Is a Trademark necessary for your business?

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Effectively protecting your intellectual property rights (“IPRs”) is one of the most vital decisions a start-up business can make.  Unfortunately however, taking the appropriate steps to legally protect the brand and goodwill of a business is all too often the last thing on the mind of eager entrepreneurs.  Even experienced business persons are prone to misunderstanding the scope and effect of IPRs. Undoubtedly, one of the most misconceived IPRs is that of trademarks.

Pooling research from an Azrights poll, as well as analytics from search engine suggestions, we have compiled a number of common questions and trends in order to ascertain firstly: which aspects of trademarks are generally misunderstood, and subsequently to explain the legal and commercial advantages in exploiting your IPR by acquiring trademarks.

If you are contemplating whether a trademark is of relevance to you or your business, you may find the following useful.

General  confusion

From our research it became apparent that there is a general confusion regarding trademarks and how they operate.  Many queries we received asked what trademark law, infringement, dilution, protection etc actually is.

Also, there was a general confusion as to what trademarks actually protect and how they differ from copyright, why a trademark is important or necessary at all, concerns about how much registration is going to cost, and several queries relating to which trademark symbols to use (either ™ or ®).

Questions, opinions and concerns regarding trademarks
More specifically one point which became clear from our research is an obvious do-it-yourself attitude with regard to trademarks, in particular in relation to trademark registration.

For example, common requests from business start-ups are for templates for contracts , licencing agreements, applications and assignments, cease and desist letters and letters of consent.

It seems people would rather take the obvious risks involved in copying a sample precedent obtained for little cost, or registering a trademark themselves, in order to avoid paying for legal advice. 

DIY and risks

If you are intending to register your own trade mark then I imagine the key motivation is to economise.

However, Trade mark law is complicated and registering a trade mark yourself will inevitably entail risk.

First, you need a thorough search to be done of the registers to clear your brand name before registering.

People who neglect this first step can quickly end up with an opposition to their mark by other trade mark owners and dealing effectively with oppositions involves a significant amount of time and resources.

So if you were originally aiming to save money, when faced with an opposition, you may be forced to seek legal assistance, legal advice to clarify your chances of success and possibly representation.

But if you can minimise the occurrence of an opposition by instructing a proper search first then this could actually save you money in the long run.

Beware also that searching is not simply a matter of checking the registers. Trade marks are organised by categories of goods, so if you see someone with the same name as your trade mark then that may not be the end of the game.  An experienced trade mark attorney can guide you within this field.

What can I or can’t I register?

From our survey we saw that people are often confused about what they can and can’t register as a trade mark (for example letters, figures and logos).

Conversely, some people may think that they can trade mark any word, but that is certainly not the case.

There are a number of restrictions on the types of trade marks or words that can be registered. Not knowing the limitations of trade marking could mean the registry office throws out your application.

The value of your trade mark

Another area to be aware of is that trade mark applications have to have the right scope.

They should be tightly drafted and should respond to your current and future business (i.e. they should reflect the potential growth of your business).

In this respect, you will need to know which categories of goods and services ‘Classifications’ are relevant to your business and from the thousands of descriptions within a classification you will need to assemble and adapt the descriptions to your business, which is certainly not a straightforward task.

This is because your descriptions and classifications essentially determine the scope of your trade mark, so getting them right is fundamental , as the value of your trade mark is intrinsically linked to this exercise.

Badly drafted applications end up not being worth the paper they are written on, and essentially defeat the purpose of pursuing legal protections in your business at all.

Also, some people register their logos on the misapprehension they are obtaining substantial rights in the word elements.  To avoid future misunderstandings, you should be clear from the outset about what rights you will be obtaining in a registration.

More on this next week…