Tag Archives: trademark

Brand Strategy Is Essential For Success In Business

I recently wrote an extensive piece Brand Strategy Why Every Business Needs One on my personal blog.

Brand strategy is one of the most important issues to deal with if you want to create a business that grows in brand value and delivers more leads and opportunities.

We’re developing a methodology to support our clients to create their brand strategy and it’s important to take a fresh look at what you think “brand” means when considering this piece and the videos here.

Brand, branding, intellectual property, trade mark, business design – these are all very much misunderstood as terms, or people don’t even know what they mean. Yet these are really important issues for a business to take on board whether it’s starting up, scaling or looking to exit.

In the blog post and first video, I explain what is involved in working out your brand strategy.

Don’t assume bigger businesses all have brand strategies because many of them don’t have one – particularly tech companies as they focus all their attention on the product.

Uber is an example of what happens when you don’t have a brand strategy. While the business is a success and has even reached unicorn status, its lack of attention to brand has caused numerous problems. In the second video, I go into Uber’s case in more depth.

If you want support to craft your brand strategy so as to build brand value, and attract more leads and opportunities then do get in touch. We can help you whether you’re a start up, scale up or a business looking to plan your exit.

Intellectual Property Rights – Frightening?

I was speaking to a designer recently who said that people find IP rights very frightening.

That intrigued me. Why fear IP? Is it that you fear what you don’t understand? Is it that IP is a nuisance perhaps?

Whatever the reasons for this designer’s comment the reality is that IP is part and parcel of business. You need to be mindful of IP all the time, whether you’re starting a new project or business or growing or exiting a business.

It’s Possible It’s Not Your Intellectual Property

The fact that it’s possible that something you assume is yours is regarded by the legal system as not yours is a difficult concept to grasp perhaps. That’s because IP often resides within something else. At it’s simplest you may own a book but you don’t own the copyright in that book. It belongs to the author or the publisher. Similarly, you may own your website in the sense that it’s your site, but not necessarily own the copyright in its designs and functionality. What this means is that you can use it for your business but if you try to licence valuable parts of the design or functionality to others in order to generate a new income stream you would be prevented from doing so because you don’t own the copyright and designs in it.

Questions that arise in relation to IP include:

What type of IP is it?
How should you protect it so it can be yours?
What should you do to turn your idea into IP that you can own?
Is it essential to keep your idea secret so you can own valuable IP?
Are you infringing on other people’s Intellectual Property?

What Is Intellectual Property?

Intellectual property (“IP”) is an umbrella term that describes a range of rights in intangible assets, such as:

- - - Copyright: in various works like photographs, words, music, logos, and software.
    - Designs: rights in the shape of goods like ipads, or bottles, or in the surface design of materials such as wallpaper.
    - Trademarks: rights in packaging, names, slogans, and logos.
    - Patents: over an innovation which was previously unknown, like the bagless Dyson vacuum cleaner.

IP rights are territorial, which means you are generally protected in the countries in which you register them. For IP rights that arise automatically, such as copyright, you will have wider protection worldwide thanks to international treaties between countries.

Also, there are useful measures you can and should take in other countries to better protect your assets.

Owning Intellectual Property

To own intellectual property rights it’s necessary to take the right actions in relation to your ideas. That’s how you avoid discovering that your ideas become someone else’s intellectual property. It’s important when commissioning someone to carry out certain types of activity that results in new IP to have the right agreements in place.

Otherwise, you could find that:

your logo belongs to the designer who created it.
your website is not yours to do with as you like

Due to the IP default rules, it’s all too possible if you don’t know the right actions to take, to find that you pay for work to be created, but that you don’t own the rights to exploit it.

The biggest trap to avoid is finding that your idea for business software becomes the IP of those who develop it.

Avoid Infringement

It’s necessary to think of IP in two ways. Firstly, whether you will be infringing on someone else’s intellectual property rights. Secondly, whether someone else is infringing on your rights.

