Posted on Monday 25 June 2018 by Cruickshank Intellectual Property
A company puts a lot of time into building its brand so it’s important that it is properly protected. Everything from a company’s name, slogan, logo and packaging can be protected under trade mark law, as long as it is distinctive and adheres to trade mark guidelines. Registering a trade mark is the most effective way of protecting a brand against trade mark infringement. The term trade mark is used interchangeably with service marks and includes words, phrases, symbols and/or designs that identify the company’s products or services. (To find out more about what is a trade mark check out our previous blog)
Over the years at Cruickshank, we have witnessed the mistakes that people make when it comes to trade mark registration, especially when they choose to do it by themselves. From this we have compiled a list with some of the trade mark mistakes to avoid when it comes to the registration process and why it is always best to consult with a trade mark attorney.
1. Not having a distinctive trade mark
A company’s trade mark must be distinctive in order to qualify for registration and help defend against trade mark infringement. A trade mark application that uses descriptive terms to merely describe a company’s products or services is likely to be rejected in light of trade mark guidelines. Likewise, generic terms are ineligible for trade mark protection because they refer to a general class of products or services rather than a company’s brand. For example, if you are seeking a trade mark for a sandwich shop or café, the name ‘Delicious Bites in Dublin’ and the slogan ‘Fresh sandwiches– Fast’ are not likely to qualify based on current trade mark guidelines as the terms are too generic.
A company should choose arbitrary, fanciful or suggestive words and phrases that set the brand apart from other products or services already on the market. Alternatively, it can help to add a term that is unique to the brand. Not only will this be easier to protect with a trade mark but it will also prevent trade mark infringement, stopping competitors from using similar names and piggybacking on the brand’s hard work and reputation.
2. Not searching for similar trade marks
The Irish Patents Office and similar organisations worldwide recommend searching its trade mark filing database before applying for a trade mark. This includes searching for abandoned or cancelled trade mark registrations, or for exact or similar trade marks that have already been registered or applied for.
Trade mark law operates on a priority basis so the company that uses the trade mark first, or registers it first, owns it and takes priority over later users. Failing to conduct a thorough search can lead to serious consequences later if the trade mark is already registered. It’s important to note that trade mark infringement can also happen if a similar mark is used, so we advise consulting a trade mark specialist to make sure phonetically and conceptually similar marks, including plurals, are also searched. Trade mark infringement works two ways – not only does one need to protect their own brand but they have to make sure they don’t accidentally copy someone else’s.
Note: Under the trade mark guidelines and legislation, tag lines and logos are also enforceable trade marks so don’t forget to search and clear these as well.
3. Not using the trade mark in commerce
It seems obvious but the trade mark that is registered is the trade mark that should be used. Rebranding or refreshing logos may require re-registration of said trade mark. Moreover, according to trademark guidelines, once registered the mark needs to be used within a set period of time, otherwise the trade mark registration could be cancelled. Knowing your trade mark rights is therefore of utmost importance not only in terms of achieving trade mark registration but also in order to avoid trade mark infringement.
4. Incorrect description of goods and choosing the wrong trade mark classes
When filing an application, it is vital to describe the products or services the trade mark will apply to on the application form. The terminology used should be clear and precise, using common commercial terms as the trade mark will only be registered for these products or services.
All goods and services are places in classes to assist in understanding what is covered. For example, if you sell men’s boots, you wouldn’t register your logo under the class for paper boxes (even if your trade mark appears on the shoebox). While that example is obvious, choosing the correct class can become difficult and confusing as there are subtle differences. Using the same example, boots worn at work for safety purposes are in a different class then fashion shoes or boots. For these reasons, it is always best to speak with a trade mark attorney who will be familiar with all of the trade mark guidelines. They can ensure that the requirements are met and help to protect your business against trade mark infringement.
Furthermore, while it might be tempting to list every product or service imaginable on the application, this could be expensive as generally the cost of an application will depend on the number of classes covered. While a company needs to broaden its scope and think about product expansion beyond its current offerings, they do need to have an intention to use the mark on the specified goods or services to ensure their application is validly filed. Keep in mind, however, if your application contains false or misleading information, your company risks having its trade mark revoked.
5. Using the ® or™symbols incorrectly, and incorrectly assuming you have trademark rights
The ‘™’ symbol is often called a “poor man’s” or “common law” trade mark, often favoured by US companies. Its reach is limited to the geographic boundaries within which the company operates. However, it doesn’t mean the organisation has any rights or could take action against someone for trade mark infringement. It is often incorrectly assumed that if a ‘™’ symbol or copyright symbol is added to a package or website for example, you have secured trade mark rights.
While it may help to identify you, do not consider it to be your trade mark; to protect the trade mark, you must register it. Once a company has filed a trademark application and received notification of registration, it can use the ® symbol. If you see a ™ symbol, do a search to see if it is registered as companies can often forget to update packaging. When it comes to trade marks, it’s better to be safe than sorry.
6. Not enforcing trade mark protection
A company or business is responsible for enforcing its own trade mark. While the Irish Patents Office makes every attempt to ensure no one registers a similar trade mark, they do not know who your competitors are and thus cannot always prevent the possibility of trade mark infringement. Authorities such as the European Intellectual Property Office (EUIPO) do not refuse to register a mark just because there is already an identical or very similar registration already in place.
The owner of the trade mark is ultimately responsible for bringing opposition proceedings against an offending party. A company therefore needs to develop its own intellectual property strategy to safeguard its trade mark and should be vigilant to ensure no one infringes on their trade mark. Such trade mark infringement can result in costly legal proceedings and the loss of protective rights. Again, we suggest speaking with experts which when dealing with trade marks is not your accountant or solicitor necessarily but a trade mark attorney.
A mistake by a company can derail the trade mark registration process and lead to increasing costs, in both time and money, as well as cancelation or revocation of your trade mark rights. Filing a trade mark application is complex and requires a knowledgeable person to ensure the paperwork is completed properly and trade mark guidelines are adhered to. Engage with a trade mark attorney who understands trade mark law and can guide you through the process. Once your trade mark is registered, vigilance is key to safeguarding your company brand.
If you would like to speak with any member of our Cruickshank team contact us today and we will be happy to schedule a meeting to discuss your trade mark rights and requirements or any other IP matter.
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