Bizstartup.ie - NewsProtecting the value of your brand

Given the very real risk of abuse, the consequences of which can have a severe effect on both the value of a brand and revenue of a business, businesses should be vigilant in protecting their brand. Here are the steps that businesses can take to protect their interests.

Why register a trademark?

A trademark allows the seller to protect what's trademarked from use and/or misuse by competitors while building brand loyalty among repeat customers. It’s the best means of ensuring that you have exclusive rights to a particular brand (whether it’s a name, a logo or some other graphical representation). Trademark registration grants a statutory right, subject to certain conditions, to prevent others from using the trademark without your permission.  If a brand is not registered as a trademark, it will be much more difficult to succeed in an action against another party who may be using some or all elements of your brand. A trademark also creates value in the brand by conferring an exclusive right to authorise others by means of licensing to use it for the goods and /or services for which the trademark is registered.

What can be registered as a trademark?

A trademark is any unique word, sign, symbol, or name used to identify and distinguish the goods of one seller from the goods of another. From a branding perspective, the following are assets that can be protected: logos, names, tag lines and packaging. However, these assets can only be trademarked if they meet certain qualifications. A word or phrase that's commonly used or already connected with another product or service in the same industry cannot be trademarked. For example, a generic term like "search engine" can’t be trademarked, but a unique name, like Google, can be. However, if your name is generic but used in an industry not typically related to the meaning of the term, you may be able to trademark it. A good example would be Apple Computer.

As a general rule, you can trademark your business name if you use it when advertising directly to your customers. If you don't use your business name in direct communication with your customers, you probably can't because you're not connecting your name to your brand and its attributes. If your business name will be a large part of your marketing, you should consider trademarking it. Your logo and tag line are also good candidates for trademarks. The first litmus test: is it unique? What makes a logo unique is the combination of the symbol with the company name, their spatial relationship and the logo's colours. If your tag line is a unique phrase, it can also be trademarked.

Trademark application process

The application process takes around six months. An application form for trademark registration must be submitted to the Irish Patents Office (IPO). The application is examined to assess whether it meets the requirements for registration. The examination process includes a search of relevant databases to ascertain whether a similar mark has previously been registered. If this is found to be the case, then the Office will refuse to register the mark.  The examination also addresses other obstacles to registration such as, for example, whether the mark is simply a laudatory statement of a product's quality (ie "Top Grade") or a sign that has become generic within a particular field of commercial activity. These are among a number of grounds on which an application for registration may be refused.

If the application is accepted for registration, details of the mark will be published in the Official Journal. Within three months of the advertisement of a mark, any person who objects to its registration may send a notice of opposition to the IPO. Each side is then given an opportunity to file evidence in support of its case and the question of whether the mark should be registered is ultimately decided by a senior official of the IPO.

How long does a trademark last?

A trademark registration can last indefinitely provided the registration is renewed. Registration is initially for a period of 10 years (from the date of filing of the application) and it can subsequently be renewed every 10 years on payment of the renewal fee.

Register the related domain names

In order to maintain the protection of a brand, businesses should also register the domain names that are related to the brand. Domain names are registered on a first-come-first-served basis (subject to certain exceptions), and accordingly it is far better to seek to develop a brand that has not yet been registered as a domain name.

Registration of business names

Where a business trades using a brand that is not its own name, there is a statutory requirement that the business register the brand as a business name with the Companies Registration Office. While registration of a business name does not offer any immediateprotections for a brand, such registration does nonetheless provide evidence of the use of the brand that may be of assistance in any future proceedings.

Conclusion

If a business delays taking steps to protect its brand, it’s leaving itself exposed to abuse of its brand by others, whether malicious or otherwise. By registering its interests and putting appropriate agreements in place a business is in a far stronger position to protect itsinvestment in its brand.

Simon Hollywood (pictured) leads Leman Solicitors’ Corporate and Commercial Unit and specialises in advising emerging businesses