Doing searches of various kinds and registering rights is key to protecting inventions and names. As it’s necessary to protect your turf against copycats, disputes can arise all too easily, so you need help to manage and resolve them, even if that doesn’t involve a last resort of using the court process.

Typically, not owning copyright to something important in your business is undesirable. This could result in the sale of your business falling through.

To protect IP involves implementing a range of legal agreements, not just when you’re setting up a new website, or licensing your IP or selling products and services online, but also as you grow the business. It becomes even more important with growth of a business to have good agreements in place that protect your intellectual property.

Protecting a new name, software and other assets against copying of all kinds, or an invention that could be patentable are reasons to deal with IP. It’s what makes your business valuable.

So going back to the question I started with, whether IP is frightening, it’s not IP that is the problem so much as ignorance of something important in business.

We are still at the early stages of the digital economy, but the more digital our lives become the more essential it is to get a good understanding of IP and protect your business. Start by having an intellectual property assessment and advice. We provide this at Azrights.

Brand Name Dispute

Brand name disputes occur all too frequently because the trademark registers are increasingly cluttered and it can be difficult to find available names. You may be found using a name for one purpose, but as soon as you use it for another purpose you could actually be facing a brand name dispute.

When you use a name or other brand symbol that someone else claims to have a better title to, or if you find someone using confusingly similar branding to yours and want to challenge it, you have a dispute to deal with.

As it is not widely appreciated that it is necessary to check the trademark registers before using a name, brand name disputes are one of the most common ones we see. For example:

A client secures their desired domain name, sometimes spending thousands of pounds, only to receive notice that its use infringes on someone else’s trademark rights. The rights to use of a name stem from trademarks not from domain or company name availability.
If a domain name is registered that is deemed to be a registration in bad faith, then you could be challenged to return the domain to its rightful owners. For example, even if you have managed to buy a domain name for the name cocacolaclothing.co.uk for your online clothing business it does not mean you are entitled to use that name to sell your line of clothing.
A logo is registered as a UK trademark, but an EU trademark owner believes it infringes on their word trademark and sends a cease and desist letter requiring the withdrawal of all products bearing that logo.

Sometimes someone may simply be using their own name in the business, but this may conflict with a registered trademark. For example, if your name is Paul Smith and you are a fashion designer, you would have a potential dispute to deal with if you decided to set up shop as Paul Smith, given that the trademark rights of the famous designer Paul Smith in fashion and clothing would block you.

Resolving the dispute

Brand name disputes usually take one of three forms:

Either the dispute is in relation to registered trademarks – these may involve opposition to a trademark application or a cease and desist letter threatening court proceedings.
Brand name disputes can also occur if someone is using a name but hasn’t registered it as a trademark. In that case, they would argue ‘passing off’ and possibly threaten court proceedings. Or if you have applied to register a trademark they may either oppose your trademark application based on their earlier rights or apply to cancel your registration if you have already registered the mark.
Domain name disputes – now whether or not the brand name is a registered trademark, and no matter how strong or weak your position may be, the starting point for addressing any brand name dispute is to get specialist advice so as to decide how best to respond.

You may need to change your name and will need to use someone who both understands brands and names. It is so important to use a trademark expert who ‘gets’ branding rather than simply asking a brand agency to help you. Leaving the legal dimension till after the choice has been made could expose you to a further dispute, or leave you with a name that can’t uniquely belong to you.

Visual Identity Design – Social Media

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I totally get that the logo must be used in a consistent way (because, for example, you’d risk losing your trade mark if the logo you’re actually using is different to the one you’ve registered). But why post a consistent and uniform colour theme on social media – what does it achieve?

Being a trade mark specialist I always look at brand from the perspective of what can be protected and therefore I like a strong visual hammer, like the bull that I had added to my old branding before I rebranded to the current look, because you can protect it and then by consistently using such a symbol you can signal your identity without even using your brand name logo. Think of the Rolls Royce or Mercedes Benz symbols for example.

