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Protecting Name

Why You Need to Protect a Name and Other Intangible Assets Immediately

Protecting NameThe 7 Costly Mistakes People Make When Turning their Big Idea into a Business, or when Branding or Rebranding Anything

Since a brand gives your idea or product identity, not registering it as a trademark leaves you wide open.

Your market share could be stolen by a competitor if they use the same name and register it themselves because you haven’t bothered to do so.

Can you imagine what it would mean to your business if somebody else registered their business using your name or one very similar to yours, even though you used the name first?

It would cost a lot of money to argue it out with them. Effectively, you risk losing ownership of your own name!

If you weigh the very affordable cost of registering your brand versus the cost and trouble of legal suits over an unregistered name, you will understand why it is wise to take no chances.

The same way you secure your website or Shopify site with a password or your physical business with doors and security right from the start so you should secure your intangible assets, such as your business name.

If you take the security of your brand and IP with the same seriousness that you take your website security and physical business’ security, you will be on the right track. It is a big risk not to register your brand name as a trademark immediately you decide on a name.

Many entrepreneurs have watched their businesses go up in smoke – not from the theft of their products but from the theft of their idea, their brand – which is the very essence of their business. All because they did not take any measures to get a good name and secure it right from the beginning.

Do bear in mind that registration alone does not give you the protection you need though. You first need to establish that the name is available for you to adopt. That means getting a trademark lawyer’s advice on it as mentioned in Mistake #5. The UK and EU trademark offices will not stop someone else registering exactly the same name as an existing trademark. In the USA, the USPTO would stop a duplicate registration though.

So, assuming you are in the UK or EU, or some other country that allows duplicates registrations, then remember you get no protection simply by registering the name. This is clear from the case of Microsoft’s SKYDRIVE!

Not protecting the brand and visual identity through trademark registration is a mistake

Of course, trademarks are not the only type of IP to worry about. Remember, you don’t get any protection for your idea or invention if you disclose it before registering a patent, and you have a limited window of opportunity to secure design registration for an innovative design concept. And when it comes to trademarks, there’s a lot more to them than simply registering a mark.

Lack of protection risks your distinctive brand elements becoming generic. Coca Cola would never have secured a monopoly over its iconic bottle shape if it had not protected its designs at the outset when the design was first created.

Conclusion

In a nutshell, when you have an idea take the right steps to turn it into valuable intellectual property. IP assets don’t automatically just exist. You need to identify, capture and secure the IP in your idea. That involves making the right choices, such as of the name you give it. Otherwise, you could fail to create value from your idea.

The lesson is simple – if you’re an inventor, or entrepreneur with an idea, IP is crucial to you as is the brand you create. If you have an idea to better serve your clients, an idea to make your difference in the world, then give it the best chance of success. Take account of IP as it will be important to your plans.

Find out more how BrandTuned helps you turn that idea into commercial form or to fine tune your existing brand and business.

choosing names

Don’t Choose Names Without Involving a Trademark Lawyer Who “gets” Branding

choosing namesThe 7 Costly Mistakes People Make When Turning their Big Idea into a Business, or when Branding or Rebranding Anything

The name is a key part of your brand identity. It’s possibly the most important decision you will ever make. It has the potential to make or break your business. Don’t entrust this work to people who don’t thoroughly understand the legal dimension of names. Or if you do, then be sure to include trademark advice in the mix.

Involving a trademark lawyer who “gets” branding to help you to identify a new name is the ideal. It is the most cost-effective way to get a name that makes your idea sing. Why? Because such a lawyer will understand both the marketing and branding function of a name and the trademark and IP dimension. IP is one of those subjects where a little knowledge is a dangerous thing. On the other hand, using a lawyer who doesn’t understand branding might not give you the best business solutions, even though you will get good legal advice.

There is a lot of legalities around names. You need to know which ones are ownable or are already taken. You need to understand which names will be liked by the ideal client so that they can be effective from a marketing perspective.

People often get help from a designer to choose a name even though there is nothing about names that requires graphic design input. While some designers may have expertise in naming, the vast majority do not. They may do one or two naming exercises a year, if that. So, they don’t know as much about names as they need to know. Some I’ve come across tend to choose unsuitable names from a legal perspective. Many of them assume that the right to use a name comes from domain or company registration. That’s all the checks they’ll do, and sometimes they don’t even do google and domain name checks. Most don’t check the trademark registers and leave you to get the name checked out by your own lawyers,

Make sure you consult a trademark specialist if that’s the case. Your general business lawyer won’t be as well placed to assess whether the name is one you can stop others using and how difficult it would be to enforce your rights in that name.

