SIBA Quarterly Journal September 2013

Can you afford to risk your brand?

Your brand is the soul of your brewing business.  Without it you may as well start each day as an unknown in an industry with an estimated 25 million regular consumers drinking from a range of almost 3,000 beers available in Britain.  When you have worked hard to gain a loyal customer base, your brand and the connection those customers have made with it, exists as a key asset in your business.

Common misconceptions

  • Using your brand for many years does not give automatic protections.  Rights acquired through use are not reliable, are difficult to prove and expensive to enforce.
  • Having a company name registered with Companies House does not give you registerable rights to your business name.
  • Registering several domain names (co.uk, .com) does not provide any enforceable intellectual property rights and won’t prevent third party use.
  • The symbol ‘TM’ has no legal significance in the UK even though many traders place the letters TM (trade mark) or SM (service mark) against their marks.

The reality

If someone else has already registered a mark similar to yours for similar goods/services, one of three things will happen:

  1. You may be prevented from registering your mark, leaving you with a company name/brand name that can’t be protected.
  2. You may have to go through a difficult process to prove that you used the mark first, or for a sufficient period of time.
  3. You may have to negotiate a deal with your competitor to allow you to keep using your name.

What can you trade mark?

  • A trade mark is a sign which distinguishes your goods and services from those of competitors. It can be a word, name, phrase, symbol, logo, image, picture, design or a combination of any of these.  It must be distinctive for the goods and services you provide i.e. differentiates your goods or services from someone else’s.
  • Registering your trade mark gives you exclusive right to use your mark for the goods/services that it covers in the UK.
  • If you have a registered trade mark you can put the ® symbol next to it, warning others against using it. (Using this symbol for an unregistered trade mark is an offence).

 Benefits of a registered trade mark:

  • ‘Concrete proof’ of your legally protected rights.
  • Protects against others using same/similar trade marks.
  • Puts people off using your trade mark without permission.
  • Acts as ‘insurance’ to protect the resources used to create your brand.
  • Can create a separate asset reflected in your company accounts – a real benefit if looking to sell or seeking funding.
  • It is your property, so you can sell it or licence your brand or trade mark for others to use and so generate licence fees/royalties.
  • The brand could be held separately in an asset holding entity, safe from the threat of insolvency.
  • Allows for criminal charges to be brought if counterfeiters use your trade mark.

Without trade mark registration your only other protection is the old common law remedy known as Passing Off, which relies on proof that ‘goodwill’ subsists in your name and that confusion has/is likely to occur. This can only protect a brand in the areas in which it is known to consumers, so national awareness must be proved in order to gain the same protection as a trade mark registration.

Investing in registration is worth it in the long run.  Not only does it produce an asset which can be recorded on the company balance sheet and traded and licensed for revenue, it provides protection against potential infringement at a fraction of the cost of a claim for Passing Off.

UK Trade Mark registration

There are many trade mark registration agencies out there and some lawyers provide a service in this specialist field.  Napthens offers a fixed fee, online registration service which is competitively priced and includes (unlike most) a consultation with a specialist trade mark lawyer to give you tailored advice for your brand and business.

Please visit the Trade Mark Registration page for full details and to start your trademark registration process.