What can go wrong if you’re not then consistent with the way you use your registered symbol is evident in a trade mark case between Lacoste and Crocodile in New Zealand. These two are often locked in a dispute over their Crocodile logos. So, when Crocodile International spotted an opportunity to apply to revoke Lacoste’s trade mark they jumped at the chance. Lacoste had not been using a consistent crocodile design.

In its defence, Lacoste argued that it should not lose its trade mark for lack of use because while it didn’t use the crocodile logo in the form it registered it, it did use the trademark in different ways and therefore it was still using the trademark. However, this broad argument that any use of a crocodile was the use of their registered crocodile trade mark was effectively claiming a monopoly over the concept of a crocodile. The court said no, that’s too broad and revoked Lacoste’s trademark.

The same concept applies in the EU. Once a trademark is registered, if it isn’t used in exactly the form in which it is registered it can be revoked after 5 years’ of non-use.

So, it goes without saying that if you have any registrations you should use your marks in the form in which they’re registered. If you’re then using a symbol such as the crocodile symbol in Lacoste’s case, in a consistent way, you keep your registration alive, and if a competitor makes cynical use of a similar symbol which confuses people into believing that it’s your identity that is being used then you can take effective action to stop them. They don’t need to be using an identical crocodile logo for you to have a strong case against them.

Use of Colour

When it comes to colour, although in principle, a colour combination and even a single colour can be a trade mark you need to be able to prove that the colour or colour combination is, in fact, distinctive of your business, by producing evidence that the public recognise that colour as identifying your goods or services. This is not easy to do, so colour trade marks are rare.

In practice if you can’t protect a colour why would you want to use it as the way you’re recognised on social media?

Restricting yourself to using a small number of brand colours and fonts on social media so you’re recognised by those colours and fonts seems to me to be rather like using a descriptive name that is too generic to function as a trade mark for your brand. There’s no point trying to get recognition by such a name, much better to use one that you can protect if you want to associate it with your brand.

Some people say that it would be jarring if you were using pink colouring on a post on social media and then they visited your website and found altogether different brand colours. Really? Would they be so surprised unless you had trained the market to expect all your visuals to be in your brand colours?

I personally question the wisdom of using an identifier for my brand that isn’t capable of protection. If I love colour and want to make use of the full range of colours on social media then why not?

I’ve read a lot of books about brands and branding including major academic works, but nothing I’ve read so far has persuaded me that it’s necessary to restrict oneself to just using one’s brand colours on social media. It seems there was a time when “brand” was all about image but that is no longer the case. Maybe the notion that everything you do, even on social media, needs to have a uniform look and feel emanates from that era?

I’d love to hear from readers if you know of any authoritative source that discusses this question of consistent use of brand colours everywhere including on social media.

In the meantime, I’m inclined to believe that the important issue is to ensure that your messages, content and use of logos or similar visual identifiers that can be protected are ‘on brand’ rather than trying to create a uniform visual imagery by way of colours on social media.

However, I am not a designer. Until someone points me to something that persuades me otherwise, I intend to not set rules around the use of colours and fonts for my social media team to follow.

Different views from others

The general view from people who responded to my question was that a deliberate strategy is needed, even if that strategy gives you scope to use the widest range of colours.

As one person put it, your logo will partially inform how you show up, but there’s lots more that goes into how you define your brand and form a part of your brand strategy (tone of voice, style guide, etc..). One person or business may take a strict purist approach another may be more flexible depending on the level of importance you put on how strong you want your brand to be. Strong brands tie everywhere they show up back to brand elements. It’s totally possible to use a variety of style approaches (graphics, colour photography etc…) that work with your logo and form your overall identity but needs to tie into how you set your brand and thereafter be consistent with it.

Another individual said that the beauty of sticking within your brand colours is that you are leaving a psychological imprint on your ideal customers mind, meaning that every time people see a colour that’s similar to yours, they think of you because you are already renting a space in their head. Effectively you are owning that colour in their mind, even if you don’t officially own it as a trademark! If you use too many colours, you’ll lose that imprint completely.

Yet someone else thought that using colours that aren’t consistent with your brand values simply dilute your brand, which dilutes your credibility.

