Tag Archives: trade mark protection

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.


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.


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

image rights

Image Rights. Do They Prevent You Using a Celebrity’s Image?

image rightsIn the lead up to the Christmas and new year season, most of us are accustomed to seeing television advertisements featuring well-known actors and personalities endorsing a range of luxury products such as perfumes and watches.

Indeed the John Lewis Christmas advert is a television advertising campaign which is released in the build-up to Christmas. John Lewis launched their first Christmas advert in 2007. It has since become something of an annual tradition in British popular culture, The adverts tend to attract widespread media coverage and acclaim upon their release

Obviously a personality like Sean Connery will have been handsomely rewarded for endorsing a famous brand of watch. The question people often wonder about is to what extent a person, famous or otherwise, can control the use of his or her image or likeness on products or services. Can, for example, use Sean Connery’s image to sell your calendars bearing his image on the front cover?

In the UK there is as yet no recognised legal right of publicity or personality. This means that a person has no specific legal right in the UK to control the unauthorised use of their image or appearance.

Celebrities do have some legal remedies though, so be careful before you use a famous person’s image. Has the celebrity registered their name or signature as a trade mark?

Even if the famous person has not registered a trade mark of their image or likeness, that person may still be able to successfully challenge use by others of their image on the basis of  passing-off, which is a legal remedy that protects the goodwill which has been built up by a person in their business. Their argument would be that you are wrongfully appropriating that goodwill. To succeed, they have to prove 3 elements: a recognised goodwill in the UK, a misrepresentation by the defendant, and damage caused to the claimant’s goodwill.

For present purposes, the key element to be proved by the famous person or celebrity is misrepresentation: will the public be misled into believing that my 2020 calendar bearing the image of, say, Sean Connery on its cover has been approved by or has some connection with that former Bond star?

Starting An Online Business Will Be Easier If You Take Action In The Correct Way

If you prefer to listen/watch a video instead of reading then click here to go to my youtube channel.

The more thoughtfully you implement your ideas when starting your online business, the fewer actions you’ll need to undo or redo later.

It’s easy to get paralysed by fear or indecision or to be too perfectionist though. So, be ready to test your ideas, learn and try again, aiming for the happy medium between planning and doing.

Do put some thought into risk management and intellectual property protection though by being aware of the issues, examining them and then doing what’s feasible and desirable to reduce them so you’re not gambling with your future and take calculated risks.

You have to start to be great so do commit to starting your project, spending as little as possible in the testing phases.


Find your starting point

To reach our goals in life we need to be at the right starting point for the steps we’re about to take.

Where you start on the journey when setting up your online business impacts the actions you’ll take towards your desired end goals.  For example, if you haven’t yet worked out how to position yourself in the market you’ll need to do that first before spending money on branding and expensive designs.

Being mindful of where you are right now will help you to reach your end goal faster and more effectively because you can more properly plan how you will get there.



If you have chosen your niche and decided who you want to serve your starting point will be different from someone who has yet to identify what product to sell.

How to unpack your knowledge and skills, work out what to offer the market and who to serve is a large subject which I’ll cover elsewhere.

In this piece, I’m going to assume you’re ready to set up your online business and start selling.

Even then your starting point would differ from someone who has already tested their concept. Testing the market response to your ideas is so important.

Online businesses can be set up very inexpensively, so it’s easier to test your concepts first, and it’s extremely important to do so.

If you invest too soon in a name, branding, logo, designs and website development etc, and haven’t sorted out basics like what the market reaction to your offering might be, you may be wasting time and money.

As they say in Maine USA when you ask for directions “you can’t get there from here”, This is an observation of the impossibility of traveling a direct route between many places in that state. It has something to do with lakes and the organization of roads in the vast rural areas of the state.

Business is similar. It may be impossible to get to where you want to be from where you’re currently located.  The quickest route depends entirely on your starting point.


