Should you protect your brand identity?

by Ross Nicol

BUSINESS names, logos and other branding devices for goods and services can be valuable assets that are wise to protect.

Ross Nicol is a partner in the intellectual property and technology team at legal firm Maclay Murray & Spens LLP Ross.Nicol
Ross Nicol is a partner in the intellectual property and technology team at legal firm Maclay Murray & Spens LLP
A European court case in which a UK supermarket failed to trademark its food product branding highlights the need for businesses of all sizes to secure distinguishing marks.What protection is available for brands?
A registered trademark offers the most robust form of protection. It can add significant value to a business as only the trademark owner may use, license, franchise or sell the mark in relation to the selected goods and services.
There is a choice of registration options depending on the geographical coverage required: local businesses may obtain UK registration only, while larger businesses may consider European or international registration.
In the absence of registered trademark protection, a business’s branding can be protected under the law of “passing-off”, a more vulnerable form of protection.

What can be protected as a registered trademark?
Unique marks which are capable of being represented graphically may be registered, provided they are capable of distinguishing the goods or services of one business from others.
It is possible to obtain a registered trademark in respect of inherently non-distinctive marks if a business’s use of it has resulted in it becoming distinctive. For example, the phrase “have a break” is inherently non-distinctive but acquired distinctiveness as a result of the use made of it by Nestlé. It is also possible to register colours, sounds and smells that have acquired a distinctive character.
In a recent European case, a supermarket’s application to register a trademark in respect of its “Deluxe” branding was refused for lacking distinctive character. The EU General Court found that the word could not distinguish the goods of this supermarket from its competitors and therefore could not be afforded trademark protection.

What protection do unregistered trademarks have?
Branding which has not been registered as a trademark or which has failed in the registration process may still be protected as an unregistered trademark by the law of passing-off. Businesses relying on passing-off must establish that they own and have built up a reputation in the mark and have suffered a loss as a result of someone else using it in a way which misleads or confuses customers.
A key issue when relying on the law of passing-off to protect a mark is being able to show the mark generates goodwill – the attractive force which draws customers to a business. Whilst not impossible, this can be difficult and expensive to do.

What are the consequences of failing to protect a brand?
If a brand is not registered as a trademark, it can be an expensive process to prevent a third party from misusing it under the laws of passing-off.
Once a mark is registered or otherwise in use, it is important for businesses to remain vigilant and ensure that the mark is not being misused by third parties. Failing to enforce rights in a mark can result in the mark losing its distinctive quality and therefore losing its eligibility for protection.