Balancing act: How to use trade marks to protect your brand without risking your reputation

It is all too easy for well-known brands to attract negative publicity for aggressively defending their trade marks. The Supreme Court recently decided that the British media company, Sky, had obtained its trade mark registrations partially in bad faith, and were critical of many elements of Sky’s overall enforcement strategy. As a brand owner you need to be able to protect your brand, but must balance your legal arguments with your exposure to the court of public opinion. Experts Iona Silverman, Dan Cahill and Kishan Pattni from our IP and Media team explain how to get that balance right.  

Protect your brand

First, seek to register all key brands/sub-brands (including words, logos or other graphic devices), in all of your key trading countries. That will enable you to retain control of your branding (enabling you to licence the use of your registered rights where appropriate), and ensure you are best placed to stop others from using branding that is too similar.

Carry out clearance searches

A common pitfall faced by business owners is to put in time, effort and money into the creation of a brand, only to find out that another business is already using something identical or similar. Clearance searches will save you time and money by ensuring you are clear to use a brand before you start investing in it.

Register marks in the form that you use them

Although this sounds obvious, branding evolves over time. To be able to enforce your brand as you use it, and avoid cancellation actions for non-use, you need to ensure your trade mark registrations reflect your actual branding. Further, the Supreme Court’s decision in SkyKick highlights the importance of applying for a trade mark for goods and services for which you genuinely intend to use your brand.  A lack of intention to use for certain goods or services can make your registered rights vulnerable.  

Avoid overly broad specifications

Word your specifications of goods and services clearly and precisely. Use of overly broad terminology could have a detrimental effect on your scope of registered protection (and going forward, it’s possible this could result in delays to the issuance of registration). 

Collect evidence of use

Once registered trade marks are more than 5 years old, to enforce your rights you need to be able to evidence use of registered mark. Keeping a note of where you have used your registered trade marks (online, on social media, in marketing emails, in leaflets, in advertising etc) will be helpful. This can also help to evidence that you have goodwill or reputation in elements of your branding, useful particularly if you are starting up or transitioning to a new brand.

If you spot an infringement:  

Think public relations (PR)

High profile disputes are often picked up by the press, often leading to the court of public opinion passing judgment before the matter gets to the legal courts. That doesn’t mean you shouldn’t enforce your trade marks, but you should plan to deal with any fallout. If you think the dispute will be covered by the press, or reported on social media, you should engage PR specialists early on, so that you have a strategy in place. 

Establish your rationale

Are you seeking to monopolise a name at any cost, or just for the goods and services you use it for? Is it likely that you would succeed if the dispute went all the way to court? Being clear and realistic with your objectives is key to obtaining the best resolution for your business, and also for explaining your actions to (internal and external) stakeholders.

Know your opponent

Are you writing to a business or an individual? How large is the business? Have they made any investment, for example in a website or product that they have launched? Do they have a following on social media? An internet search is a simple but key step. 

Consider content and tone

Use that research to inform the content and tone of any cease-and-desist letter you send. These letters are “open” correspondence, meaning they can be shared in court and as such could ultimately be published, including on social media. This creates an opportunity for the public to scrutinise and critique your how you do deal with other businesses. If you are writing to a company that is much smaller than yours, take care to get the right tone and avoid being unnecessarily heavy-handed or aggressive. 

Think big picture

Try to be rational about what you're trying to achieve. Take a step back and consider the possible PR consequences, as well as the legal merits of your case, and build strategy from there.