Trademarks & Tips to Protect Your Brand After Registration
Trademarks & Tips to Protect Your Brand After Registration
You’ve spent hours creating, tweaking and perfecting your brand name or logo and have put it out for the world to see. You’ve applied and got it as an official trademark registration. Now what?
A trademark is an extremely valuable asset to any business, with many accumulating a portfolio of registrations as the business grows. Trademarks can be registered for names, logos, slogans/strap lines as well as sounds and shapes. They can be licenced or assigned and therefore can strengthen a business’ value if ever sold.
A trademark registration with the UK Intellectual Property Office gives the owner the exclusive right to the use of that trademark. If someone else or a third party uses a registered trademark or uses something similar, then this may be a trademark infringement. Trademark infringement can have serious consequences to a brand, not only if the third party is providing inferior goods or services, but also could significantly impact revenue if it is being diverted into the pockets of the third party infringer.
Unfortunately, registration of your new brand name or logo as a trademark is not the end of the story. So, what can you do to keep your brand protected after registration?
We would highly recommend that brands consider a Trademark Watch Service. This will constantly carry out searches of trademark registers both in the UK and abroad (depending on the scope of the Watch Service) and will provide notifications if another business applies for a mark that is the same or similar to your mark. One of the benefits of such is that it notifies the business at an early stage giving the business the opportunity to raise an opposition before the application proceeds to registration.
Monitor third party’s activities both online and offline. This includes conducting regular searches on Google and other search engines for your brand. If any infringing websites appear it may be possible to raise a complaint to the Internet Domain hosting the infringing website based on your trademark rights and seek a transfer of the domain into your control.
It is also worth conducting Google searches to monitor adverts placed through Google Ads. Search engines such as Google allow advertisers to place adverts that will appear on relevant search results and also on their partner websites. Trademark owners can prevent third parties from using their trademark as a keyword in relation to the goods/services with those for which the trademark is registered, provided that the advertisement that is displayed fails to make it clear that the goods/services come from someone other than them.
As social media pages can be set up in a matter of minutes, business should also actively consider monitoring a range of social media platforms where third parties may be using your brand, trademark or operating under a similar name. Some of these platforms, including Meta, have dedicated teams to deal with IP and trademark infringement and pages can be taken down in a matter of hours.
It is also a good idea to monitor competitors and third parties offline at places such as trade shows and exhibitions, and even in print media such as magazines and newspapers.
Further, one of the most valuable assets is to utilise your franchise network. Ask your franchisees, network, managers and employees to keep an ‘ear to the ground’ to monitor infringements or any potential issues.
It is essential to collect evidence on any potential trademark infringement. This may include capturing screenshots if digitally (including a time stamp) of the website or infringing content, copying and pasting URLS and website links, taking photographs, and retaining any evidence of customer confusion either in writing, recorded phone calls (if consent is given) or by making attendance notes of calls.
Once evidence of any potential infringement is obtained, it is essential to pass that onto us for us to consider. If appropriate we can contact the third party and request that they cease use of your trademark before any serious damage to your brand is done. If ignored then further action can be taken which can include contacting social media platforms such as Meta, Internet Domain hosts or even starting court proceedings to obtain an injunction against them.
By way of an example, one of our clients, a well-established domestic services brand, utilises their network of franchisees by capturing photographs of infringers whilst out and about operating in their territories. These types of industries often rely on word of mouth and operate without any digital presence. Obtaining these photographs means that brands can quickly act on such infringements and get them taken down before any reputational damage is done.
We are frequently instructed by clients especially those in the pet services sector to deal with competitors operating under similar names on social media platforms such as Facebook and Instagram. These infringements are frequently dealt with by way of an initial cease and desist letter requesting that the page be taken down or the name changed to something different. This option is inexpensive and often gets the result needed quickly. If ignored, then a direct report to Meta or Facebook could be the next step which is also inexpensive and avoids the need to for any court involvement.
A recent brand protection matter we dealt with involved acting for well-known franchisor against a competing brand expanding into the UK market using a similar logo. Our client was unhappy with the similarity of the competitors branding including the details on the logo and colours used. Our client also had received evidence customer confusion reported to them by franchisees seeing vehicles operating in the territory and marketing leaflets. Our client took action against the competitor and commenced IPO Registry to cancel the competitor’s trademark on the basis of the similarity of the marks and our client’s previous use in the marketplace. The IPO Registry agreed and cancelled the mark and made a costs award.
Even if you don’t have any current concerns with infringement, it is also worth highlighting some practical matters which may assist for any future issues. It is a good idea to continually keep records of the use of your trademark (against the goods and/or services it protects). This may include showing use of the mark by way of invoices, advertising, brochures, flyers, newspapers and press articles. Having such evidence to hand will not only assist from an administrative point of view if witness statements are needed but will ensure that evidence can be shown against any allegation of non-use of the trademark.