guide to intellectual property rights.
A trademark is a sign, a mark, or even a sound which distinguishes the goods and services of a particular business from those of another. Think McDonald’s golden arches, Google’s colourful logo or Intel’s distinctive sound bite . These are all forms of trademark.
A successful trademark is one which is instantly recognisable and invokes thoughts of quality and durability. Clever marketing and costly promotions usually make these trademarks become memorable. Before your brand even gets to this point it is essential to take professional advice from intellectual property lawyers to seek protection from potential imitators.
How to make an application?
Start by conducting research to ensure no one else out there has a trademark similar to yours. This can take time and would involve on-line as well as off-line research but if done properly, it will ensure the success of the application and any interim budget spent on promotion is not wasted should a similar trademark be discovered.
Then move on to making the application itself which is best done by an experienced intellectual property lawyer who will make a thorough and complete application. The application is sent off to the Trademark Registry who will check that the trademark is:
- distinctive and non-descriptive
- capable of being represented in some form
- not objectionable or offensive
- not identical or similar to any other trademark
The need for your trademark to be original means that no one else can use or register a similar mark.
The Trademark Registry will require details as to which goods / services the trademark represents, with a classification system featuring 45 differing classes which represent the appropriate industry in which the trademark will subsist.
When registered, protection is afforded for ten years from the date of application. This can be renewed indefinitely for further ten year periods on payment of a renewal fee.
Of course there is no legal obligation to register, however the benefits of doing so ensure that the owner has a definitive legal right, enforceable in the event of infringement at Court. However, on-line giants also offer a form of justice.
Take for example a logo featured on a website. If you discover the abuse (i.e. the logo having been copied on another site, without consent) you may raise a complaint with Google and demand that they take action. Their user policy ensures that offending sites are penalised and possibly removed from the search listings. Google does not like websites promoting duplicate or indeed unauthorised content. Social media platforms like Facebook have similar user policies to Google with a trademark infringement complaint resulting in the Facebook administrators delisting the offending page. Proof of registration of your trademark will therefore protect you at the very least in the jurisdiction in which it is registered.
The owner of a registered trademark may use the ® symbol, to signify successful registration deterring potential infringers. Often this is confused with the ™ symbol.
The ™ symbol may be used by anyone and signifies an unregistered trademark. Being unregistered only offers limited protection and having gone to the trouble of creating and developing a brand, spending money on promo material, web site development, etc, is expensive and time consuming. The key message is this: there is no point in doing all of this if you do not also seek to properly protect your brand no matter the size of your business.
In the UK, unregistered trademarks can rely on the law of ‘passing off’ for some degree of protection but the problem with this is the high level of evidence required to bring a successful claim at Court and the legal costs that could result.
To successfully make a claim for passing off you would have to prove:
- The business complaining of the passing off holds existing goodwill or a business reputation in its customers’/prospective customers’ eyes; and
- There has been a misrepresentation or the passing off is likely to deceive or confuse customers; and
- The owner of the unregistered trademark has suffered damage as a result of the passing off (i.e. a loss of profits and a loss of reputation).Ultimately where there is an issue of passing off, there must be evidence demonstrating (real) confusion with the public between one product or service and another.
If you are seeking to internationally expand your business, you should think about obtaining international protection for your brand early on. Consider the following options:
- Registering a trademark with the national registry in each country in which protection is sought;
- Applying for a “community Trade Mark” – this is a single trademark which affords protection in all EU member states
- Applying for a trademark at the World Intellectual Property Organisation (WIPO).
Our intellectual property lawyers can assist you to determine which of the three options is suitable for your business.
It is possible to register a design / appearance of the whole or part of a product, which could consist of the lines, colours, shape, texture or materials of the product.
For a design to be validly registered, it must be original and have individual character i.e. must be distinguishable from all the other goods of that type in the market place. A design application can be opposed by anyone if it does not satisfy these criteria.
If successful, the design will be protected for an initial period of five years from the date of application. It is extendable in five-yearly intervals upon payment of a renewal fee, up to a maximum term of 25 years.
Like trademarks, design right scan be registered and unregistered. Unregistered design rights automatically arise if a design is:
- a qualifying design
- recorded in a design document or an article.
Consequently, certain inherent rights are afforded to the design owner with automatic protection for fifteen years from the end of the calendar year in which the design was first created, or ten years from being made available for sale or hire. But the best advice (and practice) is to officially register the design right to reduce the risk and impact of the design being challenged.
Owners of unregistered designs can bring proceedings for differing levels of infringement. Our team of intellectual property lawyers can provide you with specific advice. However, as a basic overview in the UK there are primary infringements, where a design is copied and reproduced without the consent of the owner, and secondary infringements, which involve commercially importing infringing articles.
On occasion there are differing types of rights existing over the same design. For example copyright
may also subsist in a design that enjoys an unregistered design right. If infringed, you would need expert knowledge on which right to claim for. There are differing rights, potential applications and claims you could make. You could do it yourself or spend your money wisely and hire intellectual property lawyers to do it for you.
For others, especially start ups and fledgling businesses, the budget may be tight but there are various websites that offer tips and advice and a fixed fee consultation with one of our intellectual property lawyers may give you all the answers you need.
As a parting thought, ponder the words of Herman Melville, an American Novelist best known for his novel Moby-Dick:
“It is better to fail in originality than to succeed in imitation”