Trade mark talk podcast – what is a trade mark?

In this first edition of Trade mark talk, Legal Directors Maria Peyman and Melanie Harvey discuss what is a trade mark?

Below is the transcript from this podcast. Recorded during lockdown, February 2021.

Maria Peyman:  

I am Maria Peyman. I am a Legal Director at Birketts and I am part of the Litigation and IP Team specialising in intellectual property disputes. I am here with my colleague, Melanie Harvey, who is also a Legal Director based in our Norwich office. Melanie is part of our wider Intellectual Property Team and has a particular specialism in trade marks and branding.

Thank you, Melanie, for doing this today. I thought it would be helpful to give listeners a little insight into what makes up a trade mark because often, I think you will probably have a similar experience of this, people will come to you and say I need a blah or patent, design right, trade mark, or I have a blah and then it turns out, actually, what they need is something maybe very different. So not a patent, but maybe a design, right, not a design, right? Maybe copyright? It’s sometimes difficult for businesses to understand exactly what it is they need so by doing a series of short podcasts, I hope that we’ll be able to give our listeners a little bit of an insight into what all the different IP assets are, what all the terms mean the, common ones, so that they can understand whether what they have is maybe a brand or whether it’s something that’s a product and needs to be treated in a different way. I think it would also help people to understand how they can layer their protection so that if something that is subject to a patent then moves on in time or the years pass and the patent expires, then they will be able to rely on other forms of intellectual property rights such as a good brand to give them added business advantage going forward.

Can you tell me what a trade mark is and how it is a business asset?

Melanie Harvey: 

Okay. Nothing like starting with an easy question because pretty much a trade mark can be anything. All it really has to achieve is the ability to identify one undertaking from another undertaking operating in the same or a very similar industry because what you want it to achieve is that you stand out. I often hear of reasons behind choosing names with ‘oh everyone seems to be using this name, and I quite liked it’. Well, unfortunately, that does not really work well as a trade mark because you want to be the person standing out in your area of interest. So you either do it through the appearance of it, to make it more distinguished or more so immediately people grab hold of it, and think oh, I like the look of this, and I understand the message it’s portraying, because that’s the other thing, a lot of people feel that they have to choose something that imparts a message but all it needs to impart is who you are, and what you’re offering so that when people see this, they know, that’s where they want to be, because that’s why they’re looking for you in the first place, because I’ve dealt with you in the past. I think the reason it’s a business asset is because a lot of people, whether you’re setting up in your first business, or whether you’re looking for investment, or whether you’re just operating, people want to know how committed you are to your business offering. By investing in a trade mark, that is your brand, your umbrella brand, it is your name of your company, or its individual products that you are putting out there, it delivers the message that you are invested in what you’re doing, and you’re behind it and banks will recognise that as an asset, and they will let you mortgage against it. At the end of the day, it is a physical piece of property, it is a valuable asset to your company, and you can do pretty much what you would do with any sort of item of property.

Maria Peyman:  

That is quite keenly borne out by the current situation. If you think about it, the business has ‘gone under’ to use a colloquial term and is being broken down and sold off. Yet, I think sometimes people will find it difficult to understand how something that can generate such a huge value in terms of in the insolvency or administration process, and yet a company cannot keep going. That demonstrates exactly what you have said, you know, people have attached themselves to, for example, Topshop and it is really that that has that value just that name alone. Therefore, people can buy that and buy what is known as the goodwill to go with it to use it again. Therefore, I think in the current climate, we have clear examples of how that is actually working. I think the problem that sometimes I come across is that people get confused a little bit between a business name. So I am a company, versus I am a limited company.com and then I am a limited company as a registered mark, very poor examples I appreciate, but what is the difference? You know, people will often say, but there is my company name, it is my company name, or it is my domain name and then you get into this quagmire where the distinctions occur and what they mean.

What is the difference between company name, limited company.com, limited company, limited company as a registered company etc?

