A trade mark can be a valuable asset, and protection of ownership rights should be sought through registration. Mark O'Shea from our Commerce & Technology Team looks at this in further detail.
Businesses spend a considerable amount of time, effort and resources (financial and otherwise) developing goodwill in name(s), brand(s) and/or logo(s), whether at a corporate level and/or at a product level. Those names, brands and logos are a form of intellectual property and registering a trade mark, whether in the UK, EU and/or on a global basis, gives rights to the owner which are capable of enforcement through the courts.
Of course, there is a cost involved in applying to register a trade mark. UK trade marks are usually appreciably less expensive to apply for than, say, an EU trade mark or if you want broader global protection, but much will depend on the nature of the mark and the number of classes of goods and/or services that you are seeking protection in – trade mark registers are sub-divided into different classes of goods and services and the more categories you apply to register in, the greater the cost. Similarly, costs increase the more variants you apply to register of the same mark. It is always worth considering carefully how much protection is actually needed and should be applied for.
Many businesses are deterred from seeking registration due to the cost involved. However, you should bear in mind that:
- it is generally easier and less onerous to enforce rights in a registered trade mark than it is to bring a 'passing off' action in relation to an unregistered trade mark; and
- if you are contemplating a sale of your business or certain assets, a purchaser will often want the assurance of knowing you have gone to the trouble of registering to protect your intellectual property rights and that you have the certificate to prove it.
The Hargreaves Review of Intellectual Property and Growth (published May 2011) acknowledged the reticence of many SME's to register and/or enforce their rights due to the costs involved in doing so. With that in mind, the Review proposed the creation of a small claims track into the Patents County Court to enable more straightforward and cost-effective enforcement. No implementation date has yet been set but consultations are on-going.
Consequently, now seems like an appropriate time for businesses to review their corporate and product / service names, brands and logos, in addition to their broader intellectual property portfolio, and where appropriate to consider applying for registration.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.