Brand protection

Your brand is the first experience that your customers will have of your business. It should also be the last: - the thing that stays in their memory and keeps them coming back. There is a lot that contributes to a customer’s perception of a brand. It’s not simply a name or logo, although that may be what is encountered first. Many factors contribute to a business’ overall brand image: the quality of its goods and services, a great back-story, friendly customer service, eye-catching or comfortable premises or excellent after care… it’s the whole package that gives a brand its unique reputation and allure.

In this article, our intellectual property solicitors discuss what brand protection is and the different ways you can protect and enforce the intellectual property rights that can help protect your brand.

What is brand protection?

Brand protection is about creating and maintaining a positive brand image as a whole, which embodies all the business’ interactions with the outside world in whatever form.

One important aspect of your brand is your business’s intellectual property (IP) - its trade marks, designs, copyright, patents or trade secrets. By protecting these, you can guard against third parties copying your brand or products or damaging or diluting your brand in other ways.

Who is responsible for brand protection?

Ultimately the management is responsible for a business’ operation and output. Although many business’ stakeholders will have an effect on the overall brand. You will need to educate your staff, contractors, brand ambassadors and content creators on what they can and cannot say and do in keeping with your brand guidelines.

Why is brand protection important?

If your brand is not adequately protected, this can cause damage to your business’ reputation and ultimately its profits and long-term viability. You may even find yourself the subject of litigation and financial penalties if your branding infringes on someone else’s intellectual property rights.

How to protect your brand

The first step is to know your business inside out - what are its values, its background, its ambitions, what’s your business plan for the next five to ten years? Then you can link this to the brand itself and the intellectual property rights that you will need to own and use to operate in accordance with these values and goals.

The best way to fully understand what your business owns, uses and may need to use in the future, is to conduct an Intellectual Property audit. This is usually carried out by an intellectual property professional such as a solicitor and will encompass a full review of the business’s products, services, documentation, communications, legal history and operations, in order to create a comprehensive inventory of all of its intellectual property.

Identify the intellectual property rights within your business 

Your business is likely to own and use various different types of intellectual property, including:

• Trade Marks: Your brand name, logos, unique strap lines and slogans can all constitute trade marks. In addition, you may have some unconventional trade marks such as unique sounds or the shape or smell of a product;
• Copyright: Copyright arises automatically in any unique work that you or your contractors or employees may create for the business. This can arise in artistic and literary works, text, music, photographs, videos, sound recordings;
• Designs: Design rights arise in the appearance of your products such as a repeating textile pattern or the unique shape of an item;
• Trade Secrets: Your business may have its own unique formulas, techniques, recipes, processes or  algorithms that afford it a competitive advantage and you will need to keep these confidential in order to protect  their value;

Some of these rights may be registered and some may not. Once you have identified the rights that you have, you will need to plug any gaps in terms of missing rights and missing protection for existing rights.

Protect your brand by registering your intellectual property rights

Some intellectual property rights are only fully protected if they are registered at the national Registry. For example, trade marks can be registered or unregistered but registration confers more comprehensive enforcement options and permits exploitation of the registered trade mark as a property right in itself.        

Trade mark registration

You will need to decide on a strategy to select your trade marks and ensure that they are in a form that can be registered. For example, a trade mark must be distinctive and more than simply descriptive of your goods and services or a characteristic of them. So, a generic picture of a sofa would probably not be registrable for sofas and chairs. A more artistic, original logo incorporating a sofa may however be acceptable. A trade mark solicitor can advise you on the trade mark registration process.

As well as your name and logo, you may also own trade marks that you can register for the design of your packaging and the “get-up” or “livery” of your premises, vehicles, uniforms etc.

Once you have decided what to register, you need to decide where. Intellectual property rights are territorial and different countries have their own registers and laws governing protection. You will need to draw up a registration strategy to cover your key markets and possibly also key hotspots for counterfeiters or infringers, such as China.

You also need to decide on the scope of each registration. In the UK trade marks are registered on a class basis and the number of classes required depends on the different types of goods and services that you want to register the mark for. The more classes you include, the wider the scope of protection but this can be off-set against increased registration and maintenance costs and an increased risk of overlapping with another registered mark.

As well as the distinctiveness of the mark itself, you will need to be careful not to infringe a third party’s trade marks and risk legal action, preventing you from registering and using your chosen mark. You should conduct clearance searches before making a final decision as to which marks to register. Your trade mark must not be confusingly similar to another mark for the same or similar goods or services. An intellectual property professional can commission a search report to check the Trade Marks Register for similar marks and advise you of the legal and commercial risks involved in using and applying to register your chosen mark.

