Depending on your business type, you might have the opportunity to take your trade mark overseas. This could come quite quickly in your business, or might be a step that you consciously take after trading in the UK for a few years first.
What does trading overseas mean?
When I say take your trade mark overseas, I don’t specifically mean that you need to set up a physical office or shop to be active. How about if your products are stocked by someone in another country. Maybe you sell online and find that you have an increasing number of sales in a particular country, or group of them. Perhaps you manufacture your products and use a factory overseas to do that. Do you visit and exhibit your products at international trade shows. All of those situations (and countless others) result in your business having an interest outside of the UK.
Brexit has meant that there are some unanswered questions about what will happen to any trade mark rights you have at a European level (see my blog post here).
However, several companies don’t have any rights beyond the UK. This means that you could be vulnerable to all kinds of issues when you take the trade mark overseas.
So what should you think about doing to protect your trade mark overseas?
- Check that the trade mark is available. You should look at whether there are possible conflicts with existing companies. And do this in each country of interest. Someone else might have earlier rights than you. Just because you are an expanding business, doesn’t mean you have automatic rights to use your trade mark overseas.
- If you are manufacturing in another country, you should have trade mark protection there. The most common trade mark issue with overseas manufacture is that products are copied in that country, and the company has no rights there.
- Protect the trade mark in each country you trade in. You might have a minimum trade rule for each country. So if you sell over a certain value in a particular country, then it makes the “hit list”. You should review this each year and every time a new business milestone occurs, such as securing a new stockist.
- If you’re attending trade shows overseas be aware of how far and wide your brand is travelling. Stockists, manufacturers, distributors (and those who would like to be your stockists, manufacturers and distributors) might decide to protect your trade mark “for you”. This can be a nightmare for investors as well as taking action in case of trade mark enforcement issues. Best to get in there first and be the clear owner of your trade mark.
If you would like more information or would like to discuss how I can help you protect your trade mark everywhere that matters to you, please get in touch.
There’s lots of debate about what makes a good trade mark. And the answer is that it depends what you’re trying to achieve with it. And who you ask/who is asking!
Branding/marketing advice for a good trade mark is likely to be:
From a branding perspective a good trade mark will be memorable as the main thing. You also want it to be clear to your customers who you are, as well as being clear about what you do/offer. Most of all, you probably want it to stand out from the crowd. In addition, I know some people think that it’s a great compliment to a brand if it is used frequently, or becomes synonymous with your product or service. Who doesn’t say “I’ll Google it” when they actually mean “I’ll use an internet search engine to find that out”.
Trade mark attorneys will say that a good trade mark:
Is also memorable and stands out from the crowd. Also you want to be unique in your business area. You don’t want to describe exactly what you do – so neither “Your Local Accountant” or “Get Mums Fit” would be considered a good trade mark from that point of view.
Ideally, you want your trade mark to be able to be registered. So a trade mark attorney’s advice about what makes a good trade mark will be that you need to choose one that will satisfy the requirements for registration. The Examiner at the trade mark office will decide if it can be registered as a trade mark. This means that they look at;
- Whether it can identify one business from another.
- That it doesn’t describe the goods/services offered.
- That it is not customary within the trade/industry.
You also need to make sure that it doesn’t conflict with anyone else’s existing trade mark(s).
These are all things to think about when choosing a name for your business or product range. If you need any help with choosing a new name, rebranding, or protecting your existing trade mark, please get in touch.
Trade mark registration seems to be on lots of people’s “to do” list. For most businesses a trade mark is a fair chunk of investment, especially in the early stages. Lots of people aren’t really clear what a trade mark registration gives them. And just as importantly, what it doesn’t. As a result, it often gets overlooked on that “to do” list.
So here’s a quick run down of some general pointers* about what kind of benefits and security you get from having a trade mark registration.
What you get with a trade mark registration:
- First of all, you get the presumed right to use the trade mark. In the country it’s registered in. On the goods or services it’s registered for.
- Then you also have the right to stop someone else from using the same, or similar trade mark. In the country you have it registered in. If they are using it on the same or similar goods or services to the ones you have it registered for. And there is a likelihood that customers will be confused.
- There’s the increased ability to ask for investment because you can legitimately say that you own the brand. Think of Dragon’s Den – the first question they ask is “do you own it”.
- You can license it to other people to use. Think of franchises, spin-off product ranges, collaborations.
- The ability to use it to raise finance for your business, e.g. by mortgaging it.
- Also the right to sell the trade mark as part of your business.
- You can use the ® symbol which tells other people that your trade mark is registered and warns them about your existence. A great deterrent.
- It can be used to object to similar domain name registrations that contain your trade mark, or something similar.
- You have the ability to use it to stop counterfeiters.
- Also, you can use it to register with customs authorities to help prevent the importation of counterfeit goods.
What you don’t get from a trade mark registration:
- Global protection. Registered trade mark rights are restricted just to the countries where you have a registration. If it’s not registered in that country, you’re not protected there.
- Every type of product or service is protected. Unless you’ve got a registration for them all. There is no “catch all” term like “merchandise”, you have to be specific.
- Other people copying your business idea, or simply running the same type of business (there are lots of clothes shops in the world for example). So long as they are using a different name, brand etc your trade mark registration won’t be able to stop them. Even if you are the first to the market.
- You won’t be able to stop people using descriptive words. For example, “Bargain Books” can still be used by everyone else to describe their bargain books, even if you have, say, a logo version of that registered.
If you have any questions, or would like help protecting your trade mark, either in the UK or overseas, please get in touch.
*Not all countries have the same laws, these are general pointers from a UK and EU perspective. If you have a query about a specific country please get in touch.