Why Brand Protection?
“If this company were to split up, I would give you the property, plant and equipment and I would take the brands and the trademarks and I would fare better than you.”
So said John Stuart, CEO of Quaker Oats for over 30 years illustrating his understanding that the value of a business lies in its trademarks and brand.
If you think of a brand you like, you’ll notice how it’s the brand’s name that identifies it and brings to mind the positive emotions you have about that business’ product or service.
So companies who are working hard to evoke positive associations to their brand must appreciate the importance of their name and do nothing to take it for granted.
The first step is to establish whether the name you’re using is legally available. If it is, the next step is to secure the rights to the name by registering a trademark. However, a trademark isn’t just something to register and forget until it’s time to renew. It’s a critically important asset that requires active management to protect.
Registering a trademark is just the beginning. Without vigilant monitoring and proactive measures, your trademark—and by extension, your brand—faces significant risks, including infringement, loss of exclusivity, and even cancellation.
That’s why we introduced our brand protection service for clients for whom we had registered trademarks. The service is renewed and offered for the first time to newly registered trademark owners at this time of year. So, I thought it worth explaining in this newsletter that a business needs a brand protection service, just as it needs to maintain and protect its physical property and other assets.
A brand protection service is the way to care for trademarks on an ongoing basis to ensure the security of the brand.
The Global Differences in Trademark Systems
The approach to trademark registration differs between jurisdictions, particularly between the USA and the UK and EU. So, the actions you might need to take to protect a brand in the USA differ to those you should take in the UK or EU. For example, it is less critical to monitor the registers for similar applications in the USA because the USPTO will itself prevent similar applications getting onto the registers. So, you’re unlikely to discover a brand owner with a registered trademark using a confusingly similar name to yours in the USA.
In the UK and EU it’s a different story because brand owners need to police their trademarks to prevent someone else securing a registration that’s confusingly similar to theirs.
The starting point to doing this is to ensure you become aware of similar applications so you can decide whether they are concerning enough to warrant opposing. There are a number of steps you would need to take once you became aware of a similar application, which I won’t detail here, beyond saying that they’re all provided under our brand protection service.
Ideally you would never receive a concerning notification of a similar application to your mark. So, the objective of a brand protection service is to equip you to be vigilant. It doesn’t mean that if over the years you’re never alerted to a similar application, it means you need not bother to renew your brand protection service.
Brand protection requires an annual investment similar to an insurance policy.
Indeed, enhanced protection can be achieved by investing in an annual watch service over and above the basic brand protection service we offer. A watch service would identify a broader range of potentially conflicting applications— far more than standard IP office notifications. We notify some of our watch service clients of as many as 20-100 notifications annually. These clients have peace of mind knowing that no concerning applications will slip past them unnoticed. This is well worth it when you consider that a single application for a similar trademark could otherwise become hugely problematic and expensive to deal with if it proceeds to registration without your knowledge.
It’s much cheaper and effective to be in the know so you can take swift action before a similar trademark is registered.
Another reason to have a brand protection service is to receive advice, such as about steps to take to protect the brand against cancellation down the line. Again a difference between the US and UK and EU systems is that in the USA trademark owners must submit proof of use after five years to maintain their registrations. Without such proof their trademarks risk cancellation.
While the UK and EU IP authorities don’t require proof of use to keep registrations on the registers, it doesn’t mean a mark isn’t vulnerable to revocation if it’s challenged by a third party, such as during infringement proceedings. It’s possible to shift the burden of proof onto the brand owner to establish that they’re genuinely using their mark.
Our brand protection service also notifies clients of renewal deadlines in the UK and other jurisdictions. Beyond renewals, brand protection clients are entitled to an annual IP health check meeting during which we recommend actions the business should take to plug any gaps in its protection or to ensure its marks are not vulnerable to cancellation. Proving genuine use requires the mark to be used in specific ways and proof of that use to be available. Even renowned companies like Apple have lost their trademarks—such as “Think Different" in the EU—because they didn’t have the requisite proof of use required by the EU court.
Investing in brand protection is about ensuring you are actively monitoring your most valuable asset and have the knowledge, tools, and support you need to take informed actions to secure your brand's future legally.
If you’d like a brand protection service for your marks do reach out.
