I have spent the past 20 years helping clients with their trade marks and brands. That work is focused on the sports, retail, F&B and tech sectors. Sometimes I work directly with inhouse lawyers. As often as not though, I am advising non-lawyers: founders, CEOs, FDs and Commercial Directors. It is fair to say that, as smart as many of them are – lawyers and non-lawyers – very few of the clients I work with would class themselves as IP specialists. That is, of course fine, and that is what we are here for: we provide specialist advice to give our clients an edge and help them make their businesses more valuable.
While trade mark law can be deeply complex and nuanced, here I want to share some simple principles that may help non-IP specialists to “level up” their trade mark and brands game.
1. Use it or risk losing it. Filing a trade mark and achieving registration is not the end of the story. In the UK and EU, once it is registered you have a five year grace period during which it is immune from attack on the basis of non-use. After than point, if you are not using it, it may be vulnerable to cancellation. Other countries have very similar rules.
2. Trade marks are territorial. That means your trade mark will cover a specific territory and will not have effect outside it. That is usually a country but it can also cover a particular bloc, the EU trade mark being the most prominent example. Yes, this can get complicated. For example, the UK’s departure from the EU creates complexity and how online use is dealt with can be tricky. Understanding the basic territorial nature of trade marks though is important and this is why we encourage our clients to focus on what their key territories are.
3. You are covered for the goods and services you specify. There are 45 different classes of goods and services. At one end of the spectrum, your mark may be registered simply for clothing, which is in class 25, or “sporting services” – class 41. At the other end, it could be registered for a huge array of different goods and services, spanning multiple classes. While you may possibly have certain rights to use the trade mark to prevent people from using a similar mark for goods or services other than those specified in your registration, the starting point is that you are covered for what you include.
4. Trade marks operate on the basis of similarity. When looking at whether someone is infringing your trade mark, or they are infringing yours, you need to think about how similar the marks are, and how similar the goods or services are. Other factors come into play but those lie at the heart of the matter.
5. Owning a domain name does not mean you have the right to use it to do business. Whether you have the right will usually come down to the trade mark position.
All of that is hugely simplified, and there are usually numerous other factors that may need to be considered in any particular case. Getting a handle on those five principles though can help take you a long way forward.