Lawyer Monthly - August 2021 Edition

product mark, and my message is always ‘pick a strong mark and you will rarely have to talk to me’! A ‘strong’ trademark is one that has a high level of inherently distinctive character. Avoid using a mark that is not descriptive of the relevant goods or services in any way. One should also avoid invented words, or words that are meaningless. The scope of protection for a distinctive trademark is broader than it is for a less distinct mark, even where there is a registration in place. What unique insight can a Chartered trademark attorney offer regarding brand protection? A Chartered trademark attorney has been specifically trained to a very high standard to work with businesses and organisations to create and protect trademarks and brands and to maintain their value. The life cycle of a brand can include the prosecution of applications to register, contentious proceedings, license agreements, transfer and everything in between. This can be a broad scope of closely inter-related work that requires specialist advice and guidance in order to ensure that the value of the brand is maintained now and in the future. In fact, an important part of our role is to ensure that the protection in place for trademarks and brands is future- proofed insofar as is possible; the applications that a business files today need to be capable of protecting that same business in 5 years’ time and potentially forming the basis of applications filed in other countries. I also think that there is a real benefit to having an experienced external advisor on your team; a business’s relationship with its brand can be quite emotional – which is a very good thing - and sometimes a third party can act as a practical sounding board. This can be particularly relevant for family-owned businesses. Are there any particularly common kinds of brand abuse that a growing SME might encounter? Brand abuse can fall into two categories: harm from third parties, and self-inflicted harm. As a business grows and becomes more successful, it is almost inevitable that competitors will want to take advantage of that success. The competitor may use similar trademarks in an attempt to benefit in the goodwill that another business has created; they may begin selling counterfeit goods either in the UK or abroad; they may file applications to register the same trademark in non-UK countries in an effort to hinder the success of a business. Brand abuse can also be self- inflicted, believe it or not. For example, if a business allows its brand to become a generic term for goods or services, it may surrender its exclusive rights to use that trademark. Another key challenge is to ensure that the protection for a trademark matches growth, for instance into new commercial or territorial markets. How would you advise your clients to avoid these? As your business grows, it is likely to become more important to rely on your attorney to ensure the safe management of your brand portfolio, to monitor administrative deadlines and third-party activity. In respect to monitoring their competitors’ activity, I strongly recommend that businesses and organisations make sure that their attorneys put in place a ‘watch’ service. This is designed to monitor applications (in specified territories) to register trademarks similar to their own and provides information that allows the business to take proportionate action, as necessary. As your business grows, it is likely to become more important to rely on your attorney to ensure the safe management of your brand portfolio, to monitor administrative deadlines and third-party activity. 52 WWW.LAWYER-MONTHLY.COM | AUG 2021 EXPERT INSIGHT