Melanie Harvey: 

Well, in an ideal world, you would just have one, and it would function in all those roles and unfortunately, we do not have an ideal world. The biggest thing, the difficulty, I think encountered by people is, they think either one of them does all three, or they believe that having one of them gives them the right to all three. Now, the reason they want to focus on the trade mark is, it is the only form of protection that protects the name. A name cannot be protected by copyright; it is too small to be a literary work. Therefore, if that is your name of your company and you want to protect it, and push people away from what you are doing and not getting too close to you, then you need a trade mark registration. Now, if it is your company name, if you have come from a sole trading position to being an incorporated company, then you will be on Companies House. Now, there are two different schemes here, entry into the Companies House register, you only have to have a degree of separation from the ones above or below you. Sometimes it’s just parenthesis in the UK that separates you and sometimes it is a little bit more. From a trade mark perspective, you have to be distinguishable from others in your area of interest, you have to confirm where you’re soliciting your products or services or a combination of both and you have to be notably distinguishable from people to avoid the risk of infringement. Equally, you want it to function as a trade mark that sets you apart from anyone else. Now, the other thing you mentioned was, of course, the URL, the domain name. Valuable at the moment because everything sensibly has gone online but again, if that’s your trade mark, then that’s brilliant, because you can prevent cybersquatting but if all you’ve got is a URL and you haven’t done the due diligence to find out who else is operating under a similar name, then they’re going to be quite concerned. So you do need everything and there is a rollout strategy that works best and if budget permits, you really want to do the trade mark first, for no other reason, than if someone is squatting on that domain and it’s detrimental, the ICANN is there in order to get web domains transferred back to a rightful owner, but you have to show that you are a rightful owner and a registration for a trade mark will help you in that regard. Whereas, if all you had was a company name and an entry on a company’s register, that might not achieve the same end, because you might be trading under a different name. So where as is it is your company name, it might not necessarily be your trading name, but it does not carry the weight or the cache that a registered trade mark does.

Maria Peyman:  

I think that leads me into one of the questions. I obviously in my role, only ever see the fallout of where it is all gone horribly wrong.

Melanie Harvey:  

[Laughing] That’s not to say I don’t.

Maria Peyman:   

No that is very true, but what do people need to consider? I mean, I have some thoughts on this, but I am sure you have a whole list of things. What do they consider before they start investing in their brand as they see it? I often meet people who say but I have invested so much in this. This makes my job so much harder to explain, you may have done, but we are now having to unpick because you did not do some due diligence at the beginning. Therefore, if someone’s starting something new or developing a new product, what do they need to consider before they start investing in graphic designers and buying new domain names and doing all their marketing leaflets. What should they really consider?

What do I need to consider before registering a company?

Melanie Harvey: 

I would say that they need to sort their baseline. The hard work is, what is it they are going to put out there? Are they going to be selling products? Are they going to be offering services? Are they going to be doing a combination of both? Having worked out what they are actually putting out there, what their offering is going to be, then they need to know what brand they are going to use in order to achieve that. Now, there’s many reasons why people pick brands, it is something very personal to people, or it is something that has a side message to that individual. There’s any number of reasons but it has to be something that you are free to use, never mind that you want to be free to go on and register, the most basic element is, is it available for you to use in that context? Because you are allowed to use the same or very similar trade marks as other people as long as how you are doing it is distinguishable from them. And the classic example that I regularly quote, being in Norwich is of course, Lotus, because you’ve got one entity that’s high end cars, you’ve got another entity that provides yummy, delicious biscuits that go with my espresso and keep me sane, you’ve also got paper towels, they’re all branded Lotus and nobody ever confuses them or thinks they’re linked in any way. That is the situation that the prospective trade mark person or person coming up with a brand wants to emulate because they want to be the standout in their field. They want to be the name that everyone goes to but they do not want to be confused with anyone else. Therefore, I think the sensible approach is to come up with a shortlist and then do their due diligence and see what is already operating out there.

Maria Peyman:  

How would you? So what are some basic steps they can take? Before I come to you, because I think I’m a start up, I don’t have oodles of cash and what I don’t want is to be asking you to look at three possibilities of a name if I have ten, so I’ve narrowed down three, what can I do to help myself before I come to you and you knock out my seven favourites in one fell swoop?

