Registered trade mark equals insurance

Picture: Emma Mitchell
Picture: Emma Mitchell
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Brand protection is essential, says Katrina Lumsdaine

Once upon a time, businesses measured their assets in bricks and mortar and money in the bank. Businesses could protect their assets simply by taking out building insurance.

However, times have changed. Bricks and mortar are no longer the safe bet that they once were. Ask anyone suffering from negative equity. Further, increasingly businesses no longer own their premises; they lease premises, or maybe even have employees working from home, meeting up from time to time in a coffee shop with laptops. For many modern businesses, their real value lies in their brand.

So what should a new business do to protect its brand?

The first thing is to choose a great name for the brand. The internet is global, so any brand must be global too. Take time to make sure that your brand name isn’t something awful in another language. I wonder how the brand manager for the Mitsubishi Pajero felt on learning that “pajero” is a Spanish word that can most politely be translated as “jerk”. (Mitsubish Pajeros are now marketed as Mitsubishi Monteros in Spain).

Also make sure your brand name works as a domain name. The internet demands that domain names are squeezed together to form one long word. It is then for the reader to separate them out again into individual words. Customers may not always return the space where you had intended: you will be relieved to learn that is not a statement about the language used in our playgrounds; and is not a command to harass hard-working teachers, but rather an online forum for their benefit. You see the issue.

Once you have found your name; are satisfied that it works globally; that it stands up to domain name squeezing and is not going to cause offence in your target market, the next important step is to register it.

This is important. There is probably little point in launching a brand if you cannot secure and register the obvious domain name for it.

Also, register the trade mark. If someone sets up in competition to you, particularly if they register a confusingly similar domain name, it is relatively straightforward to put a stop to the confusion if you have a registered trade mark. By contrast, without the benefit of a registered trade mark, preventing confusion can be altogether more tricky. Think of registering your trade mark to protect your brand as the equivalent to taking out buildings insurance to protect your premises

So what can you register as a trade mark? Of course, you can register the name of your business, provided that it is not simply descriptive of the goods or services which you sell. However, you can also register in colour, register a logo, even sounds.

Colours can be very powerful in brand recognition. If you see yellow and think of a vehicle breakdown service, one brand immediately springs to mind. Similarly if you think of milk chocolate and the colour purple, that’s enough to create brand recognition. So think about your brand colours and remember, trade marks don’t need to just be in black and white.

Logos too can be registered. For example, the Nike “swoosh”, with no words at all, is highly recognisable and worth significantly more than the $35 for which it was purchased.

The very first trade mark registered in the UK, back in 1876, was a logo, which is still going strong today – the distinctive red triangle of Bass & Co Pale Ale.

Once your trade mark is registered, you are entitled to put the little symbol (R in a circle) next to it. The use of the R alone can go a long way to intimidating would-be counterfeiters by showing that you mean business and are willing to protect your intellectual property rights.

However, a word of warning: to use the R against a mark which is not a registered trade mark can be a criminal offence.

With your excellent choice of name, your registered domain name and your registered trade mark, a multi-billion pound businesses can be born, and all without the need for bricks and mortar – whatever mortar is.

• Katrina Lumsdaine is a partner in Anderson Strathern’s commercial litigation team who specialises in intellectual property disputes


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