Is Your Brand Worth Protecting?

Have you considered the added value that your brand brings to your business? Whether it’s a name, sign, logo or design that you have created to uniquely distinguish your business from competitors, it can have a quantifiable balance sheet value and is definitely worthy of protection.

In 2019, Amazon’s brand surpassed both Apple and Google to be the world’s most valuable brand, worth more than $315 billion![1]You would be familiar with almost all of the top 100 global brands including Facebook ($158.9 bn); McDonald’s ($130bn); Coca Cola ($80bn); Disney ($53bn) through to luxury brands such as Louis Vuitton ($47bn) and Chanel ($37bn). Three UK companies make it onto the list: Vodafone ($26.4bn), HSBC ($23bn) and Shell (£20.6bn).

Now whilst these kind of brand values can only be in the wildest dreams for most companies, it does show that your brand could have significant value and be worth protecting via a trademark. And of course, these household names were all “start-ups” once!

What is a trademark?

Trademarks are “badges of origin. They distinguish the goods or services of one trader from another”[2]. They can be used by all organisations to protect their brand, to help distinguish it from competitors, to provide assurance to customers and to help customers find their products or services.

It is a commonly held belief that only words, names or logos can be trademarked but it actually extends to[3]:

  • Shape
  • Position
  • Pattern
  • Colour (single)
  • Colour (combination)
  • Sound
  • Motion
  • Multimedia
  • Hologram

Some well-known trademarks for non-words and logos include Burberry’s checked pattern; Toblerone’s triangular shape; Coca-Cola’s contoured bottle; and even Pringle’s distinctive elliptical crisps![4]

Can anything be trademarked?

No. According to CITMA “A trade mark must be unique, so it cannot be confused for an already registered trade mark. It also cannot be descriptive – so you cannot call your new trainer brand ‘sports shoes’. Likewise you could not call it Pluma – because it could easily be confused for Puma.”

Nestle tried for 10 years to register a trademark for the shape of its Kit-Kat, but the UK’s Court of Appeal ruled that the rectangular bars with breaking grooves was not distinctive enough, with the European Court of Justice agreeing. [5]

Shapes and colours can be particularly difficult to trademark with other high-profile failures to register trademarks including Lindt’s attempt to trademark its gold wrapped bunny and Rubik’s attempt to trademark the famous cube puzzle.[6]

Is it necessary to register a trademark?

It is not a legal requirement to register a trademark, but another common misconception is that by registering the name of you company with Companies House you are given some rights over its use –this is not the case. Having a registered company or a domain name does not provide trademark protections and does not prevent others from using your name or logo. If you don’t seek trademark protection you will also not know if someone else has already trademarked the mark (or a similar mark), which could lead to you receiving legal notices to stop using it. This could be damaging if you have already started to build up your reputation and brand value.

Once a trademark has been registered, it has to be renewed every ten years, but in theory it can last indefinitely. The oldest UK registered trademark is the logo for Bass & Co’s pale ale which has been registered since the first Intellectual Property Office was opened on 1 January 1876.

How to apply for a trademark

Depending on where you register your trademark, depends on where you want your brand to be protected. If your business is mainly working in the UK, then you would need to make an application to the Intellectual Property Office (IPO) for protection of your brand in the UK.

The European Union has a member-state wide system meaning that you can get protection across the EU with one application. However, as with all areas of law, the regime will change after Brexit. The Government has produced a guidance note on the changes to trademark law in the event of a no-deal Brexit.[7]

Once you have a base application or registration in the UK, there is also an international registration system which allows you to make one application for multiple countries. However, each individual country would still need to review and approve the application, and so applicants should be prepared for a lengthy process.[8]

Applications can be straightforward or complex depending on the nature of the brand-mark to be protected. As mentioned above, marks that are not words or logos, can be complex and it can be difficult to prove distinctiveness.  Words and logos can also be difficult if they are similar to other registered trademarks or are too descriptive. It can therefore be worthwhile seeking specialist advice.

The process for filing a trademark in the UK takes the following steps[9]:

  1. Checking you can register your trademark
  2. Searching the trademark register
  3. Classifying the goods and services of your trademark (you will be asked to register your trademark in relation to specific goods or services. This is what allows the word “Polo” to be registered by different companies i.e. by Ralph Lauren in clothing; Volkswagen in car manufacturing; and Nestle in confectionary.[10])
  4. Application
  5. Examination report issued by IPO
  6. Publication (this is the lengthy part of the process whilst the application is published to invite third party observations for a period of 2-3 months. This could lead to objections, which you can attempt to dispute)
  7. Registration confirmed
  8. Certificate issued
  9. Renewal after 10 years

Having your trademark registered allows you to legally challenge those that try to use it for their own financial gain, which is much harder to do if your trademark is unregistered.

Hopefully, your application will be accepted and you will have taken the important step of protecting your brand value. You can also choose to allow others to use your trademarks under licence, or sell it.

Help where you need it

Bridgehouse Company Secretaries can help your organisation with its brand protection by making the application on your behalf to the IPO and dealing with subsequent correspondence; helping to pre-assess your application to reduce the risk of failed registration; and renewing your trademarks. For really complex applications we can also engage with trademark attorneys on your behalf.

For more information and to get in touch click here.

[1] https://www.ft.com/content/3a3419f4-78b1-11e9-be7d-6d846537acab

[2] https://www.bl.uk/business-and-ip-centre/articles/what-is-a-trade-mark

[3] https://www.citma.org.uk/trade-marks-ip/what-is-a-trade-mark.html

[4] https://www.bbc.co.uk/news/newsbeat-44953460

[5] https://www.bbc.co.uk/news/world-europe-44939819

[6] https://www.ft.com/content/16351d98-46d9-11e7-8d27-59b4dd6296b8

[7] https://www.gov.uk/government/publications/changes-to-trade-mark-law-if-the-uk-leaves-the-eu-without-a-deal

[8] https://www.gov.uk/government/publications/protecting-your-uk-intellectual-property-abroad/protecting-your-trade-mark-abroad

[9] https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/826521/TrademarkTimeline.pdf

[10] https://www.ft.com/content/16351d98-46d9-11e7-8d27-59b4dd6296b8

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