It’s possible to register any name with a logo but what value does that give you if you can’t then stop competitors stealing your market share when they use the same name with a different logo?

If you don’t consult someone experienced in names, then you risk ending up with a trademark which effectively just protects the logo rather than the name on its own.

To identify a name that reflects your positioning, that is protectable as a word mark and that you can stop others from using in ways that confuse the market is something that requires a good understanding of trademarks and branding.

Inventors and entrepreneurs often believe that simple tasks like choosing a name for a new product do not involve legal consideration. This is not true.

For one thing, you could lose everything overnight, as Scrabulous did. The two Indian brothers that developed an app enabling people to play a word game online with friends anywhere in the world were unaware that using a name that was like someone else’s trademark would be a problem. Their app was a huge success, until Hasbro, the owner of the Scrabble trademark, found out about the company. Hasbro had no trouble getting Facebook to pull the app. So Scrabulous vanished from one day to the next despite having hundreds of thousands of users.

Had the two brothers realised that their choice of name could shut them down they would have chosen a different name for their online game. But they didn’t take advice from trademark experts to investigate the trademark implications of their choice of name. It’s just not worth the risk.

Although Scrabulous rebranded and got back on its feet, the IP problems were a huge set-back for them. Zynga was able to take advantage and enter the market with Words with Friends. It is now the market leader.

Even where you have limited resources, you should think carefully before foregoing help from a professional to carry out a search of the trademark registers.

Think of your brand name as if it were a physical plot of land, and your branding and business as buildings you would build on that plot. What you don’t want is to find that you’ve built on property that you don’t own. Ownership of your brand name is key before you build your brand.

Tips to Choosing a Name That is Ownable and Enables You to Stand Out

choosing a nameThe 7 Costly Mistakes People Make When Turning their Big Idea into a Business, or when Branding or Rebranding Anything

Did you know that choosing a name is an important IP decision? The name is one of the most valuable assets you potentially create when turning your idea into commercial form. It’s how your brand will be recognised in the world. There is a lot more to names than most people realise.

Whatever the idea, it’s likely you’ll choose a name for it. If you choose the right type of name, you’ll have the foundation of a great brand.

Not only do you need to choose a name that’s ownable, and resonates with your ideal clients, but you’ll also need to make sure the name does not infringe on somebody else’s trademark rights. With trademarks that means the name mustn’t even be like someone else’s name in your industry. People wrongly assume that a common word cannot possibly be monopolised by somebody else and they, therefore, don’t realise that they’re not free to choose certain types of name.

A common mistake when choosing names is that people assume any name will be suitable. They tend to like descriptive names and believe this is the way to go.

There is a lot more to names though. If your idea succeeds, the name will be one of the most important protections of your business concept. Making a poor choice of name can be a very costly mistake because the wrong name might make it that much harder to stand out and get recognition in the market.

The top 3 most successful brands in 2019 were Apple, Google and Amazon, according to Interbrand. Their value is predominantly contained in their brand names. A good name can make or break your business or idea.

An example of a bad name is one that purely describes the business activity – a keyword rich name.

Your name is your ‘badge of origin’. It’s how customers find you. So, your identifying brand name needs to be distinctive and memorable, and most importantly, one that you can uniquely own.

Purely descriptive names are not ownable. When a name isn’t ownable, it means you build little brand value. Your competitors can freely use the same name, and that ultimately means less revenue for you, and very little protection for your business.

If you already have a name, it’s generally best to stick with the same name unless there is a strong reason to change it. Reasons to change a name are if it is purely descriptive, or it’s developed a bad reputation, or if it’s limiting your potential in some way.

A good approach when you don’t have a big budget to inject meaning into a totally made up name, is to choose a name that is suggestive. In other words, a name that is kind of descriptive of your business model without blatantly spelling it out. An excellent example of a suggestive name is DELIVEROO.

