What I love about IT people is their unfailing logic when it comes to naming their business or branding. There are over 300 trade marks which have ‘logic’ in them; the vast majority being IT focused businesses.
There are 68 who have been unimaginative enough to use ‘information technology’ in their marks. How a French company managed to register ‘Information Technology for Finance’ I do not know and frankly beggars belief.
The purpose of any trade mark is to identify your business to customers and potential customers, and for them to associate it with the goods or services they want (and also of the quality they want). Standing out from the crowd is part of that. But there is also a balance to be had in letting customers know, through the brand, either what the goods/services are about, or the company itself. There is, therefore, a temptation to veer towards the descriptive in branding so that it ‘does exactly what is says on the tin’ (yes, that is registered but only after a lot of use because it’s a slogan).
The conundrum for small businesses or individuals, particularly in IT, is whether it is worth the time and expense in applying for a mark, and if so, what type: national, Community Trade Mark (‘CTM’) – which covers the entirety of the EU, or an even wider geographical spread? That depends on where your customers are. If your business is local, a UK national mark is probably as far as you need to go. Trading in Europe may mean you might want to have the protection of a CTM.
What a trade mark enables a proprietor to do is stop another business from using the same mark or a similar one likely to cause confusion, in the same trade or in one similar to it. A veritable ‘keep off the grass’ notice, which has the backing of statute, rather than just an angry groundsman flailing his arms around at you.
Another aspect where small businesses or start-ups often get in wrong is the extent of the scope of the specification for a trade mark. Certainly cover what your business is actually about, but consider carefully areas you might move into. Be wary, though, of going too far. If you fail to use genuinely the mark for a range of goods/services for which it is registered, after five years a competitor could seek to have the mark removed for non-use. So if you do not actively seek customers, or protect the market you built up under the mark, you might lose it for some or all of the goods/services it is registered for. The recent case involving the CTM ‘SOFA WORKSHOP’ neatly illustrates the dangers of choosing a descriptive mark, and extending too far beyond the shores within which you trade (the mark was revoked because there was no evidence of genuine use in more than one Member State – they could only show it being used in the UK – it was descriptive, and had not acquired any distinctiveness through use).
On the plus side, the victory of Thomas Pink to protect their ‘PINK’ registration against Victoria’s Secret, requiring the latter to settle at some cost and suitably rebrand, shows the significance of having trade mark protection. That will have cost Victoria’s Secret a bob or two!
While I might be accused of ‘you would say that wouldn’t you, you’re in the business’, I strongly believe a company needs to protect itself from competitors who sail too close to another’s boat and take their wind. A trade mark helps. I’m willing to bet that many of you will have experienced, or know of someone in the IT business, who has suffered confusion of some type or another, because of names of companies being too close. Unless they had a trade mark which (unlike the French one above) is enforceable, they have to rely on passing off. That is messy, difficult and costly.
Waving a registered trade mark around early on in a potential dispute, will often mean the competitor changing their name or mark. Having one also helps in raising complaints with the Company Names Tribunal, seeking to have the offending company name removed from the register.
- It’s better to have a registered trade mark than not;
- Choose one that alludes to the goods/services rather than being completely descriptive of them;
- Consider having a logo, which speaks all languages;
- Don’t over-reach yourself in respect of the extent of the goods/services you are seeking protection for;
- Consider whether you need protection in territories other than in the UK, in which case a CTM or more may be necessary;
- Always use the mark as registered for the goods/services covered and do so in a way that creates a market for your business or else seeks to keep it going; and
- Getting a registration is one thing, using it to protect your business is another – make sure it’s worth having so you can police it.
And finally, just a word to the wise, don’t you try and be clever and use a company name that is too close to one of your competitors: you may, like Victoria’s Secret, just end up being very pink in the face!
Paul Harris, Intellectual Property Litigation Partner at Pillsbury Law