How to Create a Trade Mark, Protect it and Build your Brand

Liam Birkett

Liam M Birkett

• Publisher: Liam Birkett
• Year: 2014
• ISBN:
  9789385186714
• Edition: 1
• Topic: Business
• Subtopic: Marketing
• Index: Business

You will benefit from knowing the direct route to creating a strong branding. Everything in this book is fully supported with a wide range of examples from real life experiences. I will save you time, money and heartache by telling you what to do and what to avoid. Read how dangers can be avoided, businesses improved, new angles for old business, create new lines and obtain free publicity. Learn how to go about devising your trade mark. The essential steps to ensure that you can use, register and protect it. Read how easy it is to add value to your brand and use branding to get free publicity. I will save you time, money and heartache by telling you what to do and what to avoid. You will benefit from knowing the direct route to creating a strong branding. All that you will read in this book is fully supported with a wide range of examples from real life experiences that illustrate each point. About Author
Liam Birkett is changing the way many people and firms do business. No matter the size of the firm or the budget, his refreshing enthusiasm, insight and expertise create business ideas and turns them into reality. Liam began in office management before moving into sales and marketing. He was involved in the launch of Mace and VG group in Ireland. His experience extends into wholesale, retail, cash and carry, and consultancy on a national and international basis. He worked for advertising agency O’Kennedy Brindley Advertising (which became Saatchi & Saatchi) before co-founding design and marketing consultancy Bernardini, Birkett & Gardner Ltd. For more than 20 years, his firm was responsible for corporate identities and marketing initiatives for blue-chip companies and SMEs. His unique skill is to see matters from a design, marketing and sales perspective. Coupled with his comprehensive understanding of intellectual property, Liam can generate a unique way of looking at existing or new business opportunities. Many people have good ideas, products or services but do not have the ability to commercialise them. In the absence of a worthwhile promotional fund, they cannot obtain essential media exposure. Liam can show them how to do it. Being the creator of brands and an inventor himself, he has ‘been there, done that’. Liam is sought out as a pundit on intellectual property matters and has been repeatedly asked to speak to university classes, business groups and professional bodies, both national and international. He is a consultant expert to the European Commission Framework Programme and past president of the Society of Designers in Ireland.

CHAPTER 1 - TRADE MARKS AND MISCONCEPTIONS

In this section you will learn how to go about creating a trade mark. The misconceptions regarding a company name. You will see that it does not have the same scope, or benefits, of a registered trade mark.

Similarly, a domain name registration also has limitations. Its shortcomings should be fully understood and appreciated.

A Business Name Registration (a stipulation that relates only to the Republic of Ireland) does not give you permission to use that name in trade. Nor does it bestow exclusivity on that name.

You will appreciate how all of this impacts on you when you begin the task of creating your own brand.

CREATING A TRADE MARK

Over a great many years I have worked for clients developing new trade marks for them, sometimes in conjunction with my brilliant partner, Walter Bernardini. This became all the more challenging for me as my knowledge extended into knowing more about the legal stipulations and the requirements to obtain trade mark registration.

LOGIC AND PROCESS

During all this time I have been asked constantly where the inspiration comes from in creating a trade mark. In this book I want to pass on to you the logic and process used. At the same time I will acquaint you with the fundamentals in relation to the trade mark registration process.

USE AND REGISTRATION

It is one thing to come up with a clever mark but it is an entirely different challenge to create one that can be legally used and protected. You need to ensure that you will not infringe the existing rights of others. That is, that someone else does not have an identical or confusingly similar trade mark, for the same goods or services, as you intend to use. If the way is clear then your suggested mark is capable of registration as a trade mark in the class of goods or services you wish to cover, in your targeted countries. When granted, you can then enjoy exclusive rights to its use.

DEFINITION OF A TRADE MARK

The following are the essential points relating to the creation of a trade mark. The legal definition given is as follows: “Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.” A trade mark acts as an indication of origin and level of quality and reliability. A Rolls Royce car comes from a specific company and will be associated with a high level of quality.

FORMS OF TRADE MARK

These include, among lots of others, words, symbols, logotypes, letters, numerals, colours, shapes of goods or their packaging, sounds, smells and slogans.

LIMITATIONS

Because trade mark registration bestows exclusive use in the market in which it is registered there are limitations as to what can be registered. (But it is possible to have the same trade mark for completely different goods, for example POLO for a car (VW POLO) and for confectionery (POLO mints).