What can I do to help myself before seeking assistance registering a company?

Melanie Harvey: 

Well, if you have connection to the internet, then you are ahead of the game because you can do some internet searches. So I would always recommend having a look, putting in the key terms, the ones you are interested in, tie it to the UK, see what comes back, the last thing you want to worry about at this stage because trade marks are jurisdictional based so they’re there mainly on a per country basis. So being based in the UK, you want to know what has an impact on the UK. So look at it that way, see what comes up and if someone is doing something very similar to what you are doing, then have a serious look at how they are doing it and if there is any pointed difference and if there’s not enough, then I would consider something else. Now the UK IPO (Intellectual Property Office) has got a search engine that will allow you to actually have a look and put in some text criteria to see what is already ahead of you in the queue. So potential trade mark applications. So you can do that and if certain things come back that you do not understand, then we’re around to explain and assist in helping understanding what that really means and whether that means a rebrand or whether that means you have to add something else to your trade mark to separate you sufficiently that coexistence might be a possibility. I think if you are at the position where you are starting out, then you need to find something that makes you stand apart, you cannot have too many entities too close to you, because you are entering a battlefield that you should not be focusing on because you want to be focusing on getting your business up and running. Whereas a nice safe bet on the trade mark front, having done this searching and highlighted your areas of concern, then you can push forward with it at that point.

Maria Peyman:  

So I suppose as well, we are looking for originality

Melanie Harvey:  

And the library, sorry, if you’ve got a library card, most libraries have now gone online, and I’ve got two apps on my phone that are amazing because I get to use all the magazines and various other things and that builds apparently. But most libraries have a business section and they can help you with this. So you can get them to do the research for you and they can go and see what is listed and everything else and that might actually help you narrow down what you might want as your short list.

Maria Peyman:  

That is really interesting. I have a library card, rarely use it. Okay, I suppose we are looking for originality aren’t we as well?

Melanie Harvey:  

Oh, yes, you want to stand out and invented words. I mean, I love that. Xerox and all of those.

Maria Peyman: 

Yes, ‘House cleaners of Norwich’ is not going to get you very far

Melanie Harvey: 

My biggest dilemma when I am in a conversation with a prospective rights holder and they deliver to me the ‘baby’, because that is what it is. They’ve invested time and effort in it and it’s something very precious to them, and I have the conversation that goes along the lines of, you can’t register ‘soap’ for soap, there are certain things that a trade mark has to be in order to be eligible and so you can’t have something that’s descriptive. So you can’t have something that’s generic or in common usage, because it doesn’t have the ability to stand out because why would they associate you with this product, when they see 500 other people using something very similar and then they’re going to be directed to them and any potential for income and trade that you were hoping for goes down the queue to someone else. So you have to stand out, the look, the sound, anything you can do for it. So yeah, you cannot use ‘soap’ for soap. That is not a good idea. Because I always have the conversation, ‘but it tells people what’s in the box’. ‘Yeah, but that is not what a trade mark needs to do’. It needs to do a little bit more.

Maria Peyman:  

You want them to pick your box. Never mind what is in it.

Melanie Harvey:  

Exactly.

Maria Peyman:  

Are they expensive? I suppose there is this urban myth that everything to do with intellectual property has to cost a lot of money. I, of course, do not hold a similar view. And I know this is sometimes ‘How long is a piece of string?’, but is it an area where you can get capped costs, you can get an idea of costs depending on what you want to register and where you want to register it. It is not one of those areas where you start here, it snowballs very quickly, and you have no control over that.

Is it expensive to register a company name?