I tend to question everything. I don’t follow the conventional in anything I do, and I know that there are a lot of people spouting “truths” about brands and branding who haven’t necessarily questioned things to find out whether the truth behind what they say belongs to a different era perhaps– namely the era when brand was all about image?

In the meantime, I say why not use the full range of colours on social media? Why put yourself in the straight-jacket of your one or two brand colours? What are you trying to achieve?

It’s the notion that there needs to be some sort of strategy about colours and typography that I’m challenging. The content and use of logo and visual hammer I totally understand. I just don’t know that there needs to be any rules around colours for social media.

If you’re a Coca Cola who might well manage to get the colour red that’s one thing. But most small businesses are never going to be able to trade mark a colour and so why try to become associated with colours? I think I’d understand a brand’s messages just as well if they didn’t use the same consistent background colour on their social media updates.

At the end of the day if you can’t stop a copycat passing themselves off as you then why store up problems for yourself by making yourself identifiable in a way that you can’t protect and stop copycats emulating?

Someone else then said that consistency leads to invisibility. Branding best practice of old placed a heavy emphasis on following the rules to the nth degree. It was all about logo clearance zones, grids, font tracking ratios, colour profiles and margins. A creative’s efforts would be judged not against imagination but administering the holy guidelines.

Fast forward to today and consistency has been replaced by accessibility.

Identities need to function across a spectrum of environments and anticipate the developments on the horizon, hence the trend of logo simplification. With consumers’ limited time and attention spans, brands need to proactively interrupt patterns of content consumption by switching up the creative on a regular basis. How many times have you followed a brand, intensely, on social media, then a few months later find yourself tuning out? The consistency is counterproductive and leads them to becoming invisible.

Nevertheless, this person did go on to say that this doesn’t give brands a licence to dish out unpredictable creative at will. You need a system that has ‘gears’; a series of levels underpinned by a common design theme. You can design your identity to be wildly inconsistent yet consistent at the same time through the use of common themes. I think if I rebrand again this is the approach I will want my designer to take.

This discussion has got me thinking, what if the branding identity work that was done for clients began by making strategic decisions about what designs to create and use so as to be identifiable AND legally protected for those elements? Really intellectual property is too late to the party when it comes to branding, yet in today’s digital environment, given the difficulty of finding available names to use, surely it should lead the brand identity design thinking? Just a thought for you to consider.

Brand Management – What It Means For Your Business

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Branding is essentially about clarifying who you are, what do you do and what differentiates you. It’s about a lot more than a logo and visual identity.

As mentioned in my post on Branding Strategy last week a brand is a promise that tells customers what they can expect from you. Having a great product or service is crucial and it goes without saying that you need to give great customer service too.

Why Brand?

A brand is necessary but not sufficient. Marketing works better if you have a strong brand. The brand transforms the customer’s product experience. It’s the brand that lets the world know what to expect.

Your brand is also a key component to engage and motivate employees. The brand provides a buffer and a cushion. It’s the most valuable intangible asset your business creates as it grows and succeeds.

Branding is an art and a science. Marketing and branding strategy depend on how creatively and originally strategies are conceived and crafted. The hope is to improve the odds for success. It helps to have a consumer mindset and to be able to interpret marketing trends.

Why Management of Brands Is Necessary

When you look at brands and how some have fared – such as Yahoo, Myspace or Kodak – based on what is done to them, it’s obvious that management of the brand is going to play a big part in its continuing success.

If we come back in 10 years’ time will the successful brands of today – Apple, Amazon, Facebook, Google, Netflix – still be successful? It will depend on how they’re managed and what is done to them.

Brands that innovate and stay relevant don’t die or fade with the passage of time. They never stand still and are always striving to move forward in the right direction. The brand needs to be managed properly to create meaning and differentiation.

Big businesses have brand managers whose function is essentially to maintain brand equity. That’s how they can reap the benefits of strong branding.

