If you subscribed to my mailing list and received my Top 10 Tips to Exporting Guide, trademark registration was my number one on the to-do list.
In a previous role, I met and worked with many small and medium-sized businesses looking to expand internationally. Many businesses did not own their trademarks, and some did not understand what a trademark was. Therefore, they were not aware of the implications that they faced not having it, especially when exporting.
“Well lots of brands in my industry don’t own their trademark and they seem to be doing OK”. This is something that I’ve heard time and time again. What your industries peers do and what you do, is what will set you apart and get ahead. In the long run, it will save you a huge amount of money.
I appreciate that there is a cost involved in protecting your brand’s intellectual property and at times this can be expensive. However, the cost will be significantly higher if you have to take action against others to get back brand intellectual property. Be proactive when it comes to protecting your brands’ identity.
What Is Intellectual Property?
“Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce”. WIPO
There are different forms of intellectual property that includes patents, copyright, trademarks and design rights.
For the purpose of this post, I am going to focus on trademarks. This is because this is the most prominent
What Is A Trademark?
A trademark is a distinctive sign that identifies certain goods or services produced or provided by an individual or a company.
What Can Be Trademarked?
- Company name/designs/invention
- Company logo and font colours typeface
- Classifications that you will be operating under with the company name – eg clothing, handbags, perfume.
By registering your trademark means that you have the exclusive right to use them to identify your goods or services in a given territory. It also allows you to authorise others to use them in return for payment, known as licensing. This enables you to legally challenge those who may be infringing your trademark and for you to take action. Tatty Devine and Claire’s Accessorize is a great example of trademark infringement.
Not registering your trademark can create unnecessary financial risk, which could cost your business time, brand reputation, money and sales. The famous New Balance case is a good lesson for all.
International Trademark Protection
In a global world, ownership of your trademark is becoming ever more important as you expand into new markets. Many buyers, stores and distribution partners are requesting proof of trademark ownership before agreeing to do business with you.
The potential consequences of not owning your trademark could result in some of the following:
- Your products being stopped in customs and destroyed
- Your products being confiscated, removed from the shop floor and destroyed
- Someone local registers your trademark in the market and raising a legal challenge to stop you trading there
- Someone local registers your trademark and selling poorly made goods in the market under your name, causing band damage and loss of trust.
- Someone registering your trademark and selling it back to you for at an over-inflated price. This one in some markets in lucrative and a career maker!
Where Do I Start With Trademarking My Brand?
Start at the beginning and register your trademark for your home market where you will be actively selling your goods.
If you are UK based, you can register your trademark online through the Intellectual Property Office. A UK trademark costs start from £170.
You should consider getting professional legal advice to assist with your trademark registrations. Don’t cut corners and get your trademarks done on the cheap. When it comes to international registrations, it will only come back to bite you hard. Seeking legal support means having peace of mind that your brand is protected properly.
There is no need to rush out and protect your trademark for the world unless advised otherwise. It is worth putting together a plan and budget for securing your trademarks going forward.
What Types of Trademarks Are There?
This is a great way to register your trademark in 27 countries including the UK in one application. Applications can be submitted at EUIPO costs €850 and is filed in just one language. Once registered, your trademark can be renewed indefinitely every 10 years.
The UK is part of the European trademark, no confirmation has been given that this will remain after Brexit. You should secure your UK trademark as a separate application through the Intellectual Property Office.
Worldwide International Trademark
The Madrid International Trademark System is a cost-effective and easy way to register your trademarks worldwide. You can file one application and pay one set of fees to apply for protection in up to 116 countries.
Start off with trademarking the markets that you are actively selling in or looking to enter in the near future.
I Don’t Have Budget To Secure My Trademark. What Can I Do?
If money is tight, then there are other means of managing your brands’ trademarks. Legal experts can have a watch put on your name for markets that you want to manage your brand in. The watch will incur a fee per market and can be renewed on an annual basis. If anyone files an application for your name in a market, you will receive a notification informing you of this.
Consider this as a call to action. If it is a market that is important to your business, it’s time to get going and register your trademark.
There are some markets which have a reputation for registering trademarks in bad faith. Create a high-risk list and get a watch put on these markets. This is an alternative option if you don’t have a budget or you’re not planning to commercialise the market sometime soon.
Trademarking For The Future
If your business has expanded and developed products in other categories, don’t forget to update your trademarks for the new categories. You may find that your name has been registered for the new product category already. If so, don’t fear, seek legal advice.
Consider as part of the registration process of product categories that your brand may expand into in the future. Potentially protecting them now, will reduce your costs in the future.
What to Consider When Exploring Trademarking
- Always research your company name when starting a new business. Check to see if the name has not already been registered and in what categories.
- Don’t forget to do a worldwide check on your name. Whilst it may be free for one country, it may not be available for others.
- Assess the financial implication of this and if it is worth pursuing if the name has been taken.
- You may find that the name has been taken for different categories. This is fine, many businesses have the same name, for example, Guinness and Lulu Guinness and a coexistence agreement can be put in place if both parties are happy.
- Don’t forget to register your online as well as offline. Ensure you buy and secure all your domains in the relevant formats, .com, co.jp, .de. Customers have more confidence in buying from your website if you use the correct brand name format and country domain.
- If your domain has been taken, don’t panic. Try finding out how much it will be to buy it back or how long is left before renewal. Make a plan and set a budget.
- Get legal advice. Whilst doing it yourself online is great, consult a legal expert to ensure you have covered all basis. Markets such a China and the Middle East require more work on brand registrations.
- When approaching legal professionals, find out what their experience is of trademarking internationally. Not all legal professionals will have an international network to secure trademarks. There maybe markets where they have limited experience in securing trademarks. Get references and ask them what other companies in your sector they have done this for.
Below is a list of places where you can access further legal advice and information
- The British Library – IP Business Centre
- Bird & Bird
- Field Fisher
- Fox Williams
- China Britain Business Council – China specialist directory
For further information on trademark registration go to the Intellectual Property Office