Melanie Harvey: 

The nice thing about any form of IP other than perhaps patents, which I would say instantly, you’re talking into the 1000s irrespective of the field of interest, but at least on the trade mark side of things, it continues in stages, and then manageable stages, some of the stages, you can do yourself, some of the stages you’re going to need someone like me to help you with, just because I make it easier and I sort of take on the risk and that’s something that people are very happy to offload because when they’re in the process of setting up a new business, they don’t want to be focusing on something else that takes them away from setting up the business. Having done the hard work of coming up with a brand name, It’s quite normal for that to be sort of given to someone like me to be responsible for and sort out for them But in communication with them, there’s nothing I would do that isn’t with their authorisation. So I discuss with them but it is one of the things that they can let go of in order to focus on the day-to-day business. But at the same time, yes, there are hourly fees. But what most people in the industry tend to do is do a fixed cost for filing, for drafting the actual content to go in. That could take you all the way through. That could take you to the arrival of the examination report. But having discussed with someone what their trade mark aspirations are, and the fact that they want to go the formal registration route, then you can actually go through the process of what’s involved, and then break it into manageable stages, and decide who does what because, pretty much, we are a one stop shop when it comes to trade marks. We can do as little or as much as people need us to do for them.

Maria Peyman: 

Then do we determine the goods and services? Because obviously that does have an impact on costs, usually, the more you want to cover. But it is more than that, isn’t it? Because we have all seen those trade marks, where they list everything under category, or class five. I am sure you will explain this, but a class can cover a multitude of sins, and very, very different products or services depending. What are the sort of pitfalls? Because to a layperson, you think I will just put everything in in class five, because then I definitely will not have a problem, and no one will ever be able to come near me is that a good idea? Is that a bad idea? And if it is a good idea, how do we determine? Is that where you really come into your own, helping the clients determine what goods or services they need to apply for?

What goods or services do I need to apply for?

Melanie Harvey: 

I think if someone was hoping to do most of the filing themselves, then it would be a very good investment to use someone like me or other people in the profession to actually say, okay, there are 45 different classes of goods and services, the first 34 cover products, 35 to 45 cover services. We’re now going to discuss what your aspirations are, what you’re going to be presenting to the market at large now, where you see yourself in the next 10 years and everything that you want to cover in that period, because from that, I can then say, right, okay, these are the classes that you need to be focusing on. You either do it in a, let’s grab everything now, so that it’s there and waiting for me to make good on my promise to use it or you do it in rounds of filing, you take on board that you’re not going to achieve everything from the get go because usually there’s budget constraints, but you get the core elements covered. Then you get out into the marketplace, you trade, you get money coming back in and then you reinforce your brand, by successive filings covering the other classes that are perhaps when you first started aspirational and then because of how your sort of business develops, become more important. So it is a bit of a black art, because you want to make sure that your core material is covered but it is also a process of revisiting. So I think if there was one element you want someone else to do, then I would recommend someone who operates in the trade mark industry on a day to day basis to help you in that element. The rest you can do yourself, you can submit an application and everything else but I have met so many people who have done it themselves and they have either encountered an opposition or they have encountered a difficulty and I have looked at their scope of protection and said things like you are not actually covering what you are doing. So all of that expense has been wasted. And you do not want to be in that situation in a start-up. You want to allocate your money wisely so I would probably recommend that that is where they need to invest their funds in because the rest they can do themselves.

Maria Peyman: 

And can you talk me a little bit through how you apply for a trade mark?

How do I apply for a trade mark?

Melanie Harvey: 

