Posted: 19/10/2012
Registering your company’s name, logo or slogan as a trade mark is the best way to protect your brand. Commercial, IP and IT specialists Joanna Vengadesan and Fiona Rodgers explain the process – and all of the issues that need to be considered – in Travel Trade Gazette:
‘Brand identity is a key reputational asset in the travel sector. Brands can engender tremendous customer loyalty and help a consumer to understand the distinctive value of a product or service. Protecting your brand should be a key priority.
What can be protected?
A brand can be a trade name, logo, slogan or anything that can identify and distinguish a specific product or service. Hotel chains, in particular, are increasingly using their main brand with associated sub-brands to position the type of service being provided. The Hilton brand is a good example with “Hilton”, “DoubleTree by Hilton” and “Hilton Garden Inn”.
A brand can be registered as a trade mark if it is capable of differentiating your goods and services from others. Descriptive marks such as “Travel to Europe” for a business organising travel to Europe cannot be registered unless significant evidence of usage can be demonstrated. Other marks that cannot be registered are those which are generic, not distinctive, offensive, illegal or deceptive.
No trespassing
Before choosing a new brand, you should carry out searches to avoid trespassing on any existing rights. This can avoid the cost and PR nightmare of having to rebrand after you have launched.
Make your mark
The best way to protect your brand is to register it as a trade mark. A registered trade mark provides the exclusive right to use the mark for certain goods and services in the relevant territory.
Although registering your company name at Companies House or as a domain name is important, this will not give you exclusive ownership of your mark and does not provide sufficient protection. Without a trade mark registration, you have to rely on “laws of passing off” to protect your brand. This will involve having to prove extensive use of the brand in a manner which justifies protection of your goodwill in it. This makes enforcement much more expensive and less effective than if you had a trade mark registration.
Community spirit
When developing your brand protection strategy, you should consider the countries in which you intend to or are carrying out your business. Trade mark protection is territorial but there are several cost- and time-saving systems to help protect your brand internationally. For example, a single Community Trade Mark can cover the European Union. File your application with the relevant trade mark office, identifying the specific goods and services of interest. The application must be advertised and third parties have the right to oppose. Once registered, you will have monopoly right to use the mark for those goods and services forever, subject to renewal (which is every 10 years in most countries).
Start using the symbol
Once registered, your mark should always be used with the ® symbol. While using the ® symbol for an unregistered mark is a criminal offence, you can use the ™ symbol for these. Registering your trade mark also makes it easier for you to maximise your brand through licensing or franchising.
Police your brand
You should put a watch service in place, in order to monitor what is being said online about your brand. These are relatively inexpensive – and use internet tools such as Google Alerts to monitor any attempts by third parties to register similar marks or use your brand.
Be respectful
British Airways, Ryanair and easyJet’s advertising campaigns have all been attacked or defended. BA sued Ryanair for infringement of its registered trade mark “BA” in a response to adverts indicating that BA flights were more expensive than equivalent Ryanair fares. In 2011, the Advertising Standards Authority upheld a complaint made by Ryanair against easyJet for a misleading advert.
There are strict laws determining whether or not you can legitimately compare your product to that of a competitor in your advertising. If you contravene these rules by, for example, creating a false impression that there is a trade connection between the two brands being compared, you could be liable for trade mark infringement and also risk breaching other consumer protection laws.’
© 2024 Penningtons Manches Cooper LLP.
All rights reserved.
Website design by Frontmedia / Dynamic Pear
Penningtons Manches Cooper LLP is a limited liability partnership registered in England and Wales with registered number OC311575 and is authorised and regulated by the Solicitors Regulation Authority under number 419867.
Return to news headlines 