A trademark is a badge of origin that identifies and distinguishes a fashion brand from its competitors. A registered trademark is also a valuable asset that can be sold, licensed or franchised to others, generating a revenue stream. So what are the key issues fashion brands need to know about trademarks?
1 Choose the right name
Your brand name should be distinctive and easily recognisable. Consumers should be able to rely on your brand as a guarantee that your products originate from you. Avoid descriptive names and ensure your mark is not a generic word. The strongest types of trademarks are invented words that have no meaning, or are arbitrary marks – for example, an existing word that is unrelated to fashion.
2 Clear the path
Before you start using a brand name, you must run clearance searches to check a third party has not already registered – or have other rights in – your chosen name, or something very similar. Otherwise, you risk infringing their trademark and being liable for damages, or even being forced to rebrand.
3 Get in first
Once your chosen name is cleared for use, act quickly to register it in your key territories. Otherwise, an opportunistic third party may attempt to register your mark and “hold it to ransom” unless you pay it. This is a growing problem in countries such as China and Brazil, and could prevent you from manufacturing in those countries. Also, remember to register any key domain names and social media handles.
4 Think globally
Trademark rights are territorial. This means they only give protection in the countries where they are registered. Even if you are very successful in the UK, you can’t stop someone using your name in the US for an identical business unless you have also obtained trademark protection there. Think about the territories where you intend to expand. Within the European Union, you can obtain pan-European protection by registering a European Community Trade Mark (EUTM), which covers all 28 member states of the EU with a single registration.
5 Cover all bases …
Your trademark registration should cover all the goods and services you are supplying or intend to supply under your brand. If you do not include all relevant items in your specification, they may not be protected. You cannot widen the scope of protection once you have filed your application – you would need to file a separate new application – so think ahead about your future plans.
6 … but don’t overspend
The more classes of goods and services you apply for, the more it will cost. Different types of fashion apparel and materials – clothing, textiles, handbags, jewellery and cosmetics – could fall under different classes. The filing fees for EUTM applications that cover more than three classes increased on March 26. Think carefully what you actually need to protect.
7 Use it or lose it – and use it wisely
If you fail to use a registered mark within the first five years, this can result in the mark being cancelled in part or in full. By registering a trademark, you will obtain the right to prevent others from using an identical or similar mark for the same/similar goods or services – however this does not give you the unfettered “right to use” your mark in any way you like. You still need to be mindful of other people’s trademarks and unregistered rights to avoid a trademark infringement or “passing off” claim.
8 Stay in control
If you are licensing your mark to others – such as franchisees, manufacturers or distributors – be sure you have written agreements in place with all of them to control their use of your brand. Your reputation could quickly be damaged if your mark is associated with poor-quality goods, misleading marketing or unfair business practices – or if your confidential information is leaked. Seek legal advice to ensure you are properly protected.
9 Catch out infringers
If you come across someone selling counterfeits or using your mark without your permission, make a thorough record of all relevant evidence. You may need it later to substantiate your claim. Take screenshots of infringing websites, make trap purchases of counterfeit items – and keep all records and receipts – and note down details of any infringing activity on the high street.
10 Enforce your rights
If you spot an infringer, consider sending them a letter asking them to stop – sometimes called a “cease and desist” letter. Act quickly, before the problem escalates. You should use a trademark attorney or lawyer to prepare the letter because, if the letter is not carefully worded, the recipient could have a claim against you for unjustified threats.
Sarah Wright is a partner and head of trademarks at law firm Olswang