Developing an Effective Trade Mark Registration Portfolio

Some key aspects to developing an effective filing strategy apply to all types of intellectual property. You and your IP advisor should work closely together to:

  • understand your key markets now
  • identify how to maximise coverage
  • identify where you want to be in five years’ time
  • know what protection is time-critical for application
  • know which countries should be prioritised, and which can wait

Identify the elements that maximise protection by registration

Trade marks can be registered in many different formats with differing levels of scope of exclusive rights.  For example, use of a logo containing a word may infringe a standard character registration for the word where it would not infringe a logo registration also including the word.  Therefore, while a logo can be easier and cheaper to secure, it might not provide the best rights for your business.

Cover your goods and services as well as the law allows

Trade mark applications in most countries are filed into one or more of 45 different classes which group together similar goods or services.  For many products, such as “wine” or “shoes”, a single class will stand out as the right class for registration.  For other products or services, for example “camping equipment”, several classes might be involved. 

An experienced IP advisor will be able to help you develop a filing programme that is broad enough to cover your key goods in a cost-effective way, maximise your ability to sue for infringement, and avoid a registration so broad that it may be vulnerable to attack.

Make sure your key geographies are covered

Because trade mark registrations are only enforceable in the country in which registration is secured, you need to consider whether you should register your trade mark overseas.  If your business is likely to expand internationally, you may want to have the registration process underway to reserve your position on the Register for your key trade marks.  In some countries trade mark rights can only be secured by registration (such as China), or there is a significant risk of third party registration of international brands (again, China).

Your IP advisor will be able to work through filing schemes, such as claiming Convention Priority or using the Madrid Protocol International Registration, to maximise bang for your buck.

Keep an Eye on your Competitors

A successful launch is the end of the first stage – but you must keep on top of your market: do not rest on your laurels!

Regular review of your key markets and competitor activity will help alert you to other traders encroaching upon your business and trade marks.

A sudden bump in trade mark applications can be the first sign of a trader preparing to enter a new market, or expanding its range of goods and services in a way that may have some impact on your business.  In addition to your own review of market place developments, your IP advisor can craft special watching programmes to help identify when trade marks are accepted for registration in your key markets either lodged by named competitors, for a particular product or service range, or for trade marks the same as or similar to your key trade marks.

With this surveillance information to hand you can move swiftly to address any potential infringement of your registered trade mark rights.

Keep your registered protection up to date

The value of a good portfolio of registered trade mark rights is usually realised in a strong defensive position that allows your business to grow.  This ultimately results in a high IP valuation that increases the net worth of your business.

As your business grows, any new developments should be identified early and assessed for potential trade mark registration. An up to date trade mark registration portfolio will allow you to focus on retaining a competitive advantage of enforceable exclusivity.

While holding registered trade mark rights is not all about litigation, a robust portfolio of rights that are well filed and clearly claimed communicates to your competitors that you take your rights seriously.  The potential for an expensive Court case and costly damages awarded due to infringement of registered trade marks is a serious deterrent to many potential infringers.

A robust portfolio of registered trade marks can often warn off a large number of copycat businesses who would otherwise seek to ride the coat-tails of your success.

Be prepared to try again

As you review your business development and growth, you should keep your IP advisor in the loop.  If you find a path of action is not paying off, re-assess your options. Working with your IP advisor you can review earlier iterations of trade marks to identify the best way to leverage your registered trade mark rights for success, and avoid the unnecessary cost in retaining trade mark registrations which are no longer valid or needed.