When looking for a name that is suggestive of what you are selling beware of veering too far towards the descriptive. A name that was too descriptive was Clubcard. The name describes a loyalty card program, so it has not been accepted for registration as a trademark and everyone else can use the name that Tesco spent hundreds of thousands promoting.

Another example of a name that wasn’t ownable was the tagline “Think Green” because this is a common message used by many worldwide organisations.

Depending on the industry you work in, you might use your own name – think Gucci, Armani, and Selfridges.

Many successful brands have become memorable using a name that doesn’t relate to their business at all – for example, Galaxy chocolate, Google or Apple Computers. If Larry Page and Sergey Brin had decided to use the brand name ‘Search Engine’, how would you recommend them to a friend? They wouldn’t have been able to uniquely own such a name, so wouldn’t have become so well known.

If you want to describe what your business does, then the tagline is the way to do that. For example, a descriptive tagline right next to the brand name will help your distinctive name.

In our case, we use Azrights as our name, mainly because that’s always been our name (it denotes the A to Z of IP rights services that we started out offering when it was rare for IP firms to offer the full range of services). Our current tagline is “Lawyers for the Digital World” describing that we are lawyers focused on online business. We will be changing this soon to reflect the new direction of the business as an IP consultancy and brand strategists now that we offer BrandTuned.

BrandTuned (or Brand Tuned) is a name we came up with because we wanted a name that incorporates the word “Brand”. We wanted to be able to use the name for our new service, but also to use it internationally for an online course, a book title (look out for the BrandTuned book out later in 2020), and also for a podcast. It turned out that the .com of the name was available so we secured the domain too even though it hadn’t been one of our criteria that the .com should be available. There are so many domain suffixes you can use these days. It really limits you to only choose names based on availability of the .com.

The name is one of the most important ways to make your business distinctive. The wrong name really can make it a struggle to be in business. Picking a name that is not ownable for the purposes and geographical markets in which you intend to use it, puts a ceiling on what your business can achieve.

Third Costly Mistake

The Third Costly Mistake People Make When Branding or Rebranding

Third Costly MistakeThe third costly mistake people make is Not having a clear brand strategy before getting a visual brand identity

Wally Olins, a thought leader in brands and branding says:

‘A brand is simply an organisation, or a product, or a service with a personality … Branding can encapsulate both big and important and apparently superficial and trivial issues simultaneously … Branding is not only a design and marketing tool, but it should also influence everybody in your company; it’s a coordinating resource because it makes the corporation’s activities coherent and above all, it makes the strategy of the organisation visible and palpable for all audiences to see’.

To think through your brand strategy involves deciding how to create a good business that’s reliable and known for delivering on a specific promise. How will your business idea work? Who will buy from you? What promises will you be known for?

Every brand has its own distinct ‘promise’. It’s due to this promise that we know to expect something completely different if we buy a Rolex watch rather than a Swatch.

Working out your brand strategy is essential if you want to get your business off to a successful start. Thinking through how you want your business to be known isn’t easy, but this is important work. You need to fine tune your brand strategy before you can be ready to brief designers to give your concept a visual identity.

Consider what quality or outcome you want to deliver consistently and reliably. How will customers know what to expect if they use your product or service so that there’s little risk of an unpleasant surprise? Buying a product or service from a business whose brand is not yet known is risky because it represents something untried and untested.

As my first efforts with branding were somewhat unsuccessful, I decided to rebrand a few years ago. This time I knew better than to start off the process by visiting a designer. Instead, I did a lot of introspective thinking, and worked with other professionals to fine tune my brand strategy.

I had to decide what unique angle I was bringing to the market, and how to communicate that message in a way that evoked a response in the minds of customers.

What work was my law firm focusing on? Apart from the fact that we specialised in brand and trademarks, I realised we were very technology and online business focused in everything we did.

Having done my homework and soul searching first, and really considered the business’ mission, values, purpose, and more, I turned to a designer for the visual identity work.

As I had fine-tuned my brand strategy, the rebranding exercise was a great success. We decided to use the tagline, Lawyers for the Digital World. This time the logo was designed to look more IBM like rather than an old fashioned “creative” looking script.