Oh, yes. Thankfully, everything nowadays is online. So the UK IPO website is set up so that you can very easily go through the process, but you need an understanding of scope that you’re achieving because definitely once you’ve sort of filled in your details of who you are, and what your trade mark is. A trade mark can be a word mark, it can be a figurative mark, meaning that it could just have graphic elements, no actual textual elements; it could also be what we tend to call a logo. So it has textual and graphic elements in there. It can be an unconventional trade mark, it can be a colour, it can be a sound, any number of different things are eligible, a shape, there’s many things that are eligible for trade marks. When you’re going through the online filing, you can specify in the relevant boxes what it is and upload the images as required so that your physical representation is shown so that there’s no possibility that you’re going to be confused into what is actually being sought protection for. Then the key bit is inputting the goods and services. So these are those 4 – 5 classes that will actually ring-fence and define your scope of protection once you’ve got the registration in place and it’s very important that this is where you reduce the number of errors because having submitted online, you can’t actually make changes, you can limit your scope, you can clarify what is meant by what you filed for, but you can’t add in any extra material other than going through the filing process again. So if you are going the strategy route, where you have multiple filings over the lifetime of your brand, that is not a problem, because you add it in at a later date. But if your sole commitment at this time is to maximize your scope of protection, then you want to make sure that you’re very clear in advance what you’re putting in where because if you put in all possible entries in a single class, there is a good chance you’re going to get an objection from the examiner because what they’re now focusing on is too broad a scope of protection, it’s unlikely that you have an interest, they’re also likely to raise this if you copy what is called a class heading, because we in note form tend to abbreviate what that class is known for. But if you put that all in, again, it is unlikely that you are going to want everything in that class heading. It is a much smaller block of text, but it raises a flag with an examiner because if you are not filing with someone in the profession, they ask themselves how much of that you actually want. So, you are trying to get the core information into your class structure and you are trying to minimize the dialogue with the examiner in order to achieve registration. So the wording achieves that balance for you if you use someone who is doing this on a day-to-day basis.

Maria Peyman:

You have mentioned the examiner, this person that no one ever sees sat in a room somewhere in Cardiff, what do they look for? You’ve touched on the idea of your scope and your classes being far too broad, which is obviously a flag for them But there are ‘soap’ for soap, for example, I’m guessing is going to trigger a little bell. Are there obvious things that they will pick up on?

What does the Companies House examiner look for? Are there obvious things they will pick up?

Melanie Harvey:

Definitely, yeah,

I mean, the thing is, there is two levels of test. The first test they always perform on every single application is, okay, I’m looking at the mark and only the trade mark that is being sought and I’m having a look at what the scope of protection is and my question is, is this descriptive, in the context that it’s being applied for? Is it generic, non-distinctive? That’s what they call the absolute examination, because it’s based solely on the trade mark of interest and they want to know, if it does have the capacity to function as a badge of origin, distinguishing you from others and if they think no, then they will raise an objection based on section three of the trade marks act and that’s just flagging. They think it might be descriptive. They think it alludes or actually describes characteristics of the goods and services, and therefore it doesn’t have the ability to stand out and if you don’t encounter that objection, they go on to what is the relative based examination, and this is when they look at the register to see what’s already on the register and so they’ll see what’s pending, what’s registered, what has elements in common. Now, they are not saying that what they then raise for information, because that is all it is at that moment, is something that is going to prevent you gaining registration. But if it’s a UK National rights holder, as a courtesy, they will notify them of your applications ultimate acceptance and publication for opposition purposes, but they give you a heads up and so you have a chance to investigate yourself, take the proactive position to get in touch, there is no overlap in reality, or the common approach is you sit there and you just chew your fingers off waiting for the opposition period to complete and then you gain your registration at the end of it. It’s quite nerve racking and if you’re in touch with someone in the profession, we can sort of talk you down and know that it’s not as horrific as you feel, perhaps it is at the time.

Maria Peyman:

Thank you. So if you were to, in summary, because we have covered a lot of information. But if you were to have to give one piece of advice to someone, before they embark on the registration that is whether that is with you, or by themselves, what is the one most productive thing that they can? There are two questions actually. One, the best, most productive thing they can do before they apply for registration and what is the best thing about having a registered trade mark?

What is the most productive thing I can do before applying for a trade mark?

Melanie Harvey:

I think the most productive thing they can do is to go onto the UK IPO website and use their search facility for trade marks because that will give them a heads up because they can do a very narrow search. So it is a word mark they are looking for and they actually put the word in that they are looking for, or that ‘contains word’, but they can also find things that are ‘similar to’ and so by pressing that button, it makes the search so much broader. But also, I think, if they are not quite sure what their trade mark is going to be, it gives them the ability to see what other mechanisms people have employed, to make themselves stand out and I think to educate them to actually give them a better idea. Because once they start immersing themselves into other people’s trade marks, they will know what they like, and they will know what they do not like. But I think it is one of those tools that they have to sort of absorb and go through and everything else and I think that should be their first point of call. Because it is a huge eye opener for people because they have an idea, but until they start looking around it, they do not realize really what is out there. That is a completely different approach to someone who has been operating for 10 years and instead of taking the plunge to get formal registration in place. And what was the other question? The other question was?