Trade mark registration lasts for ten years in the UK. Renewal fees must be paid every ten years to maintain the registration. There is also a requirement to use the registered mark within the first five years of registration and every five years thereafter to prevent a third party from bringing an action to have the registration cancelled on grounds of non-use.

Design registration

As with trade marks, designs do not have to be registered to be protected but registration at the Intellectual Property office makes it easier to enforce the design against third parties and prove that it is yours. Design registrations are renewable every five years, up to a maximum of twenty-five years.

Designs project the appearance of a product if they are novel and not substantially similar to another design. Design registration can be particularly useful to protect any distinctive packaging you may have, including the shape, texture, lines, contours and material, provided that these are not simply dictated by the product’s technical function or that of another product that it fits with.

It is relatively simple and cost effective to register a design or more than one design since multiple designs can be included in the same application. This can be useful if you are producing many products and are not certain which will take off.

Although the design must be novel to be registered, there is a twelve month grace period to apply to register the design in the UK after it has been made public. It is safer though to register the design before disclosing or marketing it if you can.

Copyright and trade secrets

These types of intellectual property do not require registration. You need to keep records to document when any original works created by or for your business were made and by whom. Trade secrets should also be documented and kept in a secure location where they can only be accessed by key personnel on a ‘need to know’ basis.

Review, renew and record changes to your intellectual property rights

Once you have registered your most important intellectual property in the relevant countries, you will need to maintain your registrations and decide whether or not to renew them when they are about to expire. If you have not used a registered trade mark for example, you could decide to let it expire rather than paying the renewal fees or, alternatively you could renew it and then assign it or licence it to a third party to use, in return for payment.

Some countries require a registered owner to demonstrate ‘use’ of a trade mark to maintain the registration. The UK does not ask for this unless a third party challenges a mark that has been registered for more than five years on grounds of non-use. The USA requires that you file a statement of use periodically together with accompanying evidence. So you will need to keep dated records of how and where you have used your mark and for which goods and services.

You will need to keep the registered particulars of your intellectual property rights up to date so that you do not miss vital correspondence and notices. For example, you will need to submit a ‘recordal’ form to the IPO when your business changes address or your email address of correspondence details change. Usually, you will have an appointed representative, such as a firm of trade mark attorneys or solicitors, noted on the Register who will act as address for service for correspondence from the Registry or third parties. Indeed, it is now a requirement for all owners of UK registered trade marks that do not have an address in the UK, Gibraltar or the Channel Islands to appoint a representative based in the UK if they are involved in proceedings affecting the mark that commenced after 1 January 2024.

Monitor for intellectual property infringements that could damage your brand

Protecting your intellectual property portfolio also requires a proactive approach to taking enforcement action against third parties when this is required. Simply registering an intellectual property right will not prevent unauthorised use of it unless you challenge it by informing the infringing party of your rights and taking legal action against them if necessary.

Trade Mark Monitoring

As an ongoing process, you can set up trade mark monitoring or ‘watching’ services through your attorney or solicitor to monitor the register and flag up similar marks that are filed after yours, giving you the opportunity to challenge them before they are registered.

This is particularly important in countries such as the UK, where it is incumbent on the registered mark owner to challenge a subsequent application that they think is too similar, rather than the Registry itself taking any action in this regard.

If a similar mark is filed that you think is at risk of infringing your mark, you can file an ‘opposition’ at the Registry to try to prevent it from being registered. This is often cheaper and quicker than bringing an infringement action after a mark has been registered and used.

As well as ‘watching’ the Registers, you should monitor the internet, social media and the wider marketplace to check for unauthorised use of your mark or use of confusingly similar marks in your field. Staff and customers should be educated to report any incidents of confusion that may arise with a third party’s products or services.

You can purchase more comprehensive monitoring services and software subscriptions that include the monitoring of unregistered as well as registered trade marks as well as other types of intellectual property. These can be costly but you can tailor the package to suit your particular business and needs, depending on the frequency, breadth and level of sophistication of filtering of the results. You will need to review the results regularly and decide on the level of risk involved with each ‘hit’ and what action to take accordingly, i.e. no action, carry out further monitoring or investigation, issue a takedown notice, send a ‘cease and desist’ letter or take immediate legal action. Again, your intellectual property advisor will be able to assist you in making these decisions.