Some of our essential values are encapsulated in our ethos Easy Legal Not Legalese. Another important value is to be forward-thinking and to provide the solutions the market needs. Hence why we’ve developed BrandTuned, a “done with you” style service that combines branding with IP. It ends with designs. We can either do the designs for you using our own creatives, or we give you a design brief that makes it easy for your own chosen designer to translate your brand strategy into visual designs.

branding or rebranding

The Second Costly Mistake People Make When Branding or Rebranding

branding or rebrandingThe Second Costly Mistake people make is to assume “brand” means a logo or other visual design.

Due to the widespread confusion about branding: what it is, and what you need to do to get a brand, people tend to start by getting a logo and other visual designs, assuming this is what’s involved to “brand” their business.

It’s essential to understand what “brand” means. You don’t need to be a household name for “brand” to apply to you and your business. Brand applies to everyone whether large or small business because we all have a brand whether we know it or not.

What’s involved to create a brand nowadays is much more than the visual identity. That’s enormously important, of course, but before you can get a logo and other visual designs that reflect your business, it’s vital to first work out what you want them to communicate. Who are you? What are you all about? What is your brand promise going to be?

The designer will need some essential information from you about your values and what you stand for to guide the visual identity work. Thinking this through can take months. It’s important to have meaningful answers before engaging a designer. Otherwise, you will make hasty decisions during the branding process, as I did, which will give you an unwanted “branding” outcome.

When I first set up my business back in 2005, the words ‘brand’ and ‘branding’ were confused in my mind. I spent thousands on “branding” without getting anything more than expensive design work. The designs didn’t help me attract the right sort of clients either.

The creative agency I used had a process to help their clients work out what their brand was all about. This involved completing a questionnaire and having a meeting.

I really didn’t understand their questions. For example, when they asked me about my values, I wondered what values they had in mind. Values about what? The designers were also trying to understand what intellectual property meant!

Based on that meeting they sent me a variety of logo designs. I picked one I liked – it had an old fashioned distinctive-looking font. And that was it. My brand identity was created around that logo.

The website they designed for me featured many pictures of musical instruments, including violins and pianos.

At the time being new to the world of business, I was quite clueless about all things branding. So, this is the brand I got. The visuals gave a cliché impression about the work of an intellectual property law firm.

I wasn’t a music lawyer, but due to all the musical instruments featured on the website, I kept getting enquiries from musicians who couldn’t afford our services.

This is a mistake I see many businesses making in that they hand over to designers to brand their business before they’ve thoroughly thought through their business idea for themselves. It’s important to think about the type of client you want to attract.

I should have started the branding process somewhere else. I needed help to understand what “brand” meant and what type of client I wanted to attract. This is something that requires business and marketing thinking. Developing your brand strategy is essential before thinking about visual identity.

Far better to start with temporary, low cost designs. There’s nothing wrong with that. Many of the clients I support have generally spent a year or two getting started with a temporary name and low-cost designs. They’ve tested the market, understood what works, who their ideal client is, and then they’re ready to identify a good name and get a visual identity.

Your brand is the reputation and identity by which you and your business are known. How do you want the world to think about your offerings? What do you stand for? The answer to such questions impacts your choice of brand “signs”, ie, your name and logo and other designs that reflect your brand.

The word “branding” derives from the identifying mark that was burned on livestock with a branding iron when farmers branded their livestock. It was done not only to enable identification but also to make a certain ranch’s cattle unique.

Sometimes the brand mark told you the name or the symbol of the ranch or owner of the cattle. If any rustlers stole the cattle, the evidence was right there that they were stolen. In this way, branding served as

(1) a legal mark of identification

(2) a physical mark of identification

(3) a way of linking the cattle to the owner

(4) a way to stand out from other cattle

(5) a source of prestige for the ranch.

Just looking at the branded livestock enabled people to distinguish them from other cattle. You were also able to see the connection between them and the farmer or the ranch. If the cattle were very strong, numerous and healthy, people knew who they belonged to. “Those are Mr. Miller’s cattle. He owns five thousand cattle and one of the biggest ranches around. See how healthy his cattle are? That must be a big ranch to own all that livestock.”

A brand mark discouraged cattle thieves. It’s like stealing a company car with the logo and company name on it.

For business today, branding has moved on as a concept from its roots in visual imagery. Although the visual element plays an important part in the long-term growth and prosperity of your business, what you first need to do is to sort out what you stand for, in other words, your brand strategy.

The First Costly Mistake People Make When Branding their Big Idea or Rebranding Their Business

Eureka! You have hit on an idea that you believe is a spectacular business idea.