Brand management is built on a marketing foundation and focuses directly on the brand and how that brand can remain favourable to customers. Like most areas of life brand management has been altered by the internet and social media, if for no other reason than the fact that consumers can now talk back at brands. They’re no longer subjects that are at the receiving end of marketing messages crafted by the company. Their response to those messages itself alters the communication in ways that the brand had not intended.

The Brand Manager’s Role

A brand manager within a large organisation has responsibility for ensuring sales of a brand. The brand manager has the discretion to do whatever is necessary to secure sales, whether that involves changes to the product itself, its price, the places where the product is sold, how it is promoted, packaged and generally the entire brand proposition.

The brand manager will co-ordinate with various teams across the organisation to implement their strategy and thus promote more sales. Whether the task involves packaging changes, creative designs, marketing campaigns, IT to enhance the website, legal for regulatory or intellectual property issues such as brand name clearances, the brand manager will draw in the necessary skills to achieve their goals. Their role impacts the bottom line in a measurable and visible way.

The Brand Manager Understands the Brand Landscape

The brand manager makes it their job to understand the role of each department. If, for example, the brand manager decides to alter aspects of the brand, such as its name or visual identity to achieve the desired outcome of increased sales, they are not going to take risks such as of the product infringing on existing trade mark rights. It would be an embarrassing and costly mistake to allow the brand to suffer by ignoring basics of trade mark law.

That’s how the brand is cared for and nurtured to success in large organisations.

When it comes to the small business end of the market, the business owner is the one who needs to fill the role of the brand manager and herein lies the problem. The business owner will invariably lack the understanding of branding and the part that various disciplines need to play to secure success for the brand.

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

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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.

Niche

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

Firstly, can function as a trade mark and
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.

Conclusion

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.

Opposition to a UK Trade Mark

People often ring us up when they receive a note of threatened opposition to their trade mark application so I thought it might be useful to give an overview of the UK Intellectual Property Office’s opposition process.

The UKIPO provides a number of guidance documents about UK oppositions which provide detailed information and advice about all aspects of the opposition process. Rather than duplicating those notes, I want to give you a short overview with weblinks to the relevant UKIPO information.

What is an opposition about?

All UK trade mark applications are published by the UKIPO for a period of two months (extendible by one month). Publication allows third parties to oppose registration if they consider that the UK mark should not proceed to registration.

There are many grounds on which you can oppose the registration. A common reason is that the published mark is confusingly similar to an earlier mark owned by you for the same or similar goods or services.

However, you can also oppose a UK mark if you consider that it should not have been accepted by the UKIPO: for example, if the published mark is descriptive of the goods or services or if it was filed by the applicant in bad faith.

For more information on the UKIPO’s website about oppositions, click this: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section

Outline of the opposition procedure:

The main steps in a UK opposition are as follows:

Usually, you will contact the applicant asking them to withdraw (or limit) their application under threat of filing opposition. Failure to do this may lead to you later losing costs even if you win the opposition.
You can oppose a UK mark by filing Notice of Opposition (Form TM7) before the end of the opposition period. This form sets out your opposition claims.
The applicant then has 2 months to reply by filing a Defence & Counterstatement. This is usually a denial of your claims.
If a Defence & Counterstatement is filed, each side is given 2 months to file its evidence. First, you have 2 months to file evidence in support of your opposition (e.g. evidence of the reputation or use of your earlier mark). Then, the applicant will have 2 months to file evidence in defence of its trade mark application.
When the evidence has been filed, the UKIPO asks if either side wants to have an oral Hearing. This is held before a Hearing Officer at which you or your lawyer will have the opportunity to argue your case in person. If neither side requests a hearing, the UKIPO will decide the matter based on the written evidence and legal submissions which have been filed.
Within a few months, the UKIPO will issue its decision, upholding or rejecting the opposition either in full or in part, and awarding costs to the winning side.
Either side can appeal the decision of the UKIPO.

What happens before filing opposition?

If you (or your lawyer) become aware of a UK trade mark application which you believe should not be registered, it is usual to contact the applicant requesting that they voluntarily withdraw their application, in whole or in part.