Structuring the business

When you’re at the proof of concept stage many of the decisions you will be taking will be temporary in nature.  Perhaps don’t use a name you’ve set your heart on yet, as everything involved with names adds to your expenses, and the aim during the testing phase is to spend as little as possible. However, it does depend on the business model of what you’re creating. For example, if you’re setting up a fashion label, the costs of branding, naming, trade marking, and design work are unavoidable in the testing phase.

Once you’ve tested your concept and have a viable business opportunity to pursue, the next step is to decide on the structure for your business and to create your brand.


Incorporate or not?

The first decision is whether to form a company and trade with limited liability or whether to operate as a sole trader.

It’s cheaper and less complex if you don’t incorporate.  You could simply trade using your chosen brand name and later, once your revenues justify it, set up a limited company.

If you’re not intending to use a company as your trading vehicle yet then there is no need to form a company to claim your desired name.  The way to claim rights over a name is through trade marks rather than company formation. So you would trade under your desired brand name, and then once you form a company later when you’re ready, you would still be able to continue trading under the same brand name. The name of the company does not have to exactly match your brand name.

On the other hand, if you do want to trade through a corporate entity (for example, to limit your liability even if your profits don’t justify the cost of incorporation) then it’s very cheap and quick to form a company using company formation sites online.  Note that your running costs will be higher than trading as a sole trader but that might be the price you’re willing to pay for limiting your liability.

For more information and advice about structuring your business, speak to a lawyer and accountant. Questions you will need to address are your tax position, and where to locate your business if your home base is in more than one country.  Online business gives you the freedom to work from anywhere so there may be advantages in locating your business in a particular jurisdiction. The position does depend on how long you will spend in each country.


Names and domain names

One of the earliest considerations for any business will be its trading (brand) name.

It is not widely known that it’s not possible to use whatever name you like. Just because a domain or company name is available to register does not mean it may be freely used for whatever type of business you like.

It’s necessary to identify a suitable name that

  1. Firstly, can function as a trade mark and
  2. Secondly, is legally available, meaning that someone else doesn’t have rights over it.

There is a lot to learn when it comes to naming so I recommend taking the time to focus on the Intellectual Property dimension as this is key not just to naming but to branding your business as a whole. IP is highly relevant for online businesses as there are many copyright and trade mark considerations to address.

One to one consultancy with a lawyer tends to be expensive and isn’t the best way to get the information you need on IP to create your digital product or set up your online business. Instead accessing Legally Branded Academy 2.0 gives you affordable, comprehensive information

This provides the advice any business needs whether at a startup stage or later as it grows and develops. There are essential templates to use included which ensures your online business is protected.

Branding is a large subject.  To come up with a brand proposition that’s compelling and unique involves working out your purpose, positioning, brand personality, values and more.  You’ll need to have a clear vision for your business and mission.

Do take time to think strategically about how you want to position your brand to get noticed. This might involve an ongoing process revisiting your ideas, particularly in the face of feedback from the market. So, if you’re thinking of engaging a designer or agency to “brand” your business and create your logo consider using some temporary designs initially until you’re very clear about your future direction. Possibly find a name you’re keen on and then get help from a branding agency.

There are a few other key areas you’ll need to focus on when setting up your online business, such as your website and contractual documentation which I’ll briefly touch on now.


Website and Documentation

Unless you’re getting a low-cost website with little functionality do take legal advice before engaging a web designer or developer. This is especially so if:

  • your website involves complexity
  • you are paying what represents a substantial sum of money for you.
  • You have strict timescales to meet.
  • You’re engaging web developers in distant locations sourcing them through platforms like Elance or People Per Hour.

To set yourself up for success make sure your formal agreement secures the necessary rights you need in the resulting website.

Buyer beware is the law’s approach. So, when it comes to websites and any other software development project the buyer has a lot more to lose than the seller if there is no written agreement in place.

As well as the basic contracts any online business needs, such as terms of business, website terms and privacy policies, there may be other contracts you need depending on your business model.



In conclusion, avoid doing things in the wrong order and your path to success will be much swifter.