Or you have joined the league of inventors with one breathtaking invention of your own. You can hardly wait to launch it and let everybody know what they have been missing.

Or maybe you have come up with a winning idea for a new business or product, or you simply have an idea you want to turn into a business.

Whatever the idea, unless you know how to hit the ground running with it, you’re wide open to copycats and thieves and fundamental mistakes.

Many otherwise sophisticated CEOs and corporate managers essentially leave a significant portion of value on the table by failing to develop and execute on a brand strategy directed to capturing and maximizing intangible assets, or intellectual property (IP) to be more precise.

Over the coming weeks I will be releasing 7 blogs to help you to understand how to avoid some of the costliest mistakes people tend to make with their big idea.

The key moments these mistakes happen is when you have a new idea to turn into a business or charity or product etc.

Another common time when you’re susceptible to making serious mistakes is when you’re rebranding an existing business or concept.

To make sure you’re on a strong footing when turning an idea you’re excited about into a business or charity or when rebranding, be sure to check out the blogs so you avoid the 7 mistakes.

 

The First Costly Mistake People Make When Branding their Big Idea or Rebranding Their Business

Is that they don’t start with Intellectual Property.

Thinking about Intellectual Property (IP) the instant you have a new idea or project is the best way to protect an idea. Why? Because ideas alone have no protection under the law.

The fact that you thought of something first, or that an idea is yours means nothing in the world. The minute you reveal your idea anyone may freely use it. Writing down your idea and giving it to someone to hold as proof that you had the idea first does nothing to protect the idea either. Nor does using Non-Disclosure Agreements indiscriminately help much.

It is surprisingly easy to overlook the importance of IP in the early stages when developing your ideas. The internet has changed the rules. The assets of a successful business tend to be intangibles like names, websites, designs, trade secrets and the like. Do bear this in mind when embarking on new projects or creating your brand.

One good reason to think about IP first is so you can understand how to protect the idea as you give it a commercial form, who to reveal it to, how much to reveal, when to be secretive, and when to freely spread your idea. You don’t want to be all paranoid about revealing the idea otherwise you wouldn’t get anywhere with it. On the other hand, you need a good commercial understanding of the world, business and IP, in order to know how much to reveal and when.

Intellectual Property is an umbrella term that refers to the 5 legal disciplines that protect and govern creations originating from the mind – that is intangible assets. These creations might take the form of inventions, designs, art, written materials such as blog posts, music, secret recipes, brand names, etc. These IP laws are known as patents, trademarks, copyrights, designs, and confidential information or trade secrets to use a common term that describes a type of confidential information.

How it works is that one or more of these laws protect a given subject matter. For example, music is protected by copyright. Names are protected by trademarks, and inventions are protected by patents. Some things are protected by more than one type of law. For example, logos are protected by copyright, designs, and trademarks.

You could end up wasting a lot of time and money unnecessarily, all because of some easily avoidable IP mistake.

An extreme example of how failure to understand IP can result in loss is the Karaoke machine. Mr. Daisuke Inoue, the inventor, earned nothing from the billion-dollar industry that the invention spawned. He never thought of patenting his invention until it was too late. Had he done so, it could have made him millions. Reflecting on his experience, one can’t help feeling that it’s unfair that it was the multinationals and not him who made massive financial gains from the invention.

However, the law is clear. As soon as you reveal your ideas, you lose the possibility of patenting if the idea was for an invention. In a world where opportunists are waiting to pounce on the latest new idea, you need to understand the role of IP in protecting the idea. As soon as ideas are in the public domain you can no longer patent them, and others are able to freely make use of them.

But it’s not just if you have an invention that you could lose out by not looking at IP first.

Turning an idea into a business or product and brand involves knowing how to make the idea spread, how to help it to stand out and be memorable.

How ambitious are you for your idea? How much would it matter to you if you made wrong IP decisions? IP is property just like the land is property. It’s the most valuable property your business or idea can be turned into if you get it right.

Whatever you do, don’t start by going to designers for “branding”, such as to get a logo or website. Designers won’t be able to help you with IP. That’s not their expertise. Most of them might know just a little bit more about IP than the general public, but not nearly enough to help you protect your ideas.

trademark use

Trade Mark Use – When May You Legitimately Use Someone Else’s Trade Mark?

trademark useTo discuss trade mark use let’s start by taking a couple of steps back to understand a bit more about trade marks.