Maria Peyman: 

So my other question is, what is the biggest benefit of having a trade mark? I think I may have just reworded that question. But the reason I say that is because we often get, and I suspect you do as much as I do, get people who say ‘I don’t really need it’. I will meet people with the benefit of hindsight, who wish they had. So what is it that makes a trade mark so worthwhile? Now, I have a couple of things that I think so let us cover what you think.

What is the biggest benefit of having a trade mark?

Melanie Harvey: 

Okay. For me personally, it is your get off the grass card. Really, because you have invested time and effort, you are creating a brand, you are putting it out there, and you want the ability to push people away. Like I said earlier, with Lotus, you can have the same or very similar brand out there but you have to distinguish away from what other people are doing in order to coexist. Having a registration in place means that any conversations when people are copying inadvertently or whatever, and trading too close to what you’re doing, it’s a very simple business to business conversation and it goes along the lines of ‘Oh, hello, just seeing what you’re doing and quite concerned by the way, I have a registration, here it is, perhaps you can allay my concerns’. That is the level of conversation. Now, if at that point, the copying and the things that are raising the concerns are not changed then it goes to the next level and the next level usually involves a court. Now the courts perception of the relevant rights holder is set by whether or not you have registration in place. Because you have gone through the formal process, you have sought a registration; you have documented your interest. So not having that, and there is a contentious matter that has arisen, it is pretty hard to evidence where your real interest or rights are. I mean, do not get me wrong, there are unregistered trade marks and that does not benefit from having a registration certificate. But the only defence in law you have at that point is the tort of passing off and all the three criteria have to be laid out and be there in order for you to even bring that. Whereas if you have a registration certificate, you have shown a commitment to something and having done that, you then have a duty to police it and ensure that nobody else actually starts making use of it without your authorisation. It just makes all of these processes easier by being able to hold up a registration ticket, because people can see what you have. There is no area for ambiguity. Everyone knows what position they are in, and what they have to do. They might not like it, the whole rebranding, changing everything else like that. Nobody ever likes that. But they cannot really argue against the registration.

Maria Peyman:  

I also think it’s worth bearing in mind that trade marks are without end, providing you pay your rent, your repeat fees, every 10 years, you can keep that going. So if you have designs of handing your business down through your family, and I know people can say that, well, I established my business in 1750, whatever and we’ve used the same name and we didn’t have a registration, I accept that there are those cases but equally, you’re quite right before a court, it’s much easier, there is a presumption because you have a registration, that it’s yours, and you are and it’s then somebody else to say no, that’s not the case. Whereas if you are relying on an unregistered mark, and you have got passing off, it is you that has to do the legwork and says, this is the long history of me using it, putting it to use. Pre internet, that is actually often quite difficult. It is not so bad nowadays, where most people have a digital footprint but it is also that you have it forever. If you get it right and you are using it, you can keep it going for a long, long, long, long time.

Melanie Harvey:  

Yes, I completely agree. Very, very valuable. I mean, the Bass triangle is the one that always comes up as the first sort of trade mark? They say that it is still in use. Yes, the idea of the red triangle is still in use. I do not think you can compare the actual number one trade mark that is still in use but that is a conversation for a different time.

Maria Peyman:  

I think it probably is. Funny thing about that is if you are south of the Watford gap, you do not often see it anyway. It is very much more of a regional brand. I think somebody will lynch me for saying that but it is not as frequent down here. So let us put it that way. Thank you very much for your time.

Melanie Harvey:  

Thank you for asking me I had a lot of fun and hopefully there will be lots of questions that come out of his.

For further information or advice regarding trade marks, please contact Maria Peyman or Melanie Harvey.