What legal actions can I take to enforce my brand's intellectual property rights?

Once you have protected your intellectual property through registration and have the necessary systems in place to notify you of potential infringers, you can then take early action to protect your intellectual property rights, through one or more of the following methods:

Takedown Notices

A takedown notice is a way of requesting the removal of infringing content from websites and online marketplaces such as Amazon and eBay. This could be content that infringes your copyright or your registered trade marks or designs. Companies such as Amazon and eBay have their own procedures for intellectual property rights owners to submit takedown notices, which are relatively simple to complete. It is not quite as simple as submitting a notice every time you see content that is somewhat similar to yours. You should seek legal advice if you are not completely certain that the content constitutes an infringement as otherwise, your notice could be deemed to constitute a “groundless threat” of infringement by your business or the website/marketplace host.

Cease and Desist Letters

Even if you have succeeded in getting content removed from a website or online marketplace, the infringing party could still be using your intellectual property rights elsewhere or they could simply list the products again under a different name. Sending a ‘cease and desist’ letter is a step further and involves sending a legal letter to an infringing party to inform them of your rights and to ask them to cease all infringing activity and take any action you specify, such as changing their company name or destroying any counterfeit goods. If they do not comply by a set deadline, the letter warns that you may initiate legal proceedings or apply for an injunction. Again, you should seek legal assistance in drafting and sending out cease and desist letters and you may also require the assistance of a company investigator beforehand to ascertain exactly who the infringing party is as they may be using a fake company name and address.

Litigation

If a cease and desist letter is ignored and the infringement is continuing, you can then consider taking legal action. This could be by filing an opposition or cancellation action at the Registry and/or infringement or passing off actions at the court. Court actions can be extremely costly so you will need to assess the costs and benefits and only proceed against serious offenders. You can devise an enforcement strategy with your Intellectual Property lawyer and use this and your monitoring service to quantify any potential losses arising from infringements to see which are worthwhile pursuing. The Intellectual Property Enterprise Court (IPEC) offers a less costly solution for small and medium sized enterprises, with a limit on damages awarded of up to £500,000.

Criminal proceedings

Counterfeiting, piracy and other intellectual property offences can also constitute criminal offences and reporting these crimes can give you additional means of enforcement.

Customs Registration

You can notify multiple customs agencies of your registered trade marks and provide them with information to help identify counterfeit goods such as images, bar codes and identifying markings. Then, if the Border Force authorities identify suspects infringing goods, they can detain them at the border and notify you so that you can confirm whether they are genuine. If not they may be denied entry and possibly destroyed.

Trading Standards

You can contact your local Trading Standards office to ask for assistance in investigating a supplier of counterfeit goods. They may take legal action themselves and can also inspect premises and seize goods, documents and other items as evidence.

PIPCU (Police Intellectual Property Crime Unit)

This is a division of the police that specialises in intellectual property crime. Its remit is to investigate and prevent “serious and organised intellectual property crime which causes significant harm or damage to the UK economy or the general public”. This could constitute the online sale of infringing goods or infringing digital content, other than spoof websites or fraudulent use of a company or business name online which are dealt with by ‘Action Fraud’.

Action Fraud

If a third party has copied your website in your company name (“spoofing”), or been a victim of fraudsters you can report this to Action Fraud, which is the national Fraud and Cyber Crime Reporting Centre. They will collate any relevant information and then send this to the police if there is a convincing case.

Summary

Protecting your business’s intellectual property rights is essential to achieving a healthy and profitable brand that you can build upon and grow.

In summary, if you take the steps below, you should have a strong basis upon which to maintain and protect your brand:

• Identify – assess what rights your business currently owns and uses and identify any gaps in ownership or use;
• Register – ensure that all your important intellectual property rights are properly registered and that all registrations are maintained and updated;
• Review – review your portfolio regularly as your business changes and develops to check for new intellectual property rights that may arise and need protecting and old rights that you may no longer require or can exploit through licensing or assignment;
• Monitor – set up watching and monitoring services so that you can take early action against conflicting registrations and applications and develop a strategic approach to protecting your brand;
• Enforce – work with your legal advisors to develop an appropriate and proportionate enforcement strategy for your business and allow other organisations to assist you as far as possible, for example by registering with customs and reporting offences to Trading Standards and other authorities, as well as filing your own legal actions when necessary.