To many entrepreneurs and business owners the issue of trademark registration or brand protection is only considered late in the business cycle and in many cases only once problems (such as trademark infringement or passing off) have arisen. In my view this is attributed predominantly to ignorance on the part of the business owner. Entrepreneurs tend to put all their energy and focus on the business idea rather than deciding on and protecting a brand name. As long as they have registered it as a domain name or company name they think they are protected and secure. Unfortunately registrations of a name at Companies House are merely for the purpose of setting up a separate legal entity give you zero protection as far as the trade name is concerned. Domain name registrations also give you no rights to the name. The only way to protect and secure rights to a name is to get it registered as a trademark.
Choosing the correct company name, trading name or product name and ensuring that it is available for use and registration is as important as the business idea itself. Branding is an integral part of any business. It is what enables a company to distinguish their goods and services from those of their competitors. Equally importantly brand identity and awareness is at the forefront of consumer behaviour and spending.
In most cases building and growing a business is about building, growing and developing a trademark, trade name or brand name. They go hand in hand. Would you knowingly invest a lot of money creating, marketing, advertising or promoting a product or service which is not protected or which could give rise to potential trademark infringement actions or lawsuits? Astute business people and investors would certainly not. Most investors will not touch a business unless the trademark or brand name is protected.
Choosing the correct trademark and ensuring that it is registered and available for use is absolutely critical for the long term success of any business. You want to create your own brand identity and do not want to be confused or associated with a competitor. You also want to ensure that your trademark is properly protected to stop others trying to benefit from your success. After all, third parties will only try a copy or imitate your business once it is successful.
Choosing a suitable trademark or trade name or product name involves two separate and distinct steps. The first is to ensure that the trademark is inherently registrable. The second step is to ensure that your proposed name is not the same as or similar to any earlier trademark applications or trademark registrations which cover the same or similar goods or services.
In order to be acceptable and registrable a trade mark must:
- Be distinctive for the goods or services in relation to which it is or will be used. In other words they must be capable of distinguishing your goods or services from those of others
- Not describe your goods or services or any characteristics of them in any way. In particular it must not describe kind, quality, quantity, nature, purpose, value, geographical origin, or any characteristics of your goods or services is concerned.>
- Not be generic, deceptive, misleading, offensive, contrary to law or morality
- Not be a specially protected emblems (such as national flags, coats of arms, hallmarks, official sign, and state emblems);
- Not be identical or confusingly similar to any earlier trademark applications or trademark registrations for the same or similar goods/services
The most common mistake I see in practice on a daily basis is that people want to register terms which are non-distinctive or descriptive. Today alone I had enquiries to register terms such as Business Funder, Sunshine Holidays, Fuel For You, Snacks (for food products), Motivation (for motivational coaching services), Designer Boutique, Good Apparel (for clothing), Performance through Nutrition, Cheshire Window Cleaning. All of these names are descriptive and cannot be registered as trademarks. The rationale behind this is to ensure that words or terms required by traders to describe what they do must be kept free for use by everyone and cannot be the subject of a monopoly. Descriptive, generic or non-distinctive terms are therefore free to be used by everyone.
The whole, function of a trademark is to distinguish your goods or services from those of your competitors. A trademark therefore needs to be distinctive in order to be registrable. Invented words are highly distinctive and make the best trademarks. It therefore comes as no surprise that a significant number of multinational companies choose invented words as their trademarks, trade names and brand names. A few examples include: Accenture, Nike, Kodak, Sony, Facebook, Xerox, Adidas, Viagra, Toshiba, eBay – just to name a few. The advantage of trademarking highly unique and invented names is that they will be easier to register globally. Once registered they also provide stronger protection.
Once you are satisfied that your trademark, trade name or brand name is sufficiently distinctive to qualify for registration the next step is to ensure that it does not conflict with any prior trademark applications or registrations. This will require searches to be conducted of the relevant trademark databases. I would also recommend that you conduct thorough web searches to ensure that the said name is not in use. This would reduce the risk of a conflict with a third party who may have acquired common law rights to the name by virtue of prior use despite the fact that they had not registered a trademark for the name.
Registering a trademark is a priority for any business. Do it as soon as possible. In fact I often recommend registering the trademark even before a company is incorporated. That way you are protected from the outset and it paves the way for you to start and grow your business free from the commercial risks associated with not doing so.
Even the biggest multi-nationals make mistakes. Microsoft has recently been forced to rename SkyDrive after a UK court ruled that it infringed the trademark ‘Sky’ which is owned by BskyB. Fortunately it has the financial resources to cover the costs associated with litigation, paying of damages and rebranding. However, most companies don’t have such deep pockets and could quickly be driven out of business if faced with similar problems.
Trademark registration is relatively inexpensive. Register your trademark – it is an investment and not an expense.