By Rob Davey – Senior Director, Global Services, Thomson CompuMark
From new risks to new regulations, the evolving trademark landscape is an inevitable consequence of the changing business environment in general. In today’s digital world, it is the pace of change which presents the biggest challenge for trademark owners, IP professionals and the legal side of the industry. New global markets, emerging market channels and the impact of the Internet have all played significant roles and contributed to the demand for quicker, more comprehensive trademark clearance searches.
Clearing and launching new brands has never been more complex. It is simply no longer enough to clear a brand in the home market – globalisation has created more opportunities for brand owners to inadvertently infringe on others’ marks and has increased the need for the clearance process to include all possible markets of expansion.
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Organisations can now enter a new market almost instantly, potentially exposing the brand to prior rights in another country. If trademarks are cleared as quickly as possible and more broadly, businesses can ensure they can secure local rights to that mark.
The Cost Consequences
The financial fallout of not clearing a brand effectively across all key markets could be significant. One recent high profile case between UK fashion company ASOS, and Swiss cycling wear company ASSOS, underlines the importance of effective clearance searches in all markets and the costly consequences of not clearing a brand outside of the home market. During the case, that ultimately went to the Court of Appeal, ASOS had objected to the ASSOS brand, but ASSOS emerged victorious.
The judge in the case commented that a clearance search could have prevented the litigation, and other legal commentators said it provides a crucial lesson for businesses looking to launch a new brandand the importance of carrying out appropriate trademark clearance searches in multiple markets before starting to use a new mark.
Not clearing a brand effectively is a false economy. After all, the cost is often minimal compared to the overall branding and marketing budget. It makes far more financial sense to get it right at the outset by investing in the most robust, high quality trademark clearance, as well as focusing on protection and enforcement for the future of the brand.
Best Practices for Securing Brands
Brand owners and IP professionals can address the current trends and ensure they are safeguarding their brand rights by following some recommended clearance practicesdrawn up by UK and European TrademarkAttorney, Mark Foreman, from leading global IP firm, Rouse.
- Create a brand protection budget
Availability, protection and enforcement should form the three key elements of any strategic plan, and during the initial stages it is crucial that organisations establish an adequate budget to support it.
- Early clearance
Design and branding agencies play an important role in clearance and frequently drive the need for early clearance. Looking for clearance at the very early stages, enables the agencies to concentrate solely on the final product. Seeking clearance for multiple names at the start of the process will also free up more time to focus on the creative side of the branding.
- Long term thinking
Organisations need to consider the potential future of the brand, and how it might evolve and perhaps include other ‘follow on’ brands. Once that has been established, all of the brands could be cleared at the same time to reduce the risk of someone registering them first.
- Secure rights broadly
Geography now plays a key part in brand clearance and businesses should ensure the brand is available across their global target markets, as well as the product and service lines they want to move in to. Any investment in terms of time and money will dramatically reduce the risk of problems further down the road.
Globalisation has created risks that are sometimes overlooked by brandowners, particularly when it comes to regions such as China. The Chinese market may have greatly improved its practices in recent years, however it remains the single largest market for bad faith trademarks. Even if an organisation has no immediate plans to do business in China, registering a mark there would be a sensible step to strengthen the defence and protection of the trademark in that region.
- The name game
Businesses need to keep their options open when it comes to selecting a brand name, and chose the final name based on it being available in one or more markets. The process should include developing a number of trademark candidates, and time built into the launch schedule to clear alternative marks, if required. When time is of the essence, multiple marks could be cleared in parallel to cover all bases.
- Register with customs
A key element of businesses protecting their branded products is registering with customs in their chosen markets. This means they can react to requests quickly and customs will be able to look out for their products.
- Online channels
In the digital landscape, securing and enforcing branded domain names and social usernames is critical. In addition to basic trademark registration, businesses need to utilise domain name watching and be aware of what is happening to their brand on social media.
- Partner agreements
Brand protection has to form part of any partner agreements. All IP should be owned by the client and all uses of the brand controlled and continually reviewed by the client. Formalities should also cover what happens when the agreement comes to an end.
- Watch a brand, enforce rights
Trademark registration is just the start of the process, enforcing it is an ongoing issue. Proactive trademark watching is key to help brand owners identify potential conflicts early and respond as quickly as possible. Robust enforcement sends a strong message and reaffirms that an organisation is serious about defending and protecting their brand.
The days of launching a new brand and simply clearing it in the home market are long gone. The world has changed and brand owners and IP professionals have been presented with more complex challenges reflective of the modern globalised marketplace. By understanding the new risks that have emerged and following effective trademark clearance practices, organisations can help to mitigate those risks, and build and protect the strongest possible brands.
Thomson Reuters CompuMark is a world-leading expert in trademark research and brand protection solutions. The company recently launched an online trademark clearance solution that offers the fastest ever turnaround times for trademark clearance.