Over the years I have seen many businesses (and their professional advisers) make common, easily avoidable mistakes, when it comes to looking after their brands. Here are five of my 'best practice' tips that you might want to follow, in order to make sure you do not make the same mistakes:
1. Before launching a new brand name/logo for a product or service, carry out a TM 'clearance search'.
If you don't, then you may get a nasty shock when an earlier brand owner insists you pull your product/ service and change to another name/logo, or otherwise they will sue you for TM infringement. Better to know the risk before launching rather than having to rebrand the product/ service post launch (and pay the other side's legal costs and compensation to them).
2. Put TM watching services in place
If you want early notice of someone planning to trade under the same, or a similar, trade mark to you then you need to put a formal TM watching service in place. This will notify you of third parties that file TM applications for marks that are too close to your own. You can then oppose those applications and possibly prevent the launch of the planned product/ service under that mark, before it reaches the marketplace.
3. Plan ahead
You may currently only be using your trade mark for a limited range of goods or services, or in just one or a few countries. However, if you plan to extend the range and/or territories in which you trade over the next few years then make sure you file TM applications that are sufficient to cover the additional goods, services and/or countries, well before you plan to do so. In many countries you can register a mark and not have to use it for up to 5 years (3 years in the US) post registration before it can be revoked on the ground of non-use. The danger with not filing TM applications well before your planned extended launch date is that you may find when you get nearer to the launch date that someone else has already registered a TM that will now prevent you from doing so and also from using it for the additional goods, services and/or in the countries in question.
4. Always review
Don't fall into the habit of thinking "I have registered my TM, so that's it, no more to do". You need to make sure that not only do you renew the registration when the time comes, but that as your business develops the registration you have is still relevant. For example, you may over time change the visual appearance of your mark, yet fail to file new registered TM applications for this new look. Or you use the mark for different goods than those for which it is registered.
5. Register your TMs in China (or wherever else overseas your branded goods are made)
If you have your branded goods made in China for you then you need to make sure your brand is registered as a TM in China. If not, you may find someone else decides to highjack your brand and register themselves as the owner of the TM in China. Once registered, they can prevent you from exporting your branded goods out of China to their ultimate destination (unless you pay them a hefty licence fee, or you buy the TM off them for a significant sum of money, or you succeed in getting the mark off them via the relevant legal process in China - with all the uncertainty, delay and cost that comes with that).
