SIBA Quarterly Journal September 2014

Muscles being flexed over trademarks

More and more people in the brewing industry are becoming aware of trademark protection and are starting to flex their muscles to enforce their rights and protect the brands they have borne and nurtured so meticulously.

Trademark protection is a hot topic right now for those involved in the industry because trademark holders have the power to stop breweries from using certain words, phrases or pictures in association with beers or the supply of alcoholic beverages.

In this article, solicitor Edward Hamilton of law firm Napthens, examines the issue and looks at what you can do to protect your brand. 

What are the risks for breweries without trademark protection?

The main risks originate from two main areas:

Existing trademarks:  A trend is starting to emerge where breweries inside and outside the UK, are starting to realise the value of their registered trademarks.

We are finding that a lot of breweries are not necessarily aware of what is already registered as a trademark. The danger for these breweries is that existing trademark holders can (and do) come along and enforce their rights, leaving breweries in a weak position in terms of their branding.  This wastes money, time and disheartens the efforts of a brewer.

This issue highlights the importance of carrying out thorough trademark searches to identify any businesses that exist with similar branding.

Future trademarks:  In simple terms, if you do not have any trademark protection, you may find yourself in a position where someone else comes along and registers your brand as a trademark.

What are the consequences?

Many breweries without trademark protection are receiving threatening letters telling them to stop using their brand.

Without trademark protection these breweries have limited options which could include a total product rebrand or entering into legal proceedings – both of which are costly, time consuming and have the potential to financially decimate businesses and balance sheets.

What can you do?

As a brewery it is now crucial to obtain trademark protection in all countries that you operate in or intend to operate in and that the protection covers the products/services you provide.

Many of our brewery clients are beginning to appreciate the importance of trademark protection so that they can build their brand safe in the knowledge that they are doing so on solid, legal foundations. Many choose to fully protect their brand by registering their brewery name, brewery logo, font clips and “flagship products”.

Once trademark protection has been obtained, the shoe is most definitely on the other foot.

As a registered trademark holder, you will have the right to enforce your rights against anyone you find in the marketplace using your branding, or similar branding.

You will also be automatically notified of any marks which are identical or similar to your trademark by the trademark office. You will then be offered the option to ‘oppose’ such applications should you wish.

Checklist

  • Do you have any trademark protection?
  • If you don’t, do you know if there is anyone else out there using any brands similar to your brands?
  • If you have trademark protection, does it cover everywhere you trade and cover everything you do? For example, if you have a UK trade mark but you also trade in Germany, France and Italy, you may need to consider a European trade mark.

If any of your answers to the above are NO, we advise that you seek proper legal advice and apply to register a trademark, sooner rather than later.