Trade marks are the way to protect your ‘brand”. This word is overused to mean almost whatever a writer wants it to mean, but for current purposes suffice to say “brand” originates from the days when animals were burned with a branding iron to indicate ownership of them.

So to indicate our ownership of our business, or products and services we use various types of “sign”, the most universal one being a name.

The law protects certain names through intellectual property rights known as trademarks.

Names

One major advantage a business has over an individual is in getting to choose its own name.  However, the subject of names is surprisingly complex, and poorly understood, even within the branding industry. The upshot is that many businesses do not give the choice sufficient time, and consideration and get into difficulties later on. They might then have to rebrand to either adjust the name or change it altogether.

Some of the complexity arises because there are various places where people may register names.  It’s possible to register domain names, company names, or to simply adopt a trading name and use it without taking any further action.

Trade marks are more remote to small businesses due to the higher official fees payable to register them. This makes them less accessible than domain and company names. Trade marks also have complexities that make them less suitable to just go register without taking advice.

The upshot is that fewer people tend to register trade marks than register company or domain names.

In this post, I’m not going to cover what types of name are capable of being owned because that’s a large subject. Instead, I want to focus on trade mark use because people are often confused as to what they may or may not do if a name is trade marked.

For example, can they register a similar name? Is it acceptable to refer to a business by its name on your blog? When may you use a hashtag of a brand name? What if someone registers the ‘domain.sucks’ a version of your brand name? What actions might you take?

Such questions all turn on what amounts to trade mark use. There are more questions than space allows for me to answer them but if you’re wondering about use of others’ trade marks in Google Ads then a good starting point for your research are some posts I’ve written such as Should Google be prevented from profiting from cybersquatting?, Louis Vuitton v Google – The AG’s Opinion and Adwords Trademark Policy – Using Competitors’ Names In Adwords

 

Function of a Trade Mark

A trade mark acts as a ‘container” in which the brand value generated in the business is captured. Although it is possible to have trade mark rights without registering a trade mark, unregistered rights are very weak. Unless you have a significant budget to enforce your unregistered rights you effectively don’t have any rights in a name you’re using if you haven’t registered it as a trade mark. It’s less expensive to enforce your rights in a name you have registered.

A trade mark ring fences an area of business in which you have exclusive rights to use your brand name. Competitors can be stopped from using any name that is similar in sound, concept, or visually as they may effectively then be “free riding” on your brand.

This is a big trap for the unwary who think they can just make a slight change of spelling in order to use a similar name. Trade marks give wide protection against confusingly similar names which is why it makes sense to ensure you have a name you can own, that is not descriptive, and that nobody else already owns.

A trade mark is the closest you get to having exclusive rights to use the name for your goods and services. If the name of your business is not capable of being protected through a trade mark registration then it will be very expensive, if not impossible to protect your business name and build up goodwill under that name.

The use of a trade mark in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services is what the law prevents other people doing.

So how might third parties legitimately use your trade mark?

As I mentioned in How To Blog Safely And Avoid Infringement of Intellectual Property the mere reference in your blog to a word trade mark  – such as “BARCLAYS BANK” or “GAP” will not amount to trade mark infringement because names are not protected by copyright law, and trade mark infringement is based on consumer confusion. So, a mere reference to someone’s brand name in your blog is not going to lead to such confusion. The only exception to this is if your use is such that the relevant consumer might be led to believe that your blog is somehow connected to or supported by Barclays Bank.

And as mentioned in this blog about the use of #Hashtags and trade mark infringement, “If a hashtag name constitutes or includes a registered trademark, at first glance it may be sufficient (without registration of a hashtag itself) to bring an infringement claim and establish consumer confusion of a competing use.”… however,  the courts tend to attribute a degree of consumer sophistication to internet users which makes it less rather than more likely that mere use of a hashtag would amount to trade mark infringement. (See Public Impact v Boston Consulting )

And as for using a trade mark name within a domain name such as .sucks as I mentioned in my blog Buying the Suckscom Version of Your Brand where there is simply non-commercial use, then ‘gripe sites’ or protest sites as they are often called, are unlikely to be making trade mark use of a brand.  Therefore, there would be no risk of customer confusion.  In such situations, it is possible to argue there is a ‘legitimate interest’ in using the brand name.

