Advice on protecting your brand - Trademarking
Trademarking case study and advice to small business owners
In this case study I'll share my experiences with you about why I needed to protect the CARV brand and how I went about doing this. You’ll find out the lessons I learned and how to protect your brand.
Becky Cocker, CARV, March 2017
It’s better to be safe than sorry. This motto applies in business as much as it does in daily life, especially when it comes to protecting your brand and product. Imagine you worked tirelessly for years - as many small business owners do - developing your product, building your brand profile, getting widespread recognition and respect for your name and logo, only to find later down the line that another business has the same name and are forcing you to stop using yours. Devastating, right? Well there is a way small businesses can protect themselves, their products and their brand - it’s called trademarking.
Firstly, I need to caveat that I’m no expert in what is known as Intellectual Property law; however, having just been through the process of trademarking CARV, I have gained some knowledge and wanted to share this with the small business community in case it’s helpful for others.
The trademarking process on paper seems fairly straightforward - you choose your name and logo, choose the categories you want it to be trademarked in (for example, fashion design), and submit a form with a small fee. Simple, right? Well yes, except for the fact your application then goes out to consultation and is open to challenge by others. This can make for a complicated and drawn out process.
When I submitted the CARV trademark application it received one potential objection from a London based shoe brand. This objection was was quickly resolved by my agreeing to exclude shoes from the fashion design category. I also then received a holding notice with an intention to object from another party. As the deadline approached, and in fact passed, nothing came through and I thought I was on the path to approval. However, the day after the deadline I received notification of a strong objection from an Italian brand, represented by a top London IP law practice, asking me to withdraw my application immediately.
My initial response was panic. But then I took a breath, engaged my inner entrepreneur, and analysed the objection.
The brand objecting, based in Italy, manufacture fabric and not bags or leather goods. On face value it seemed to me that our brand names were very different, there were no similarities in the logo, we make different products and operate in different markets with an entirely different customer base. Based on these factors, and my limited research of trademarking law, I felt I had a case to push back.
The objector however employed a hot shot lawyer so I felt it best that my response came from a lawyer too. I called around and found most IP lawyers to be prohibitively expensive, focusing on big businesses with large budgets. But I called and shopped around and found a legal firm set up specifically to help small businesses. For further advice following this link.
With the help of my lawyer I engaged in negotiations with the objector which extended over a year. There was a lot of back and forth correspondence exchange with both parties arguing their case, and the process was further complicated by the involvement of an extra set of Italian lawyers. It was clear we were in deadlock so I decided to offer up a compromise solution which the objector accepted - to restrict the coverage of the trademark and to sign a ‘coexistence agreement’, whereby we both agree to operate independently under certain conditions. In the end, as neither party was willing to concede, compromise was the best result as it avoided the need for an expensive tribunal.
For me the process was unnecessarily frustrating, but it gave me an appreciation of the legal issues with branding and the importance of protecting yourself from challenge.
So, what lessons did I learn that might help others?
Some of the benefits of officially trade marking your brand name and logo include:
Avoiding potentially lengthy and expensive legal disputes if there is a challenge to the use of your name or logo.
Protecting your business against enforced branding changes. Think about all that wasted effort on developing your brand if you had to change your name or logo down the line after finding out that someone has already trademarked the same or similar name.
Giving you the ability to protect your brand by ensuring no one uses the same or similar name and logo. This could confuse your customers and affect brand perceptions.
The process is relatively straightforward unless you come up against objections. It’s simply a case of deciding which categories you would like to register your trademark in and sending a simple form to the UK trademark office.
Check potential business names and logos against the trademark register.
Seek legal advice if you are unsure if there is already another ‘confusingly similar’ trademark.
Apply early, ideally as soon as you’ve decided your name and developed your logo.
Cover as many categories as you can afford to give yourself and your brand maximum protection.
Don’t immediately assume that objection has weight - people will try their luck so don’t backdown too soon. Do your own research and analysis and check their objection with a lawyer to see if it has any legs.
There is likely to be a compromise solution to any objection and most objectors will want to avoid going to tribunal. If you feel you have a case, stand your ground and try offering up a compromise before backing down.
Check the trademark journal regularly (at least every 3 months) once your trademark has been approved to make sure the same or similar trademark is not proposed.
For further advice and links to contacts and resources, following this link to the CARV business advice notes.