What’s in a name?

May 16, 2014

I don’t know about you but I’ve really enjoyed Digby Jones recently on TV in the “New Trouble-shooter.” One of the key issues he highlighted is the vital importance of trade marks in business. It is incredible how few of the businesses he has helped even have the most popular of their brands registered. All the more astonishing when you realise how long some of them have been in business. So why are trade marks so important, how do they add value to your business and how do you obtain one?

Your brand name is of vital importance – especially in highly visible consumer markets such as food or clothing businesses. The thing that keeps people coming back for more is your brand name and the quality of product that you deliver. And who doesn’t want instant customer recognition and repeat business! If you sell your business your trade name and brands will be of fundamental value, and if you don’t have a registered trade mark, then you could find that your company is worth significantly less than it should be. A registered mark plays a key role in spreading your brand recognition – especially in overseas markets. However, this is the one area that I see most businesses get wrong. Many businesses start to sell overseas without taking proper professional advice from a trade mark expert and soon find that someone else registers their brand names and starts to imitate their products. This frequently kills the overseas opportunities stone dead. Take for example one company I acted for who exported their food supplements over to the Far East. They engaged a local agent who covered Thailand, Vietnam and Korea. Before they knew it their brand name had been registered locally by their agent, who then set about selling cheaper imitation supplements under my client’s brand name to my client’s biggest market!

So what do you need to know and how do the big players get it right? Once you’ve decided on a name the obvious search you need to do is via Google to see what else crops up with that name. A number of years ago I had a client who simply didn’t do this and found that after she starting advertising her new clothes brand that Sainsbury’s were using a virtually identical mark on items of clothing! Whilst the mark wasn’t registered by Sainsbury’s they did have a number of years use of the brand on clothing and blocked her sales in the UK under the mark she’d chosen. It was an expensive mistake. Her products had been made overseas and as the letter before action landed on her desk so did the shipping bill for £100,000 of branded clothing! Not only did she have to re-do her advertising and labelling, she actually had to have the clothing re-stitched with a new brand on the label. To add insult to injury this lady had used a cheap and cheerful on line trade mark registration service that not only had told her that a clearance search wasn’t required but had taken her money up front for a Community Trade Mark registration that was doomed to fail. OUCH.

Next I would suggest a domain name search and a proper clearance search on your chosen brand name. It is often worthwhile buying a domain name of your chosen brand simply to protect it and use it as a website that leads straight to your product or range of products. If you find it is already registered to another totally unconnected business which isn’t in your field then you may have to get creative! So for us we have www.virtuosolegal.com but if I wanted to use that on say gourmet sauces I may want to look at www.virtuosofoods.com or www.virtuososauces.com. I hope you get my drift.

Lots of businesses do their own trade mark clearance searches or rely on the IPO search service to help. However, a proper professional search from a trade mark registration expert is money well invested in your future. A professional search will guide you through phonetic equivalent trade marks and help you avoid registering names that you can’t use in certain markets such as Europe. Let’s face it some words just don’t make great trade marks elsewhere!

pschiit

 

Pschitt soda drinks – not a brand name that would appeal in the UK

A proper clearance search will help you avoid registering conflicting marks or those which could be opposed by other brand owners. Practitioners in the field will often help navigate whether or not other marks are likely to oppose your application. Whilst the staff at the IPO are invariably very helpful, they are not practitioners and their practical knowledge of what may be a problem is often limited to text book knowledge alone rather than commercial understanding of the issues.

When it comes to registration it pays to be aware of the fact that there are 45 different classes for trade marks and it pays to register up front in classes that you aren’t using straight away but may use in the next year or two after the launch of your product. By way of example if you are a food producer and you are going to produce recipes and recipe books and drinks flavoured with your product then you may want to register in class 16 for printed matter and classes 32 and 33 for non alcoholic and alcoholic drinks. Again it pays to get professional advice on this.

Many of our clients register their brands in Europe using the Community Trade Mark application system. The reason for this is clear. Europe is our main area for exports and the internet means that trade goes national and then global quite quickly. There are a few businesses that can only trade in the UK – such as certain financial services. However, some UK products such as food and clothing are often quickly in demand overseas. In addition the professional fees for filing in the UK and Europe are similar as the professional time to draft the applications is similar. The official fees for filing in Europe start at around £815 (depends on the exchange rate), whereas the UK fees start at £200 and then £50 for each extra class. However, in terms of return on investment, a Community Trade Mark or CTM will cover the 27 countries of the EU. Filing your own trade mark and getting it wrong is particularly costly, especially for a CTM. Not only are the only online registration forms quite a challenge but it you get it wrong, you will lose the entire filing fee. Remember this. Your brand is going to be with you a long time. It is tempting to cut corners and costs but the reality is that this is a key investment in your business and getting it right first time by seeking professional advice is almost certainly money well spent in your business’ future.

Elizabeth M Ward

Principal at Virtuoso Legal.

www.virtuosolegal.com

Tel 0844 800 8871 email liz@virtuosolegal.com


When is a muffin, not a muffin?

October 10, 2013

 

 

When it is trade marked as a Duffin ®.

Hats off to business woman Bea Vo, owner and proprietor of Bea’s of Bloomsbury who had the imagination to cross a doughnut and a muffin to create a duffin. The idea wasn’t entirely her creation. Apparently the domestic Goddess Nigella Lawson did a recipe for jam doughnut muffin combos a few years ago. However, Bea with her creative flair made the duffin hers by the addition of raspberry jam, nutmeg and buttermilk. This juicy moist delicacy was one of many luxury creations sold in her popular and upmarket bakery in London. That was all well and good until Starbucks cake supplier Rich Products Limited came along and registered the name Duffin ® in class 30 (a food products category) for guess what? Yes you’ve guessed it – a product that is remarkably similar to Bea’s duffin cakes. In fact Rich Products have filed for a Community Trade Mark for a whole range of pastries and goodies. However, having already been granted a UK trade mark in class 30 for the Duffin®, Rich Products wrote to Bea and asked her to stop using THEIR name!

As you can imagine, Rich Products say that they DID undertake clearance search exercises and didn’t find any problems with the brand. Bea says they can’t have looked very far as her very popular duffins are available on line and a Google search should have brought them up. However, she had not registered the unique product as a trade mark. The short point is this. Registering a trade mark IS the surest way of protecting key brands. In certain businesses such as consumer goods, food and clothing, getting your brands registered is fundamental, and it is VITAL to do full clearance searches. This entails a lot more than doing identical word searches, and trawling the internet. Whilst it is clear that Bea has prior rights and that Rich Products can’t stop her, they can stop her from applying the duffin name to other bakery products.

A professional clearance search will look at not just the same words, it will also “landscape” around the mark to find potential phonetic conflicts and marks which are similar but not identical. This exercise allows you to limit the risks you face when filing or launching a product or service.

So what is the downside of filing a mark without a clearance search or against the advice of a clearance search? Well problems often arise from other trade mark owners who will object to your registration. It could result in costly and protracted trade mark opposition results, or in certain cases meaning that you get sued for trade mark infringement. In virtually all cases you will lose your filing fee. If this is a Community Trade Mark, then you will be down over £800 and unless you really want the mark, it often isn’t worth the risk.

Need a trade mark filing? Come and discuss it with Liz, Kim, Dan, Kate or Kirsten at the Sunshine Bakery. The tea and cupcakes are on us! Call 0844 800 8871 or email us dan@virtuosolegal.com.