This is important because if you do not do so and you successfully oppose the mark, the UKIPO may penalise you on costs (i.e. you may forfeit some of the award of costs). You can extend the 2-month opposition period by an additional month if you apply to the UKIPO before the end of the initial 2-month period. This is done by filing a form TM7a for which there are no official fees. For more information on filing a TM7a click on this: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.3.

Filing a Notice of Opposition:

Notice of Opposition is filed by means of Form TM7.

The standard official fee is £200. It is also possible to file a Fast-Track Opposition (TM7F) for a reduced official fee of £100 where you rely on limited grounds of opposition.

Click on this https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.13 for more information about Fast-Track oppositions.

You can claim a number of different grounds of opposition in the standard Notice of Opposition (TM7). These are divided into two broad categories:

A. – if you believe that the UKIPO should not have accepted the UK mark for registration. This might be because the UK mark is descriptive, generic, a standard term in the trade, or if you believe it was filed in bad faith. These are called Absolute Grounds of opposition.

B. – if you believe that registration of the UK mark would be in conflict with your earlier trade mark rights (or other rights such as a design or copyright). These are called Relative Grounds of opposition.

Most oppositions are filed because the opponent is the holder of an earlier trade mark (UK mark, EUTM, or International mark protected in the UK) and registration of the later UK mark would be in conflict with the earlier mark.

The standard grounds (Relative Grounds) on which opposition are normally filed are:

Likelihood of confusion: you claim that the UK mark is the same or similar to your earlier mark for the same or similar goods/services such that there is a risk of confusion among the relevant consumers.
Reputation grounds: you claim that your mark enjoys a reputation in the UK (or the EU if it is a EUTM) and the use of the UK mark would take unfair advantage of or be detrimental to the repute or distinctiveness of your mark.
Unregistered marks: if your mark enjoys goodwill and reputation in the UK then regardless of whether it is a registered mark, you can oppose the later UK mark if you can prove that use of the UK mark would be likely to cause consumer confusion (in legal terms, that it would amount to passing-off).

For detailed guidance notes on how to complete the Notice of Opposition, click here:https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.4.

What happens after the Notice of Opposition has been filed?

The UKIPO will transmit the Notice of Opposition to the applicant who is given 2 months to respond by filing a Defence & Counterstatement (Form TM8). If no defence is filed, the UKIPO will reject the UK mark and costs may be awarded to the opponent.

If the applicant files a Defence & Counterstatement (Form TM8) within the permitted period, the UKIPO will forward it to you. For more information on the Defence & Counterstatement, click here : https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.6.

If the parties should decide to enter into discussions after opposition has been filed, it is possible to defer the next steps in the proceedings (including the filing of the Defence & Counterstatement) by requesting a 9 month cooling-off period. This request must be made, by both sides, before the deadline to file the Defence & Counterstatement by filing form TM9C. It is possible to extend the cooling-off period to a maximum of 18 months (if the parties file a TM9E before the end of the 9 month period). For more information about the cooling-off period, click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.8.

The evidence rounds in a trade mark opposition:

Your evidence:

After the applicant has filed its Defence & Counterstatement, the UKIPO will allow you 2 months to file your evidence in support of your opposition. This is factual evidence and not a legal argument.

The most common reasons for filing evidence are:

if your earlier mark is registered for more than 5 years, you will normally be required to file proof of evidence of the use of your mark in the UK (or in the EU if your earlier mark is a EUTM). For more information on proof of use, click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.10.
If you claim a reputation for your mark, you will need to file evidence of your reputation in the UK (or in the EU if your mark is a EUTM).
If you claim that your earlier mark enjoys a goodwill and reputation in the UK, you will need to file evidence of your reputation in the UK.
If you claim that your earlier mark is a well-known mark, you will need to file evidence that it is a well-known mark in the UK.

Evidence is usually provided in a Witness Statement which is a statement of the facts which you rely on in your opposition. Supporting evidence (e.g. sample invoices or examples of advertisements) is attached to the Witness Statement as exhibits. Usually, the evidence can be filed with the UKIPO by email (and a copy must be sent to the applicant).

