North East Businesses Must Ink Trademark Protection Papers, Says Legal Expert

Intellectual property management

08.12.2006

With Biro celebrating 60 years since its UK launch, a leading lawyer is warning the regions businesses they must actively protect their brand names or risk losing their benefits.

Jason Dainty, an intellectual property solicitor at national law firm Irwin Mitchell, with offices on Grey Street, Newcastle, is concerned many North East businesses failing to register trade marks and actively police abuses of them may suffer infringement problems like Biro, which is now a widely used term for all ball point pens.

He said: "Forgetting to register trade marks or seeing them as an unnecessary expense, are typical mistakes made by businesses.

"Some also innocently believe registering company or domain names gives trade mark protection, but unfortunately this is not the case. Trademark rights can be acquired over time with use of the relevant mark, however, such rights are often uncertain and will not exist until there is a significant amount of public recognition.

"Once granted, registered trade marks are effective from the filing date and so rights can start even before use or entry into a market. Plus, registered rights are seen as stronger, so when infringement occurs, the matter can often be resolved without the need for costly legal proceedings, as infringers often quickly back down after receiving a letter from a specialist solicitor."

Brand name intellectual property

Mr Dainty said big brand names, such as Portakabin, based at Huntington, near York, are well-known for rigorously protecting their trade marks.

He said: "Their infringement claims, often about the use of their trade mark terms, are frequently upheld as the company has demonstrated from the outset its desire to protect them."

Mr Dainty said it was important that businesses in the North East conducted full trade mark searches prior to choosing brand names and register their choices as soon as possible, ideally before they started trading.

He said: "This is good practice as if you don't register your brand and conduct searches beforehand, you may struggle to stop others using it.

"Choosing a name already registered by another company is akin to picking a fight and waiting for the first punch. If two companies select the same brand name, it will be the one who registers the trade mark who owns the rights, irrelevant of who came up with it first.

"This can also be an expensive lesson for longer established companies who've invested in brands over many years, but failed to protect them.

"Registered trade mark protection is the only real way of being sure about your position when other companies start using your brand and businesses need to acknowledge their importance, if they are to protect their products and corporate identity in the long term."

Mr Dainty said North East companies need to be vigilant and police trade marks to stamp down on infringers. They should also be cautious about over marketing in the early days.

Intellectual property expert

He said: "In the rush to grow awareness and gain acceptance of new innovations, many companies try to make brand names part of consumers' common vocabulary, but while this can deliver quick results, its also dangerous without safeguards in place.

"Under UK law, even when companies register trade marks, they can still lose this protection if they are deemed to have actively encouraged consumers to use a brand name as a generic term.

"Hoover is a prime example of a trade mark owner that has experienced difficulties over the years. Whilst acknowledged as a manufacturer of branded electrical goods, in reality, it has also become a term synonymous with all vacuum cleaners and as such, Hoover has had difficulties enforcing its brand from time to time.

"Perhaps not surprisingly so, with people using the term "hoovering" to describe the machines use and it appearing in many dictionaries."

Any businesses concerned about registering trade marks or their brands becoming synonymous with products can contact the Irwin Mitchell intellectual property team on 0370 1500 100.