Steve Kuncewicz | Solicitor Intellectual Property and Media | HBJ Gately Wareing (Manchester) LLP
In today’s connected world, Brand is everywhere. More importantly, Brands are easier to build than ever through new techniques such as viral advertising and social media. And, although some recent research suggests that these approaches may not be as effective in converting interest into turnover, everyone agrees that creating a strong brand will provide you with an asset that could drive up the overall value of your business by differentiating it from your competitors.
So, where’s the catch? Well, ask the Rolling Stones – because the fact is, success will always spawn a thousand imitators. Some forms of imitation may be flattering, but the chances are that in the majority of cases it will cause your Brand some degree of damage. Therefore, knowing how to protect your Brand and when to take action to clamp down on imitators is becoming increasingly important. Especially in new environments where bad ‘cover versions’ of your own business identity can make their way around your target market at the speed of a Tweet or e-mail.
Given all this, a Brand might appear to be a vulnerable property – but the legal protection available for your business personality is more comprehensive than you may think. The most effective option is to register a Trade Mark, but if you’re not in the position to do so there are plenty of alternatives.
Passing – Off
If your Brand is made up of elements that aren’t registered Trade Marks then they can still be protected. For example, a business can sue another ‘trader’ for what’s known as ‘passing off’. This means to make a ‘misrepresentation in the course of trade’ to their present or prospective customers which is intended to (and does) cause damage to the goodwill in your Brand – usually by suggesting that their business, goods or services are in some way connected to yours and, importantly, causing confusion between them in the minds of the public.
That’s a lengthy definition, but if you can show goodwill in your Brand (which isn’t particularly difficult) and have come across an imitator who is looking to use that goodwill to build a Brand or business of their own, you may well be able to stop them from doing so. This applies to use of anything from your name, trading style or ‘get-up’ to domain names or Twitter and Facebook profiles. As a practical point, putting ‘TM’ after your name or alongside any branding that you use will tell the world at large that you see it as yours and may warn off some unwanted admirers.
Trade Marks
If your Brand or ‘Mark’ can be represented graphically and it can be shown to distinguish your goods or services from those of your competition, then you can apply for a registered Trade Mark. The definition of a ‘Mark’ which can be covered by registration includes any number of different things – including words, slogans, letters, numerals, shapes, smells, sounds, colours and domain names (although obtaining a domain name doesn’t mean that you automatically obtain a registered Trade Mark, and vice versa). Importantly, however, your Mark will need to be distinctive and sufficiently different from other registered Marks. Not something which has fallen into common usage.
While it’s true that going through the registration process can sometimes be complicated and require at least a small investment in fees, registered Trade Marks are valuable. They can be bought, sold or licensed, are easy to enforce and warn off infringers, and are renewable indefinitely for ten years at a time. A registered Trade Mark gives you a monopoly to use the ‘Mark’ in question for specific classes of goods and services – so picking the right classes at the start of the process is essential.
If a third party uses your registered Mark without permission (or one which is similar), then you may be able to make a claim for Trade Mark Infringement and, unlike in passing-off, will not need to demonstrate goodwill. Trade Mark Infringement cases can be technically complex and sometimes risky – ‘unjustified’ threats of Trade Mark Infringement can allow the business threatened to sue you, but if fought with the benefit of proper advice can be very powerful methods of protecting your Brand.
Copyright
Even if you can’t protect your Brand as a ‘Mark’, any visual components can also be protected by Copyright. Amongst various different ‘works’, this protects literary, artistic, musical and filmed material – provided that the material in question is original, created by you or an employee, recorded in permanent form (usually in writing) and not based substantially on something else.
For example, if your logo is being used without permission but isn’t protected by a registered Trade Mark, it may be protected by copyright as artistic work. Similarly, if your website text has been copied for use elsewhere, then it could be protected as literary work. Even if the copying isn’t slavish, as long as a ‘substantial part’ of your original has been used elsewhere, your copyright could be infringed and action can be taken, including approaching a website’s ISP to have the material in question taken down. Copyright infringement also doesn’t have the same ‘threats’ issues as registered Trade Marks, and so action can be (and should be) taken as soon as the copying in question comes to light.
Domain Names and Social Media Accounts
One of the key components of any Brand will be a domain name. Any use of a domain name which is similar to yours or your Brand without your permission can allow you to take action in passing-off or Trade Mark Infringement, but there’s also a cheaper option. If you can show that you either have goodwill, a registered Trade Mark or some other legal right in the domain name, then you can apply to either Nominet (in the UK) or ICANN (international) to have the domain transferred. This costs far less than going to court, although sometimes issuing proceedings is the only option. When in doubt, buy up every conceivable domain name that you can (Including mis-spellings and multiple top-level domains such as .co.uk, .com, .net, .tv and so on).
But domains aren’t the end of the story. As brands spread across social networks such as Facebook and Twitter, staking your claim there is now essential. Set up profiles for your Brand wherever you can, and keep a copy of the rules or terms and conditions of each network or platform handy – Facebook and Twitter in particular take misuse of Brands very seriously and usually act very quickly to take down unauthorised profiles.
Protecting your Brand legally can be expensive, but if you intend to make it the cornerstone of your business then a penny spent on prevention can save many thousands of pounds on the cost of a cure. If your business really does stand out from its competitors, you may occasionally have to fight or invest to keep it that way.