For more detail on the preparation of and the contents of a Witness Statement, click here: https://www.justice.gov.uk/courts/procedure-rules/civil/rules/part32/pd_part32#17.1.

For an example of a Witness Statement (bare-bones only), click here: https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/311793/completedwitnessstatements.pdf.

If, however, your earlier mark is a recently-registered trade mark such that your mark is not yet subject to the use requirement (i.e. the requirement to prove use of marks registered for more than 5 years), you may not need to file any evidence because, in these circumstances, you would be simply relying on the legal rights arising from your trade mark registration. In that event, you would not file any factual evidence and, instead, you (or your lawyer) would later just file legal arguments in support of your opposition.

The applicant’s evidence:

The applicant will be allowed 2 months to file any evidence it wishes in defence of its UK trade mark application. The UKIPO will forward a copy of your evidence to you (or your lawyer).

The decision of the UKIPO:

After both sides have had an opportunity to file evidence, the UKIPO will ask each side if it would like an oral Hearing. If neither side requests an oral hearing, the UKIPO Hearing Officer will decide the case based on the documents and evidence that have been filed in the proceedings and after giving each side the opportunity to file legal submissions. The Hearing Officer allows 2 weeks for filing legal submissions. The decision will normally issue within a period of 2 months thereafter.

If either side requests an oral Hearing, the UKIPO will schedule a hearing, which is usually by video conference or a physical hearing in London or Newport. For more complex cases (such as cases with cross-examination), it is common for the parties to be represented by a barrister; otherwise, the parties are usually represented by their solicitor or attorney.

For more information on hearings in opposition proceedings, include the oral main hearing, please click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §6.

Cost awards in a trade mark opposition:

The general rule is that the winning side is entitled to an award of costs. The UKIPO uses a scale of costs in order to decide how much money to award the winning side. For more detail on the award of costs and the scale of costs awards, click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §5.

As a brief summary, the current scale of costs awards provides:

preparation of evidence: £500 – £2000
preparing a Witness Statement and considering a statement of the other side: £200 – £650.
preparing legal submissions: £300 – £500
preparing for and attending an oral hearing: up to £1300 per day of the hearing, capped at £3300.

Appealing the decision of the UKIPO Hearing Officer:

Either side can appeal the decision of the UKIPO hearing officer. You can appeal to the Appointed Person or to the High Court. The Appointed Person is a senior lawyer appointed by the Government and their decision is final and unappealable. Alternatively, you can appeal to the High Court, the judgment of which may itself be appealed to a higher court. For more information on appealing a decision of the UKIPO, click here:https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §7.

So, the starting point if you are facing an opposition is to review this information and then decide whether you want to get an expert involved to give you an opinion and act for you or whether you prefer to withdraw your application and try for a different name.

When Does a Start Up Need to Register a Trademark?

Every time you create a product, service, or business, you need a brand identity for it. Without a doubt, the most important element of most brands is the name.

The law protects names through trademarks, not copyright.

It is not possible to claim copyright in a name, even if the name is one you made up.

Start ups often wonder whether they need to spend the money to register a trademark. Some wonder why it’s not enough to have registered a company or domain name. Yet others have heard of unregistered trademark rights being acquired through use, and wonder why they should not just use the name without bothering with any trademark registrations.

Company and Domain name registrations are insufficient

The short answer to whether company or domain registrations are enough is no. Domain and company names do not give you the necessary rights you need in a name. The fact that they are available to register does not mean you may use them for any purpose you like. You still need to establish whether anyone has trademark rights in the name you’re intending to use as your brand name.

Trademark registration is the way to protect a name, and get the necessary rights you need in that name. It is not a good idea to rely on unregistered trademark rights in the brand name in which you will be building your brand equity.

What is a good name?

A good name will help you to build brand value and to successfully secure trademark registration in the word. But to pick a name that works involves more than meets the eye at first.

