Your brand is unquestionably one of your most important assets. So it stands to reason that you should pay close attention to protecting it.
But what is a brand anyway? Well according to the Intellectual Property Office:
“A brand can be a trade name, a sign, symbol, slogan or anything that is used to identify and distinguish a specific product, service or business. But a brand is much more than this; it can also be a ‘promise of an experience’ and conveys to consumers a certain assurance as to the nature of the product or service they will receive and also the standards the supplier or manufacturer seeks to maintain. Brands are therefore reputational assets based on powerfully held beliefs; they drive the understanding of value in a product or company, and, perhaps most importantly, customer loyalty.”
I couldn't have put it better myself…
Building your brand starts as early as choosing your business name. When setting up your business, you need to make sure that nobody else is using your name in relation to a similar product or service so that (i) you can properly protect your name and (ii) you aren't going to be infringing anyone else’s property.
The best protection to have for your brand is a registered trademark. There are a number of ways that you can check whether anyone else is using your proposed business name. Start off with a Google search and then search on Companies House Webcheck for limited companies or LLPs that have the same or similar name. Then search the Business Names Registry online for free – it doesn't include every business in there but it does show sole traders and partnerships, which the Companies House search won’t reveal. And then finally you need to do a trademark search to check that your proposed name is not already trade marked – you can do this by visiting this website.
Once you have checked that nobody else is using your proposed business name in relation to similar products or services, you need to check that your name is capable of protection. Trademarking your name is the best protection that you can have, but your name will have to meet certain criteria for it to be capable of trademark registration.
If your proposed name doesn't distinguish your goods or services from your competitor and is too descriptive of your goods and services e.g. Suzanne’s Legal Services, then you probably won’t be able to trademark the name. There are other criteria that you need to meet (such as the mark not being deceptive, offensive or against the law).
The main benefit of having a registered trademark for your business name is that it gives you the absolute right to stop a competitor using the same business name. Without a trademark you would have to fight a potentially difficult, expensive and uncertain passing off claim.
Small business owners are often daunted by the prospect of applying for a trademark but the truth is that it is a relatively easy application process that can be done entirely online on the IPO website. The fees are affordable for most small businesses – for UK protection in one class the fees are £175 or £200 depending on what service you opt for. Do be sure to get your application absolutely right though as the Intellectual Property Office does not give refunds for incorrectly submitted applications.
Once the application is received, the IPO publish the application and there is a two month window in which objections can be made, most likely by competitors who think that the mark is too similar to theirs and will risk confusion. If your application isn’t challenged, you should be the owner of a shiny new trademark within 4 to 6 months from the date of your application.
Once you have your registered trademark, you can start to use the symbol ® to warn people off using it, but be warned that to use it without owning the registered trademark is a criminal offence.
Once you have your trademark, if a competitor comes along and starts to use your name, then a simple “Cease and Desist” letter (essentially a letter stating that you own the trademark, they are infringing it and if they don’t stop using it you will take legal action) should see them off… However, do be very careful not to make an unjustified or groundless threat, as making an allegation of trademark infringement could result in the other party bringing a claim against you for unjustified threats. If in doubt, consult your lawyer!
It might also be worth you registering your business name as a limited company if you think at any point in the future you may want to trade through a limited company, in order to prevent anyone else from taking the name. The company can remain dormant until you want to trade through it, but you must file dormant accounts and annual returns. It is also possible to trade through a limited company that has a different name to your trading name but most businesses like the name to be the same. A common mistake is thinking that registering a company name will give you the same protection as registering a trademark – it won’t; all it does is prevent someone else registering a company with the same name, they could still trade under your business name if you haven’t trade marked it.
So if you haven’t already taken steps to trademark your business name, perhaps this is something that you need to put on your ‘to do’ list.
Have you taken the step of registering your business name as a trademark? Did you encounter any difficulties? Have you actually enforced your rights against a competitor? Share your comments here and let other small business owners benefit from your experience.
© Suzanne Dibble 2013
Disclaimer: The information contained above is based on English law only and is provided for information purposes only. The contents of this article are not intended to amount to advice and you should not rely on any of the contents of this article. Professional advice should be obtained before taking or refraining from taking any action as a result of the above contents. Suzanne disclaims all liability and responsibility arising from any reliance placed on any of the contents of this article.