An introduction to Trade Marks

This quick guide will provide an introduction to trade marks, how they work, and considerations for businesses working in international markets around branding and securing trade marks for your products and/or services.

What are Trade Marks?

Trade marks are a kind of registered intellectual property right which protect signs which designate brands.

These signs can include things such as:

• A company, product or business name
• Logos
• Colour (single or combinations)
• Shape
• Sounds (e.g. jingles)

What is important about these signs is that they are only used by you and tell your target customers or clients that the goods or services that they’re purchasing come from you. This is known as designation of origin. Trade marks are monopoly rights – which means that once you have a registered trade mark no one else can use that sign, or similar to brand their goods or services. This helps you build goodwill and reputation in these signs so that people look out for them when they are making purchasing decisions.

Crucially, trade marks are jurisdictional which means that they are only enforceable in the countries in which they are registered. As such, those operating in international trade need to have a trade mark registration strategy to make sure that their key brands are protected in the markets they enter into.

How Do I Utilise a Trade Mark?

Trade marks are perhaps some of the most important intellectual property rights for businesses. A business of any relative size will want to secure its key brands in the form of registered trade marks as a means of carving out their market position – and stopping anyone from encroaching on their unique proposition. The general steps for securing and using trade marks are as follows:

• Register key brands and signs as registered trade marks. Trade mark applications have to be carefully prepared in the correct classifications and with specifications for present and future use. In addition to this, expert analysis and clearance searches have to be undertaken to avoid registering a mark that would infringe on an existing mark in that jurisdiction – as well as confirm that the sign can function as a trade mark and not be refused by the examiner. With high value brands it is advised that you speak to specialists to make sure that your brand is registered with your commercial goals in mind
• Once you have your trade marks registered you will need to monitor the marketplaces in which you operate. In most cases, trade marks will allow you to enforce legal action against other parties who make use of identical or similar marks in identical or similar use cases in a much more efficient way than if you did not own the trade mark. This helps you maintain a unique appearance and appeal in your marketplace
• Being jurisdictional, rules around trade marks vary on a country to country basis. However, as rights they can be renewed in perpetuity and for relatively small cost. As such it is important to maintain a trade mark portfolio, making sure that renewals and use are occurring, so that your brands are secure for the future

What Happens Internationally?

International trade and expansion introduces a lot of interesting opportunities and risk when it comes to taking a brand into a new marketplace. It also presents a number of risks should you have not approached brand deployment carefully. A conscientious approach will mean that not only are your key brands secure in these jurisdictions – but furthermore that they can thrive.

Things to consider include:

• Do you have trade mark protection in these jurisdictions prior to launch? Some countries have “first past the post” registration systems meaning that the 1st person to register owns it
• What does your brand mean in this new location? Be wary of localisation and translation issues that might mean your brand is understood differently
• Make sure that you secure all the possible translations of your brand, especially if the country has a different visual language (e.g. Mandarin in China) this will potentially mean visual marks as well as word marks                                                                            
• Key to this is a robust approach to brand protection and awareness that a new market presents a host of new challenges for a brand which require a considered approach.

Case Study

A business is planning a launch in the Middle East for its pet products. It has a popular and established brand in the UK and Europe.

Using the Madrid Protocol it registers in key Middle East countries via the Madrid Protocol.

The launch is a success with the products making a big impact over the course of its first year. Later, a cheap competitor has registered a trade mark for an extremely similar pet food name – although it is written in Arabic script.

The trade mark dispute is difficult, and could have been avoided if all potential trade marks in this jurisdiction had been accounted for and registered.

Who are Virtuoso Legal?

Virtuoso Legal are an intellectual property specialist law firm, established in 2007 and based in London and Leeds. Virtuoso Legal have dedicated experts who are able to assist across the spectrum of intellectual property, from registering, commercialising and enforcing IPRs.

www.virtuosolegal.com   0113 237 9900