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Trademarking: The Best Way to Protect Your Corporate Identity

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Trademarking: The Best Way to Protect Your Corporate Identity

Trademarking: The Best Way to Protect Your Corporate Identity
November 09
13:05 2015

Ross Nicol 2A European court case in which a UK supermarket failed in its attempt to trademark its food product branding highlights the need for businesses to secure their distinguishing marks. Ross Nicol explains the options available for protecting brands, and the pitfalls of not doing so…


What protection is available for brands?

The most robust form of protection for branding comes in the form of registered trademarks. Only the trademark owner may use, license, franchise or sell the mark in relation to particular goods and services. This can add significant value to a business.

There are different registration options for trademarks, and the choice will depend on the geographical coverage required. While some businesses in the hospitality, tourism and leisure sectors may opt for a UK registration, larger operators may consider European or international registration.

Alternatively, a business’s branding can be protected under the law of ‘passing-off’, where registered trademark protection has not, or cannot be obtained. This is a more vulnerable form of protection.

What can be protected as a registered trademark?

Marks which are unique, capable of being represented graphically, and which distinguish the goods or services of one business from others, may be registered.

Marks which are inherently non-distinctive can be registered if a business’s use of it has resulted in the mark becoming distinctive. For example, Nestlé’s extensive use of the inherently non-distinctive phrase ‘have a break’ has resulted in it acquiring distinctiveness. Colours, sounds and smells that have acquired a distinctive character can also be registered.

In a recent European case, a supermarket’s application to register a trademark for its “Deluxe” branding was refused for lacking distinctive character. The EU General Court found that the word could not distinguish the goods of this supermarket from its competitors’ and therefore could not be given trademark protection.

What protection do unregistered trademarks have?

The law of passing-off may protect marks which have not been registered as a trademark or which have failed in the registration process. Businesses relying on passing-off must establish that they own and have built up a reputation in the mark, and that they have suffered a loss as a result of someone else using it in a way which misleads or confuses customers.

When relying on the law of passing-off to protect a mark, businesses must be able to show the mark has generated goodwill – the attractive force which draws customers to a business. While not impossible, this can be difficult and expensive to do.

What are the consequences of failing to protect a brand?

Relying on the law of passing-off to prevent a third party from misusing a brand that is not protected by a registered trademark can be an expensive process.

Once a mark is registered or otherwise in use, it is important for businesses to remain vigilant and ensure that the mark is not being misused by third parties. Failing to enforce rights in a mark can result in the mark losing its distinctive quality and therefore losing its eligibility for protection.

 Ross Nicol is a Partner in the IP & Technology team at Maclay Murray & Spens LLP.

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Catering Scotland

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