Conclusion

The law aims to keep trade marks free for others to use. Therefore, if you own a mark and do not genuinely make commercial use of it in the country in which your mark is registered for a five year period you will not be able to enforce your rights in that trade mark.

It is not sufficient to just say that the mark has been used, or to just produce a catalogue or a price list showing your mark. There needs to be a clear chain of documentation showing use of the mark in relation to the goods / services for which the mark is registered. So, you might be able to prove use for some goods and services in which you’ve registered your mark but not all of them in which case you will lose your rights over part of your mark.

As they say in trade mark law, Use it or Lose it

Are You Looking to Brand or Rebrand Your Business?

If you’re considering a rebrand or are setting up a new venture start by taking this post on board as it could help you avoid many mistakes people commonly make.

That’s because society hasn’t yet caught up with the huge changes the internet has caused. The way you go about rebranding needs rethinking, yet most people don’t realise this.

I remember hearing about the internet for the first time in the mid-90s during my intellectual property masters’ degree studies. My mind was completely blown away by Professor Chris Reed’s IT law lectures at QMW, London University.  Back then the internet was still very much about Janet an academic network. Professor Reed’s lectures were so inspiring in terms of the significant role the internet would play in our lives, that I was compelled to enlist my husband’s support- he is an IT professional – to get us a dial-up internet connection.

Over the ensuing years the internet has evolved to become what it is today – an essential part of all our lives and businesses.

 

What This Means for Business

It is still hard to believe that in such a short space of time the internet has evolved to radically change the rules. Its thrown many industries into chaos, and in other cases, the internet has subtly, and forever altered how we need to approach things, including branding.

The upshot of these changes, as highlighted in my two books, Legally Branded and Intellectual Property Revolution mean that IP now needs to be one of the first considerations when there is a new project or brand to create.

 

IP is Part and Parcel of Business

So many people I come across say: “What is IP?” And those who are aware of it, assume it’s to be dealt with in the same way as in pre-internet days. Largely, IP is considered to be something you might want to consider if you’re wildly successful or if you prefer to protect your IP rather than just using it. It’s perhaps unsurprising that society hasn’t yet caught up with the changes, given that it’s still just 20 years or so that the internet has been around.

More than 70 % of corporate value today comprises intangible assets. Intangibles are governed by intellectual property law. Without question intellectual property in the form of patents, trade secrets, copyright, trade marks, contractual relationships, and know-how comprises a significant portion of some of this value.

What is less well appreciated is that these assets do not automatically just exist. Some steps often need to be taken to turn ideas into IP. IP could be lost if not identified, captured, and secured, or if the wrong choices are made – such as of the name for a business or product. The wrong name really can make business so much more of a struggle. The name is the most important way to make a business distinctive and must be chosen with the involvement of trade mark experts.

Leveraging IP is how value embedded in it is realized. An awareness of intangible assets is the way to manage them, and preserve the investment a business makes in its brands

 

How Aware Are You of Critical IP Issues Affecting Your Business?

 Thinking about IP first when you have an idea or project, is a good way to start managing and protecting IP. Have a strategy for handling your IP.

Why is failing to capture your Intellectual Property a costly problem?

It is surprisingly easy to overlook the importance of IP at the early stages of developing your ideas, and to lose the entire value of your business in the process, simply because of a lack of awareness of IP.

Inventors and entrepreneurs often believe that simple tasks like choosing a name for a new product do not involve particular legal consideration. This is not true. The name is too important to choose without reference to trade mark expertise.

For example, you could lose everything overnight as Scrabulous found out. The business was unaware that using a name that was similar to someone else’s trade mark would be a problem. Two Indian brothers developed an app that allowed people to play a word game online with friends anywhere in the world. It was a huge success. Hasbro, the owner of the Scrabble trade mark, found out about the company and had no trouble getting Facebook to pull the app. So the business vanished from one day to the next.

Had the two brothers realised that their choice of name could shut them down they would have chosen a different name for their online game. But they didn’t take advice from trade mark experts.

