Richard Harris, Associate at North West law firm DTM Legal, said: “Those wishing to protect their intellectual property need first to consider what it is they are protecting. If it’s an invention or product, they will require patent protection. However, where brands are concerned, there are a number of options.”
In this blog, Richard Harris discusses the options available.
Options to protect a brand
A brand may be protected by several intellectual property rights. Trademarks are the main way to protect your brand but there is also the tort of passing off, copyright and design rights. Domain name protection is another important aspect of brand protection for any business with a website presence.
Considerations
Careful consideration needs to be given to what it is that requires protection and the most appropriate registration. As a brand becomes more international there are more opportunities for that brand to be ripped off. It is important to take steps early to ensure brands are protected and rights can be enforced.
It is also important for businesses to consider the markets that a brand has a presence in and if protection is required only in the UK or abroad too. Extended brands should be treated as separate entities as each will need its own trademark protection to ensure full coverage.
Registering a brand provides the greatest protection and makes enforcement a lot easier. There are a number of options for brand owners when seeking to enforce their intellectual property rights including cease and desist letters, injunctions, damages and invalidation of another registration that may infringe the brand. Businesses should act quickly if a breach is evident before any damage is caused to the brand and significant losses are suffered.
A brand owner also has the protection of a claim for what is known as ‘passing off’. This is the right to bring a claim against anyone impersonating them or their business. Passing off includes, not just brand names, but other matters such as goodwill used intentionally to mislead or confuse members of the public. A claim for passing off can be used for unregistered and registered brands and remedies include injunctions and damages.
Brands may also be exploited in a particular commercial context particularly if that brand has a presence in the UK and overseas. This not only offers the opportunity to profit from the brand but can also offer further brand protection. A brand may be commercially exploited in several ways but one of the main methods is by licence. A licence gives another business (perhaps operating in another country) the rights to the brand usually for a defined period and in a defined territory. Licence agreements can allow a brand owner to extend its brand in to other areas by using local specialists whilst maintaining control of the brand.
Richard Harris
For more information, contact Richard Harris on 0151 230 1215 or email richard.harris@dtmlegal.com. Alternatively, you can use the contact form below.
