Whilst the IPOs have worked hard to make the physical process of filing an application as easy as possible, that by no means makes thinking about and protecting your IP a simple process. To illustrate the things that people can miss, we will look at the life of my imaginary bar, and the IP issues I could face.
1. Protecting the wrong trade mark
Deciding what to actually protect is an important decision. One mistake to be avoided is filing something that results in a narrow scope of protection. As an example, let's think about my highly inventive fake company name “Blake’s Bars Company Limited”. If I want to protect my company/trading name as a trade mark, I would have a few options:
a. Blake’s Bars Company Limited
b. Blake’s Bars
d. Blake’s Bars logo (word and figurative)
e. Figurative element of logo alone
What you ultimately choose will depend on searching and various different factors, but what I want to illustrate is the importance of thinking about what the trade mark will actually offer you. In the above examples, it would be “Blake’s” that would likely give me the broadest scope of protection to reach potentially infringing third parties, and “Blake’s Bars Company Limited” that would give me the narrowest. However, many people think “it's my company name so that should be my trade mark”. Just remember, your trade mark is, among other functions, an enforcement tool. Make it as useful as you can.
2. Specification too narrow/broad
On the theme of the above, your specification will impact on how useful your trade mark is as an enforcement tool. In the UK and EU, you have the ability to file a relatively broad specification (without covering everything under the sun). Taking potential infringement risk out of the equation, it is always a good idea to ensure you have as broad a specification as possible. If I want to protect my bar, it would make sense to cover “bar services” in class 41. However, I wouldn’t be happy if someone opened a restaurant of the same name, or released a pre-mixed cocktail using my trade mark. I could argue these activities/products are similar enough to bar services anyway to be infringing, but is it worth the risk? It is not unreasonable for me to file my trade mark covering these terms and other similar terms, especially if this could be a possible future expansion.
You do have to be careful to not take your broad specification too far, and venture into the realm of bad faith, but a narrow specification often results in more headaches down the line.
3. Not researching/clearing the mark
Receiving a letter the week before opening night from “Blake’s Bar and Bistro” isn’t an ideal situation, especially after the significant investment I have made in my branding and marketing material. You don’t want to have invested your life savings before you find out that someone else already has rights in your name. This is why we always recommend full clearance searches for your proposed trade marks. If you know on day one that someone else is going to cause problems, you have time to rethink your brand or get ahead and reach out to them. Long story short, never skimp on the market research and trade mark clearance searching.
4. Not looking ahead
The bar has been a huge success. I always intended to open a shop on my local high street once the bar took off, selling beverages, food, kitchenware and other merchandise. However, in the two years since the bar opened I can see that someone has filed a trade mark for “Blake’s” in relation to the retail of kitchenware. I knew I wanted to expand into this area eventually, but now I am too late.
If you know where you want your business to go, start thinking about trade mark protection as soon as possible. Don’t let someone get there before you.
5. Not thinking about IP
If the above has taught you one thing, it should be that IP is not an afterthought. Your brand is important and you should treat it as such. It can be difficult to get your head around all aspects and all potential issues that could arise. If you need any assistance, we are here to help.