 

Not Realising You’re Making IP Mistakes

But this isn’t the only way names can cause problems. People are often unaware that it’s their keyword rich name that blatantly describes their business services that’s the cause of their lack of success. This is something difficult to understand because from a search engine and marketing point of view descriptiveness is no bad thing. But to name your brand with a descriptive term is plain wrong. This is one of the biggest mistakes I see people make and what’s worse they may never realise that the reason business is a struggle is precisely because of their name.

Another example of how failure to understand IP can result in loss is the Karaoke machine.

Mr. Daisuke Inoue, the inventor, earned nothing from the billion-dollar industry that the invention spawned. He never thought of patenting his invention until it was too late. Had he done so it could have made him millions.

Reflecting on their experiences, one can’t help feeling ‘it’s not fair!’ that it was the multinationals and not them who made massive financial gains from these inventions. However, their case is not unusual and even now many inventors know little about their intellectual property rights.

The lesson is simple – if you are an inventor, or entrepreneur you need to know about IP.

Business and IP are intertwined. Don’t think of embarking on branding without first looking at IP. Use a trade mark lawyer who “gets” branding to support you in any naming exercise.  Why? Because IP and trademarks are one of those subjects where a little knowledge is a dangerous thing.

trademark

What Does It Mean When You Trademark A Name?

trademarkYour brand name should be a “barrier to entry” – protecting you against the threats that competitors potentially present. Just as patenting an invention gives you a monopoly right over your invention and acts as a barrier to entry against competitors, so names are also important barriers to entry provided they are well chosen. Not any name will cut it. It’s important to take advice on your business or brand name before adopting it.

Your Brand Name Is Like A Physical Plot of Land

Intellectual property rights such as trademarks give you property rights similar to the ownership of physical property. Just as you wouldn’t develop land without first making sure you owned it, so you need to own a name if you’re going to build your brand around it.

There is a similar system in place to that of the land registry, so that you can check ownership rights in a name and register it as a trademark. Although trademarks differ from physical property. They involve complexities. For example, using a similar name is a problem as Scrabulous discovered when it received a cease and desist letter from Scrabble and lost its market leading online word game overnight.

The other day someone said to me, but Shireen we should deal with so many things that we don’t – for example, we should have a shareholder agreement, or we should have a will, we should have employment contracts. He was implying that IP was no different. However, IP like trademarks are completely different. It’s completely wrong to lump trademarking with other legal actions you might put off till it’s convenient. Nor is IP an “insurance” thing either.

IP underpins your very business, and disregarding it is to gamble with your entire business. Would you put off getting title to a piece of land that you were developing by building properties on it? Would you just rely on squatting rights while you developed it? I doubt it. Your brand is no less important.

Don’t Just Use a Name Without Registering it

It’s vital to register a trademark as soon as possible to protect your legal identity before you move on to creating your visual identity.

If there’s a name I myself want to use I won’t even reveal it publicly till I’ve filed an application to register it as a trade mark.  I know what can go wrong. So, if you’re testing an idea and are not ready to spend money on trademarking, I recommend using a temporary name rather than a name you love and which you’ve not protected.

With one of my trademarks, I discovered that a bigger business was using the same name and had even registered it as an EU trade mark. I challenged them on this. And because I had right on my side, I prevailed. In that case, I agreed to sell them my trademark for a 5-figure sum because they really needed to use the name. I wouldn’t have had a leg to stand on if I had simply used the name first without registering it as a trademark. In practice, my only option would have been to rebrand given that they’d registered an EU trade mark. I’d have had no financial support for the costs involved in the rebranding. But when you have legal title to a name you have a strong bargaining position.

Registering Trademarks in The Brexit Era

With Brexit having been in the air these past few years and potentially likely to happen in 2020, it makes more sense for people to apply to register a UK trademark than an EU one.

A UK trademark is a solid foundation for extending your trademark protection to other countries worldwide using the Madrid Protocol system. You could specify the EU in such an application and secure protection in the 27 countries.

Since the UK voted to leave the European Union, it’s become more common for brand owners to use the Madrid Protocol system rather than European Union trademarks. These used to be very popular given that a single application enabled you to protect your mark across the EU’s 28 member states (which includes the UK). But Brexit makes an EU trademark less appealing.

The Madrid Protocol system is the way we extend our clients’ UK trademarks to secure protection for their brand in the EU market, as well as the USA – which is one of the other popular jurisdictions.

If you need help to protect your brand then we are well placed to support you.