Nicola McNeely, Partner, Corporate & Commercial
I recently heard that some “shop’s own” products are identical to their more expensive counterparts, even to the extent that they are packaged in the same factories. So why is it that so many of us don’t head straight for them?
A classic case of brand dominance.
It’s where every business wants to be: at the top of their game, feasting on the merits of years of meticulous planning and reputation-building. But getting there and staying there can be problematic. It’s pretty easy for businesses to make potentially serious (dare I say catastrophic?) mistakes along the way.
And none more so than during the brand concept/product concept and business formation stage. Most people hope that the name they’ve chosen for their business/their brand/their new product name is 100% theirs and can’t be used by anyone else. They rush straight to a brand designer and spend a fair amount of money on the creative work without first checking that the business name/brand/new product name does not infringe other people’s rights. The only way of guaranteeing this is to (1) do proper trademark searches before launching a new brand/new business/new product range, (2) get the names checked before instructing your brand designers to do their creative work and (3) check whether you are able to register it as a trademark to protect your rights.
My experience is that very few design agencies actually tell clients to get trademark searches done and to take steps to get advice on how to protect their new brand/business name/product name. I have had to advise clients to cancel launches in the past because they could not use the new brand or design work without infringing other people’s rights. It can be a nightmare if you get this wrong.
Some businesses don’t register trademarks at all; others register the wrong name or register in the wrong classes of goods and services. Some businesses take a scattergun approach to brand protection because they do not have a proper brand strategy for building, protecting and defending that brand. It is really important to think carefully about where your business is now, where you want it to get to and what is absolutely core from a brand protection perspective. Many people spend a fortune registering domain names and trademarks in every different possible iteration without considering the alternative of strong and wide trademark protection on their core brand.
So why does all of this matter? Unregistered, or badly registered trademarks leave companies open to all sorts of financial threats – from another business trading on the goodwill in your product or service to court orders stopping it trading under a particular name.
Many clients are horrified to find out that if the client doesn’t protect their business name by registering a trademark and another business does register a trademark including the client’s brand name, the client can be stopped from trading under their business name by the other business even if the client has been trading for longer than the other business. This is because we work on a “first to register” system for trademarks, not a “first to trade” system. An example would be XYZ Limited trading in 1960 and XYZ Cars Limited starts trading in 2008, XYZ Cars Limited registers a trademark over the same goods/services XYZ Limited provide. XYZ Cars Limited can stop XYZ Limited from using the name XYZ Limited!
The last thing any business needs at the moment.
So, my advice is to check whether you have trademarks in place. Then review your registrations if you have any. Regularly review and update if necessary (you may expand your protection into new areas, or buy other businesses which need protection) and, above all, make sure that you have a clear strategy on how to protect and defend the brand; this is crucial to ensuring that what’s yours is, and stays, yours.
For further information contact Nicola McNeely. T: 029 2047 4481 E: n.mcneely@capitallaw.co.uk