ABSOLUTE AND RELATIVE

Refusal can be on 1. Absolute grounds, that is, the Official Examiner (the official in the Patents Office responsible for adjudicating on trade marks) rules the mark to be descriptive or otherwise lacking in distinctiveness and 2. Relative grounds, that is, it infringes earlier rights.

BEST TO AVOID

One should avoid personal names (Jones, Harry’s) because a person can honestly attach their own name to their products or services; geographic names (London, Florida) again, if that is where they originate then the name of the location can be used by others; descriptive trade marks (Fresh, Cool) will be considered descriptive of their characteristics; laudatory terms (Smooth, Awesome) may be judged to be descriptive, deceptive or misleading and be difficult to register or will prove to be problematic at some point in their use.

ANOTHER FORM OF PROTECTION

While registration is the best and strongest way to protect your trade mark, certain aspects of branding may be protected by other means even in the absence of (or perhaps pending) trade mark registration.

COPYRIGHT

One of these is copyright. Copyright can provide protection for any original literary, dramatic, musical or artistic work (and others not covered in this book).

LOGOTYPES

For example, copyright protection may apply to some brand elements. Probably the most obvious of these is a logotype. That is the distinctive way in which a trade mark is designed. A classic example of this is the famous Coca Cola logo. Such an element may be protected because it can be judged to be an original artistic work.

SLOGANS AND TAGLINES

However, other brand aspects may also enjoy copyright protection, such as musical jingles (if it is an original musical work). So too, potentially, can a slogan or tagline (it being considered as an original literary work).

AUTOMATIC, INTERNATIONAL AND FREE

Copyright arises automatically upon creation of a protectable work. As a result, it is free and does not need to be registered and the protection extends internationally. That said, it is important to recognise that copyright only protects against actual copying. In many cases this means that it may be difficult and expensive to prove that a competitor has copied your copyrighted brand features.

PROVE ITS EXISTENCE

Moreover, because copyright is not registered, in the event of a dispute, it is necessary to prove both that copyright subsists (that means it exists) in the infringed mark and that you can demonstrate ownership of the protected matter.

LIFE PLUS 70 YEARS

Most businesses are more concerned with the present and near future rather than the long term. However, it is worth noting that, in most instances, copyright expires 70 years after the demise of the author of the copyrighted work.

TRADE MARKS CAN BE PROTECTED FOREVER

In contrast, a registered trade mark can be protected in perpetuity if it is put to proper use and is renewed every ten years.

LIMITATION/CHALLENGES

In summary then, logos and possibly also other brand elements may automatically enjoy some level of protection under copyright even if those features are not the subject of trade mark registration. However, the limitations of, and challenges in enforcing copyright mean that it is almost always advisable to register your trade marks rather than merely relying on copyright protection.

THE CREATIVE PROCESS

Taking all of the above into consideration this book elaborates on the creative process itself and how, in my personal experience, I go about creating suitable marks. It is, of course, a personal method but one which will facilitate you to follow the same route or inspire you to find your own way to meeting the challenge.

BUT FIRST

However, before exposing myself, so to speak, let’s set you a task. You come up with some answers to a trade mark test I set. Refer back to what you have already read.

Take in what is needed, that which could be grounds for refusal of a trade mark and that which is to be avoided. This exercise will refresh your memory and arm you for the test.

To whet your appetite and test your capabilities in this area here are a few challenges with which to wrestle.

1. A funky new bag, specially designed to carry a laptop computer, must have a catchy, memorable trademark. An overall trade mark for a unique range of sandwiches, as well as, trade marks for some of the sandwiches on offer.

2. You are tasked with the job of coming up with a suitable trade mark for a new design of kennel for dogs.

3. A leading ladies fashion design house requires a distinctive trade mark that highlights the different colours as the seasons change.

4. For the kiddies market a trade mark for an innovative sweet product.

5. Fashion jewellery whose trade mark will exclude expense and exclusivity.

6. A trade mark for a fruit and vegetable company.

7. A selection of sea food products needs a trademark that relates to that industry.

Later in this book you will read about the trade marks that were devised for all of the above and the logic behind their creation.

HERE’S HOW I GO ABOUT THE TASK

Although it is possible to select a word, or words, that have no reference to the goods or services to be trade marked, I prefer the covert reference. I do this for a number of reasons. They are all aimed at assisting the target customer to remember what is on offer and to facilitate promotional activity. This has many benefits in that it often offers a great deal of free publicity potential. If something is quirky it captures buyers and media attention.

SOME EXAMPLES

So let’s take a few examples. Some of these were registered as trade marks, others are for hypothetical products or services but illustrate the crea...