To say that this year has been challenging is an understatement. The varying levels of lockdown have provided many with the opportunity, or forced some, to start or expand their businesses.
After deciding on the product or service provision and branding, entrepreneurs sort out formalities like incorporating the business into a company (or not), securing relevant domain names and considering how to reach their target customer base. Before going any further, it is important to consider protecting the brand, along with any other intangible assets (intellectual property, IP) associated with the business. Signs (names, logos, etc.), inventions and visual aspects of products can be protected under trade marks, patents and design rights, respectively. Trade secrets and some contracts fall under the umbrella of IP too. This article concentrates on trade mark protection.
Protecting the sign under which products or services will be provided, by registering it as a trade mark, is an important step in the business journey. Pre-registration checks provide an opportunity to assess whether there are any identical or similar rights that pose an obstacle to use and registration of the proposed mark. Once the registration process is complete, like any other registered IP right, a trade mark registration gives the owner an asset that adds value to the business.
The cost of registering a trade mark can put some off the process. However, as hinted above, there are advantages to it. Securing an early registration reduces the risk of rebranding after launch, as the process itself exposes potential conflicts. Having a registration does not provide the owner with an absolute exclusive right to use the mark; however, it is a good indicator that the risk of IP-related litigation will be low. This is even more important in technology-based industries, as most or all of the associated assets are intangible. This adds to the credibility of the business, an attractive prospect, especially when selling the undertaking or seeking investment or collateral.
I hear you ask; I want to register my trade mark, what do I do now? The first considerations are:
- What name/sign/mark do you use to sell your products or services?
- What goods and/or services do you sell?
- Where, geographically, do you operate your business?
In relation to the second question, it is important to focus on the current business priorities and those for the next three to five years. This information will help us prepare a comprehensive list of goods and services for the application, for present and future activities. This will help future-proof the protection and reduce the chance (plus the additional cost) of another application when business expands beyond the current sphere of activity.
In relation to the third question, we live in a global digital village and the concept of geographical boundaries may be beyond our comprehension. However, it is important to consider territories of interest, as it will help us prepare the appropriate filing strategy, taking factors like time of launch and budget into account. Once we have answers to these questions, we can help check to see whether the proposed mark is free for use. Then, we can devise a strategy for obtaining protection and exploitation so that businesses get the best value out of their trade marks.