• 06 Nov 2024
• •
• 4 min read

Top Tips for Enhancing your Trade Mark's Value

In light of the government’s recent acknowledgment that all IP-rich businesses have a central role in kickstarting economic growth (Feryal Clark, Minister of Intellectual Property, at British IP Day 2024), it seems to be a fitting time to remind businesses of the potential value of their Intellectual Property and, in particular, their trade marks.

Trade marks play a vital role in determining a business’ identity and development of a competitive edge. This article highlights the brilliance of trade marks and emphasises the importance of nurturing these assets from origin, and throughout their lifecycle. By strategically managing trade marks, businesses can realise remarkable commercial rewards, and below we provide our essential tips to make the most of those benefits.

• Research for existing marks: conduct a thorough search of what trade marks already exist (including in key target territories) to ensure that your mark cannot be confused with any other marks, and to avoid any opposition. It is sensible to search by keyword, phrase or image. Additionally, always check if your preferred domain name is available.

• Meet the criteria for registration: your trade mark can include words, sounds, logos, colours and a combination of any of these. Crucially, a mark must be distinctive and it cannot be offensive or describe the goods or services it will relate to or be misleading. The most valuable marks are the fanciful ones, because they are entirely innovative words, like Google, Pepsi and Netflix. Trying to register anything that does not fit these requirements, will be a waste of time and money.

• Decide on ownership: know exactly who you want to own the trade mark – is it yourself personally, your business, a parent company or a subsidiary, as transferring ownership at a later date will incur further costs.

• Register your marks: as this will mean that you have the exclusive territorial rights to use the marks as the owner, and because registered marks are much easier to protect, enforce and exploit than unregistered ones.

• Choose your classes carefully: keep your list of goods and/or services specific to what you will use the trade mark for (covering all current and foreseeable future uses), as this will likely mean that your marks will be excellent value for money (the more classes= more cost, and the more potential issues down the line if you do not use all of the classes).

• Invest in the right type of mark: often look at protecting word marks first. A trade mark registration for a word or sequence of words covers the use of those words irrespective of the font, colour, size, or configuration of the words. However, if perhaps your mark is descriptive or relates to characteristics of the goods or services applied for, consider and protect your unique logo instead of, or in addition to, the word mark.

• Consider protection abroad: register your trade mark abroad sensibly and strategies according to your current and foreseeable future target markets (more territories =more cost). Seek local guidance to prevent any negative connotations from your mark.

• Use your trade marks in all listed classes: trade marks establish trust and goodwill and boost customer loyalty, so make them work for your business. If you do not, you risk diluting the value of them and ultimately, they may be cancelled for non-use (in part or whole) at 5 years’ post registration in the UK. It is important to also keep good records of your use and gather it each year and store it in case you are later asked to prove your use. For instance, retain website screenshots, packaging, labels, brochures, invoices.

• Record renewal dates: registered trade marks last for an initial period of 10 years (for the UK at least) but can potentially be renewed indefinitely, so renew registrations in a timely manner to retain your rights.

• Manage your marks: review continually whether your trade mark protection adequately covers your business as it evolves. Does it cover any new brands, products, services, and/or markets?

• Proactively protect your marks: plan how to, and budget realistically to, actively police your trade marks and swiftly take enforcement action against any infringers. Always use the ® and ™ symbol to alert third parties that your trade mark is protected and to function as a deterrent for potential infringers. Be aware that if you ignore infringement, you risk your mark losing its distinctive quality. Further, often active enforcement acts as a deterrent in itself.

• Avoid infringements: respect the IP rights of others. Trade mark disputes are usually costly and lengthy and they can be extremely damaging to a business’ reputation.

• Exploit your marks: utilise these assets, as they have the ability to generate wealth for your business. For example, consider licensing your trade marks or entering into franchise deals with third parties in return for a royalty share or eventually selling them (registered and valid marks are always the most attractive ones to investors, and thereby the most lucrative for you). However, never allow others to use your trade mark without having the proper written agreement in place first.

If you would like more information about trade marks, or any other intellectual property matters, please contact us on 0800 2800 421 or get in touch here.

Disclaimer

This information is intended for general informational purposes only and does not constitute legal advice. We recommend seeking professional advice before taking any action on the information provided. If you would like to discuss your specific circumstances, please feel free to contact us on 0800 2800 421.