Some people tend to waste time and money because they focus on branding and expensive designs and a website, before they’ve thoroughly thought through their product offerings and nailed their business model.

Setting up an online business is relatively straightforward and cheap to do.  You can have a basic website up and running for very little cost. That’s why it’s ideal to focus your money and energy on testing the market and properly thinking through your proposition.

Starting your venture on the right footing and developing your ideas correctly will enable you to get ahead far more quickly.

You should get Legally Branded Academy 2.0 or an equivalent way of understanding what you’re doing from an IP perspective from the very earliest stages because how to develop your concepts involves addressing intellectual property correctly from the outset of projects. That’s the way to ensure success and a valuable business.

International Trade Marks

international trade markTrade marks are your “badge of origin”, and serve to identify your products and services.  Without trade marks, it would be impossible to find the products and services we like and to avoid those we don’t. So, trade marks are tools enabling consumers to identify products and services they have enjoyed and want to buy again.

Trademarks protect the reputation and goodwill of a brand.

Any sign unique to your business may be registered as a trademark. The most commonly registered marks are words, logos, and slogans.


International Trade Mark Protection

There is no such thing as an international trademark. Trademarks are territorial, meaning you need to register in each country in which you intend to trade.

Trademarks give you rights in the country or territory where you register. For companies trading in UK or Europe, the first step will be to apply for a UK or EU trademark. Those businesses that purely trade in this country will just want to register a UK trademark. For example if you run a restaurant and have no intention of franchising your business in other countries, the UK is the only country that is relevant to you.

A UK trade mark registration covers the UK only. A European trade mark registration covers all 27 European Union countries in a single application, and the UK too while the UK remains in the EU.

Your first application to register your mark in the UK or EU or other territory, is treated as if you had filed it internationally because it gives you worldwide protection for six months provided you go on to apply to register in your desired countries within that timescale. So you get priority protection during those 6 months.

So, if you later decide to extend the scope of your trademark to other countries, it is possible to use your base UK or EU trademark as the first step towards registering in other countries.  You extend that application or registration to other countries, by designating your desired countries in a Madrid Protocol application if your desired countries are party to the Madrid Protocol. If the country of your choice is not party to the Madrid Protocol then it’s still possible to extend your UK application to that country, by making a direct application in those countries. A country that is not party to the Madrid system is South Africa.


The Madrid Protocol facilitates registration across multiple jurisdictions for those countries that have signed up to it. This offers ease of administration, cost savings, and flexibility. You file a single application and pay fees based on the countries in which you intend to secure protection. In one of the next blogs, I will explain which countries are a party to the system and will show you how to calculate the fees.

If you want a brand that is protected worldwide, the question is whether the name is available to register in your target markets in countries where you intend to do business.  That generally means in the country in which you are based and other countries where you will promote your goods or services.


There are two possible approaches to take when it comes to searching. Either do some searches before applying to register your mark in a particular territory, or simply take your chances and apply to register your mark in a territory and see whether the application encounters any problems. If a local trade mark blocks your registration then you might need to trade under a different brand in that country.

It is important to be strategic about extending your protection to other classes and other countries thereafter.


if you don’t protect your mark in countries in which you trade, you could find yourself in a situation similar to what happened in Plenty of Fish/Plenty More Fish.

Plenty of Fish, a well-established online dating site objected to PlentyMoreFish setting up a rival online dating site in the UK under a similar name.  They opposed PlentyMoreFish’s UK trademark application, arguing that PlentyMoreFish was riding off its reputation by setting up the rival dating site. They lost because they couldn’t show that they had UK customers and as they hadn’t protected their brand with an EU trademark they were powerless to stop PlentyMoreFish.

That situation would never happen inside a single country like the UK. There are passing off laws and other remedies which would enable business in Plenty of Fish’s situation to stop PlentyMoreFIsh by injunction or other steps. However, online it’s possible for this sort of scenario to arise unless you are vigilant about protecting your mark in countries in which you trade.

Best to cover off your home market and the important jurisdictions in which you trade.