With the G7 Summit fast approaching in Cornwall this June, and with the added tourism that this is set to bring, now is a good time to consider trademarks, ensuring that your Intellectual Property (IP) is properly protected and that you are not infringing on other parties’ rights.
Types of trademarks
Having a trustworthy brand that carries the reputation of the organisation, its staff and the quality of its goods/services is an essential for any business, no matter what size. Having a trademark ensures you have a monopoly over your brand in respect of the goods and services that you offer. A trademark ensures that your business is distinguishable from others in the marketplace and adds value to your business.
The following are the most common trademarks that can be registered:
- Words;
- Logos;
- Multimedia (e.g., holograms, short videos, sounds); and
- Shapes (e.g., a bottle).
What requirements must trademarks have?
Your trademark cannot be descriptive of the goods and services that you are offering. For example, if you owned a hand wash, you would not be able to gain a trademark for the word SOAPY, because it describes your goods.
Your trademark must also be distinctive and a consumer must be able to differentiate your goods from another person’s goods. For example, SOAPY would not be distinctive because it does not allow consumers to distinguish it from another brand of soap.
Trademarks come with a “use it or lose it” policy and must be used in the form in which it has been filed, and for the goods and services that it has been filed in. Failure to use your trademark in this way for a period of five years since it has been registered, could lead to it being vulnerable to cancellation by a third party on the grounds of non-use.
It also works both ways in that you shouldn’t use your trademark in relation to goods or services that you have not got protection for.
I am using my logo or name without obtaining a trademark, what should I do?
The sooner you apply to register your trademark, the better. If an objection is successful by a third party, you may be forced to rebrand your business, which can be expensive and lengthy. It is more cost effective to try and gain a trademark first.
It is possible to show that despite not getting a trademark registration, your mark has become so well known in the market place that consumers automatically associate it with you. This is usually through long standing use of the brand. In the first instance, you should try and gain a trademark registration.
Is my brand name available to protect or does my brand infringe on a third parties’ brand?
Trademark protection works on a first to file basis. This means that if another owner has a registered trademark they are able to prevent you from registering your mark, if they believe it to be identical or similar to the one you are intending to file. It is essential to conduct a trademark availability search before filing a trademark application. This will discover whether there are any identical or similar marks owned by a third party which may prevent you from trade mark registrability. If you discover an identical or similar mark then this gives you the opportunity to come up with a new logo or brand name before you have filed the trademark.
Can my product make reference to a person’s name?
Given the increased spotlight on Cornwall, it could be tempting to create a product name which mentions a key member of the G7 Summit, for example Biden’s Buns, the Putin Pasty or a special Boris Cream Tea to increase sales.
There is no absolute right to a person’s name or personality in the UK. Despite this, it could still be risky.
The law of “passing off” could apply if a consumer is likely to be misled that the product is endorsed by that individual, when it is not. For example if you were selling Biden’s Buns and customers mistakenly believe that the President of the United States had endorsed the product, when he has not, this could be an act of passing off. POTUS would need to show damage to his reputation, if people think that he is in some way affiliated with the business or product. As you can see from this basic example, the law of passing off is complicated and nuanced, and claims are expensive, meaning high costs for an unsuccessful defendant.
Summary
Now is good opportunity to think about your IP and whether you should obtain further protection for your brand and products. Whilst it might be tempting to quickly file a trademark, it is necessary to conduct availability searches to see if your proposed mark is available.
It is also worth steering clear of using well-known people for your brand, and you should think twice about whether this would make you liable in the law of “passing off”.
If you would like to find out more about protecting your various IP rights, please get in touch.
Our specialist trademarks team is available at trademarks@stephens-scown.co.uk.