Top Tips following obtaining a trade mark registration and enforcement

Top Tips following obtaining a trade mark registration and enforcement

20th May 2024, 3:49 pm

You’ve decided on your brand, the look you want and even obtained a trade mark registration – great, but what now? Read on for our top tips for maintaining your brand effectively to ensure it remains enforceable against third parties, should you ever need to. A huge hurdle for many businesses, of any size, is selecting a trade mark for their products and services. Once you’ve chosen it and obtained a trade mark registration, it doesn’t end there. You need to maintain your registration and ensure that third parties aren’t encroaching on your turf, potentially diluting your brand and causing confusion for consumers.

1. Use your trade mark correctly

It may sound simple, but depending on what you have registered, it is important to use your trade mark correctly. It needs to be used as a brand, or an indication of trade origin. Trade marks can become generic over time if they are not used correctly – think of Hoover. Once simply a brand of vacuum cleaner, it has become common for people to refer to any brand of vacuum as a ‘Hoover’ without even realising.

Secondly, if you opted for a logo or figurative trade mark registration, make sure you don’t stray too far from the image used in the registration. Small changes can be acceptable, but major differences such as omitting main word elements or drastic colour/style changes can impact the enforceability of your registration against a third party in future.

2. Use brand guidelines

Consider creating a band guidelines document. This will set out how the trade marks should be used, mainly for marketing purposes, but it would ensure that the trade mark is used correctly and not too many changes are made. This helps to ensure that your brand remains consistent through all aspects of the business and as long as it ties in with what you have registered on the trade mark register, ensures you are in a good position to enforce your registration in future.

3. Consider trade mark watching services

Often overlooked, it is possible to put in place trade mark watching services. These services monitor trade mark registers all over the world for recently filed trade mark applications, allowing you to take action against identical or similar trade marks.

It is worth noting that some countries operate differently with regards to new trade mark applications. So some countries operate a ‘first to file’ system, so later applications would not be able to proceed as they are ‘blocked’ by earlier registrations or pending applications – for example China. However, the UK operates a system where earlier rights do not prevent further applications being filed, it is the responsibility of the trade mark owner to take action and enforce their registrations.

In addition, these watching services would be able to notify of identical marks being filed fraudulently. All too often we see trade mark applications being filed in other territories where goods are being manufactured, then a third party has the rights to the trade mark and could cause problems.

So a trade mark watching service can be useful to pick up these similar and identical trade mark applications and keep on top of your brand.

4. Domains

Hopefully you will have obtained the domain registration you wanted, preferably before filing a trade mark application. As domains can vary greatly in cost, it is recommended that registrations are obtained as quickly as possible when deciding on a brand – we have seen

third parties jumping in and registering domains once trade mark applications have just been filed, causing hassle for the brand owner.

5. Domain enforcement strategy

The combination of domains available are almost endless, so it is important to try and have a strategy as to what to take action against and what to leave. Your trade mark registration will be enforceable against domain registrations should you need to.

Like with trade marks, it is possible to set up a domain watching service which monitors the domain registers and allows the brand owner to decide whether any action is necessary.

6. Take appropriate action

If something has come to your attention regarding a third party using your brand, you need to consider taking action. Different situations will involve various courses of action but could include sending a cease and desist letter, simply reaching out informally to another party, requesting a domain is transferred, social media take down requests or online marketplace take down requests.

It is usually a good idea to take action in a timely manner, as the longer you know about a third party’s actions, you are potentially acquiescing to such use.

7. General housekeeping for your trade mark registration

A small but useful tip, keep on top of any changes of name or address which are detailed on the trade mark registers. In addition, if the trade mark ownership changes, it is a good idea to record this against the register. If the registration needs to be relied on in future, it is good to have all your ducks in a row regarding owner details first. This can also help when receiving notifications from the IP Offices such as renewal notices, if they can’t contact the owner then there is a risk that rights could be lost.

8. Keep evidence of use

Sometimes when enforcing trade mark registrations against third parties, we need to provide evidence of use of the trade mark in relation to the goods and services which are covered under the registration. Usually materials such as invoices, photos, marketing or promotional materials and product labels or packaging are useful. As much information around any marketing campaigns or sales figures are also useful. The evidence needs to be able to show the date of the use, the territory, the product/service and that the use was by the trade mark owner.

If you are able to keep such evidence right from launching your brand, then should you ever need to enforce your registration, you would be in a good place to do so.

9. Consider applications in further territories

If you have your trade mark registered in the UK as this is where you are based, great. But if you manufacture your products overseas, or sell products online to other countries then you may want to consider trade mark protection there. This can then help to deal with any potential issues you may encounter if a third party tries to register your brand in another country. Generally, having a registered trade mark protection puts you in a good position with regards to third party issues.

10. Actually use your trade mark registration

This might sound obvious, but UK trade marks are registered for 10 years but after 5 years they become vulnerable to cancellation on the grounds of non-use. Whilst a third party would have to actively take action against a registration to have it cancelled, if you need to rely on it in an opposition you would need to be able to prove that it has been used within the relevant time frame.

If you would like any further information discussed above, please do feel free to get in touch.

Next Article

5 ways businesses can obtain the best Cyber Insurance terms within a hard market

Cyber insurance is becoming an increasingly important consideration for businesses of all sizes, as the frequency and severity of cyber-attacks […]
Read Article