Three Essential Steps to Prevent Your New Brand Being a Financial Disaster 

Imagine the scenario – after months of planning and research, everything has come together for your new brand. Days of brainstorming have led to inspiration, and you’ve thought of a great name.

There are three essential steps that your trade mark attorney will recommend you take before your product is launched to the public, all of which can be done for a relatively small investment.

Failure to take any of these steps could mean you are left with an intellectual property problem, more commonly known as thousands of pounds in legal bills, leading to your brand being scuppered before you’ve really started.

1. Check

Make sure you can use the trade mark.

Is your trade mark or something similar already registered for the same or similar goods to your own or in use by a competitor? Perhaps you are entering a crowded and competitive market. Be aware of the consequences of entering that market unprepared; you could find yourself at the wrong end of an infringement action.

Do your research but be aware that checking trade mark use on the Internet via a Google search is not enough. Trade marks are often registered in advance and may be held for a period of time before being put into commercial use. So don’t conclude that you are free to use and register the mark just because you didn’t find it when you searched the Internet. Alternatively, you may find use of the mark on what you see as different goods and think that confusion will be unlikely, but your competitor may not share this view.

There is no substitute for a full trade mark search that looks at the UK Trade Mark Register to check for all confusingly similar marks. Your trade mark attorney will be able to conduct such a search and provide you with a comprehensive and reasoned opinion, based on current case law, on whether you should go ahead with your chosen brand.

2. Protect

Make sure no one else can use the trade mark.  

Firstly, check with your trade mark attorney whether the name is registrable.  A trade mark must be distinctive and cannot be descriptive of the goods concerned or their characteristics, or the Intellectual Property Office will not allow registration.  If you have a cosmetics brand, you won’t be able to register such marks as FACE WASH, MY BODY SCRUB, or SMOOTHEST HAND CREAM – these are simply common or descriptive terms that you cannot prevent anyone else from using.  Bear in mind that descriptive terms cannot easily be recalled when a consumer comes to buy your product.  A strong brand is one that you can protect and is memorable.  You ideally want consumers to commit to your product (and therefore your business) from the start, and they cannot do that if they struggle to remember your trade mark.  

Protect your chosen name by registering it in respect of the correct goods.  Your trade mark attorney will advise you how to navigate the pitfalls of the registration procedure and take care of the application every step of the way.  

Once registered, you can take action against other parties who copy your name.  Imitation is not flattery and will cost your business money if you don’t do something about it.  Going back to our cosmetics example, what if someone else copies your name and sells a poor-quality product that damages someone’s skin?  The consequences of confusion with such an outfit and your resultant loss of reputation will cause damage to your goodwill. 

3. Monitor

Make sure you look after your trade mark. 

Registration of your new product name is not the end of the story.  Trade marks are valuable assets, and their value can decrease through inaction on the part of your business.  Once successful businesses grow, they amass a portfolio of trade mark registrations for their products.  Such careful business planning and acquisition of assets reflects well on the company’s balance sheet and these days is a must in order to attract savvy investors. 

To monitor your trade mark, your attorney will recommend a watching service.  This will continually sweep the trade mark registers, so that you are informed if another business applies for a mark the same as or similar to your own.  What’s more, you can be informed at an early stage and approach the later mark holder to request they withdraw their application.   The sooner action is taken the better, ideally before the owner of the later mark invests heavily in their branding or launches the competing product. 

Not everyone registers their name as a trade mark.  You should, therefore, monitor your competitors and look out for usage at trade shows and exhibitions.  If another party is using your mark, don’t try to stop them yourself but note or take a photo of what they are doing and pass it on to your trade mark lawyer.  Look through trade and industry blogs and magazines for potential infringements and, if discovered, have your trade mark attorney contact the party involved to request they cease use of your trade mark before too much damage is done to your brand.  If consumers are confused, revenue will be diverted elsewhere. 

We’re here to help you avoid these unwanted consequences. To check a potential new brand, register your trade mark or for help with trade mark enforcement, please find contact details on my web profile here, or email us at gje@gje.com.