Doing Your Homework
This is part 1 of 3 in our series on How to Create and Retain the Best Registered Trade Mark Rights for your Business.
Part 2: Developing an Effective Trade Mark Registration Portfolio
Part 3: So You Want to Sue
As with most achievements in life, the first steps towards success are preparation and planning.
Registering a portfolio of trade marks without a clear business plan can be costly and may not give your business the advantage that you need. Before undertaking steps for trade mark registration, the impact of each trade mark element for your business and your goods and services should be carefully considered from the stance of where your business is now, and with a view to your plans for the future.
Having a good idea of what you want to achieve will help you decide the best way to invest in valuable and long-standing trade mark rights through registration.
An experienced IP advisor will be the best person to provide an overview of your trade mark position and assist in the formation of a strong trade mark portfolio. But there are preliminary steps you can and should consider when choosing potential trade marks for your business.
An Early Stage Checklist
- Is your trade mark going to help your business stand out from the crowd?
- Is your trade mark free to use in your key markets?
- Can you register your trade marks in your key markets?
- Will the right entity own the trade marks and enable you to maximise your value for money spent in registration?
Make it distinctive!
An effective trade mark will allow your business’s goods and services to stand out from the crowd. As a rule of thumb, the more distinctive your trade mark, the wider your area of exclusivity and the better you can prevent other similar trade marks being used.
A trade mark that leans heavily on descriptive references to a particular product will be more limited than a wholly invented and distinctive brand. While these trade marks could be registered, you may find you cannot stop other traders using the similar branding with the same descriptive reference.
This assessment should also encompass all the ways you might use trade marks in your business, including sub-brands, logos and by-lines.
Is your trade mark free to use?
Having settled on what sounds like a good trade mark, you should check that it is free to use before you commit to it.
Trade mark searching is specialised and it takes experience and knowledge of case law trends to provide a good assessment of risk. Therefore, a trade mark search conducted by a proper advisor is the first and most valuable step in creating a trade mark portfolio.
A search of the Register will alert to any risks of trade mark infringement through existing registrations, but must be broad enough to alert to possible infringement of similar trade marks covering similar goods and/or services, without being so broad that the information is unwieldy and hard to analyse.
A trade mark search should also cover a variety of market place sources to assess the risk in countries that recognise unregistered trade mark rights (often called “common law rights”) developed through use, such as including New Zealand, Australia, the United Kingdom and the US. Having a good knowledge of the tests applied in case law is essential to assess the risk that a trader with a reputation may be able to stop your use and possibly successfully take action under fair trading legislation or for passing off.
Can you register your trade mark?
Once the first hurdle has been overcome, and a trade mark is found that is free to use, the next step is to establish if the trade mark is registrable.
Most IP Offices will object to a trade mark if it is not capable of distinguishing your goods or services, or if it is so similar to an existing registration or application that consumers may be confused.
If you have conducted searches before application, your IP advisor will already be able to advise you on these points.
Will the right entity own all IP created?
You cannot benefit from rights which you do not own, so it is vital to ensure that you understand the chain of title.
Often the bright mind behind a business will need to bring in a team to help actualise the vision. This may involve people outside of the business or may result in IP developed before any formal company structure is in place to hold those rights.
From the outset, the terms on which parties work together should be clearly understood, communicated, and documented. This should include consideration of about copyright ownership for any artistic material, including logos, that may need to be assigned to the entity who will own the trade mark registration. Further, whether the registered owner is an individual or a company should be decided early on and any necessary licences or written authorities settled and agreed at the outset.
Expenditure at the early stages in proper enforceable contracts, assignment of rights, and setting up the correct ownership structure can avoid expensive problems down the track.