Lawyer Monthly - August 2021 Edition

n brief, could you explain the premise of brand protection? A brand is often the most valuable asset that a business owns, although it rarely appears on the balance sheet. A business’s brand is really a trademark (which is identifiable and capable of being registered in respect of named goods or services) combined with the ‘goodwill’ that has been generated by that business. Goodwill is difficult to define, but put simply it is a combination of what a business says about itself and what others say about the business. It can be created by the exclusivity of goods, or how cheap they are, by luxury service or by a ‘no frills’ service. Gucci has goodwill, but so does Primark. In practice, goodwill is a crucial revenue driver because it draws consumers to a business, and this is what lends a brand value. A brand is also one of only a few assets that can increase in value the longer it is used, provided that its owner invests in protection. Brand protection consists of the varied steps that should be taken to maintain the value of that asset. Practical steps would typically include registering your trademarks and paying subsequent renewal fees, i How Trademarking is Essential to Strong Brand Protection A strong or weak trademark can fundamentally alter the trajectory of a business. This month we speak with Rigel Moss McGrath, a Chartered trademark attorney and partner at HGF, who explores how trademarks and IP law are developing today and what SMEs should be aware of when looking to protect their brand from third-party interference. EXPERT INSIGHT 51 AUG 2021 | WWW.LAWYER-MONTHLY.COM taking action to prevent third parties from using a potentially conflicting trademark or seeking to take advantage of the associated goodwill, and ensuring that your trademarks are used in accordance with the registration. However, a key component of brand protection is ensuring that everyone in a business truly understands the importance of the brand to the success of that business. How is IP law essential to this? In the UK, a strong legal framework provides for the protection of your brands; it provides for the registration of trademarks and recognises unregistered trademark rights. Unregistered trademark rights are acquired as a result of the use made of it in the marketplace, but they are uncertain in that a business cannot be sure that they exist before it needs to rely on them. If a business wants to assert unregistered rights, perhaps to prevent a third party from using a similar trademark, it must first demonstrate to the satisfaction of a court or tribunal that those rights exist. To do this, a business must present detailed evidence of use of the trademark over a long period of time that demonstrates that it has educated the public to recognise a particular sign as a trademark – as an indicator of the origin of your goods or services. However, if a trademark is registered, its owner has already satisfied the technical requirements of ownership. A trademark registration is also incredibly powerful; it provides the owner with exclusive rights to use that trademark and the ability to stop third parties from using a conflicting trademark quickly and cost-effectively. Trademark registration provides businesses with the strongest platform from which to protect their brands, and whilst every case is different I very rarely recommend that a business should rely upon unregistered rights. What features of a trademark make it an effective tool for protecting brands? A trademark is the only form of registrable IP right that can be maintained for an indefinite period of time. Provided that its owner uses the trademark in the right way and pays the renewal fees, that registration will go on serving the business. The protection is not ‘time-limited’ like patents, designs or even copyright. However, whilst a trademark registration is an effective tool in terms of protecting a brand, a business can boost that effectiveness by choosing a strong trademark. I spend a lot of time working with clients who are looking for new trademarks, whether it is a house mark or a As a business grows and becomes more successful, it is almost inevitable that competitors will want to take advantage of that success.