As well as conveying the desired personality characteristics, sometimes across world markets and in multiple languages, it’s essential that the brand name be legally available and distinctive.

Often a name is the first issue you need to consider before beginning work on designs, websites, and marketing materials.

Should you register the name?

It all depends on how important the name is to you. If you’ve found a name you are excited about and want to use long term for your business, then you should immediately register it as a trade mark, before you do anything else. That’s the way to establish ownership rights to a name.

If you are not that bothered whether you can use the name long term or not, then don’t worry about trademarking. Once you’ve established that you are not infringing on anyone else’s rights, just go ahead and use the name.

Conclusion

So, when you’re starting a new business, pick any name based on whether your desired domain name is freely available to register. Don’t spend too much on getting an identity sorted for your business either. The focus should be on finding a suitable niche and positioning for your business and testing it.

You can have more than one niche, but best to move forward one niche at a time.

So, initially focus on getting the business off the ground. If your business is viable and works, you can rebrand (by which I mean getting a visual identity in line with your brand values) once you’ve found your feet.

At that time, you could even pick a new name, so you can save if you’re willing to choose a temporary brand name to use as well as temporary designs in the early days.

On the other hand, if you have coined a really inventive name, and like it, or don’t want to have the hassle of a rebranding exercise later, then, of course, you should invest in the name by properly protecting it with a trademark.

Trade Names or Business Names as Trademarks

Quin & Donnelly was a well-known and successful fashion design partnership in Ireland which was founded more than 30 years ago when the pair were fashion students.

Their collections had been sold for more than 15 years by retailers including Brown Thomas and House of Fraser when a dispute concerning their brand name Quin & Donnelly brought about the death of the brand. As the Times reported in 2014 Fashion duo’s fight ends in brand death.

The reason for mentioning the case is to emphasise the importance of registering a trade mark to protect the brand value in your name and the brand equity you generate. There are so many ways in which failing to take basic steps concerning trademarks can cause problems for a business and this is just one example.

The designers had registered their name as a business name (on the register of Business Names, which has now been abolished). However, they had not registered it as a trademark. They only applied to register it as a trademark in 2009.

However, their Irish manufacturer, Sonole Designs objected claiming rights in the mark, and the ruling, published by the Irish Patents Office in 2014, indicates that the duo were refused permission for the exclusive use of the trademark following a dispute between them and the manufacturer of their clothes.

The Patents Office, which rules on trademark conflicts, found that a trademark application by Donnelly and Quin in 2009 made without the knowledge of the clothes’ manufacturer would amount to “passing off” [common law tort used to enforce unregistered trade marks] if it were granted.

Apparently, all goods sold under the Quin and Donnelly brand since 2002 were made by Sonole and the Donegal company had invested significant funds to help to expand the business and generate new customers. By doing so, it had “earned rights” in the business’s good name.

Quinn and Donnelly had worked with this manufacturer for eight years.

Distinction between trademarks and business names

At this point, it is worth considering the distinction between trademarks and business names briefly.

A trademark is a distinctive sign or indicator used by a business to identify its products or services to consumers. It is a sign informing consumers that goods or services originate from a particular source, so they are able to distinguish it from similar products or services in the market.

A business name is the name under which a business trades. So, if you are a sole trader or have a registered company name you could choose to be known as something else. For many businesses the trading name will be the same as their registered company name and will also act as their trademark. It all depends on how the names are used in practice.

To be able to function as a trademark a name must meet certain criteria, such as to not simply describe the products or services of the business. If a trade name is used as a designation of origin to inform consumers where a product or service is coming from, then it is being used as a trademark.

This seemed to be the case with the fashion designers in the dispute. However, as happens all too often in practice, the designers were under the impression that their registered business name was sufficient. They had not realised they needed to register it as a trademark.

In such cases, the best advice is to register the trademark as soon as trading begins. If Quin & Donnelly had done so, they may have had a different dispute with their manufacturer, but not one that would have spelt the death of their successful brand possibly.

International Trade Marks

Trade 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.