Protecting your brand
March 12, 2009Most businesses invest a great deal of time and effort into creating a brand which will appeal to its customers and set its products or services apart from the competition.
It is therefore for this reason a business will not want anyone else to ride on the back of that hard work and cost by pretending to be associated with it and thereby lowering its reputation.
How then can a business best protect its brand?
Get it right from the start
The most common misconception that is “out there” is a business owner registering a company and/or business name and possibly a domain name and then thinking that they then “own” that name - then, based on that information the business owner designs their whole branding initiative in and around that name, purchasing signage, letterheads and then launching into an expensive marketing campaign.
However, often the unfortunate business owner promptly finds him/herself at the wrong-end of an infringement of intellectual property action - remember that protecting your own intellectual property is important, but, equally important is not infringing the rights of others!
Carrying out simple searches to identify whether there are any registered or unregistered marks already in existence can save the business owner a great deal of time, money and effort.
You should therefore carry out searches at CRO, the Patent Office and possibly with Trade Mark agents as well as internet searches for unregistered marks in order to see whether your proposed brand name is already being used by others.
Trade marks
A trade mark is any sign which can distinguish the goods and services of one trader from those of another and the strongest form of protection for a brand is via a registered trade mark.
If the mark is not registered then protection is still afforded if others copy or use it via the tort of “passing-off”, subject to various criteria.
You will often see a brand with the letter “TM” following it and there is nothing stopping an owner doing this as it is simply identifying the brand as belonging to the business and the owner is merely asserting rights in it.
Where you have to be careful is if you use the ® mark as this denotes a registered trademark. It is an offence to use this symbol with a trade mark which has not actually been registered.
Domain Names
A domain name is not recognised as an intellectual property right under Irish law - however that said, the Courts have been willing to use the law of Passing Off and Trade Marks to deal with domain name infringement (as well as cyber squatting etc). It is therefore always advisable to ensure that domain names cover all brands and any variations of them.
Concurrent use
This is a difficult one - as an example, you could have two companies where one has simply beaten the other one to the registration of the domain name whilst one has the registered trade mark and with both having legitimate rights over each.
There can often be very expensive Court actions launched without proper thought going into the matter resulting in two sides being entrenched against each other - therefore, before the missiles are launched, is it, for example, possible that both companies can co-exist? Can territories be carved out and agreement and put into a contract?
Often, time spent with a commercial solicitor can mean not having to spend a LOT more time with a litigation solicitor!
Getting it and then keeping it
Rights that have been registered can then be licensed out, creating a revenue stream for the business however, equally they also are lost through inadvertently allowing the registration to lapse or through contract - therefore it is recommended that someone should be given the specific responsibility within an organisation to renew all trade marks and domain names. In addition, if others are using your intellectual property then such rights should be properly recorded via a proper licensing agreement.
It is also important to remember that intellectual property can be lost in other ways such as hiring external consultants and not making it clear that all intellectual property is the property of the commissioner. Again, put in place a proper contract to protect your assets.
Sum up
It is up to the business itself to ensure that its brands do not infringe those of others and that they are fully protected.
It is also important to think ahead to future markets - if for example an Irish company intends to move into the UK market then it would seem sensible to check what other marks may be in the UK market at the same time as the Irish market and to then protect the mark by way of registration both in Ireland and in the UK and to register the UK domain name at the same time.
It may seem like additional and unwanted expense at the time but it is nothing compared to having to bring or defend Court actions in one or more jurisdictions - simple but effective planning at the outset can avoid a lot of trouble later.
Please contact David on dreilly@dreilly.ie or 086 252 9483 for further information on this topic or any other legal problem or matter.
