Your 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.