BriffaBites – Spring Cleaning your Intellectual Property Portfolio

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An interesting article from MIA IP legal partner, Briffa…

For many businesses, they register their domain names and trade marks, put the certificates at the back of a drawer and forget about them until they have an issue.  However, we recommend that our clients are proactive and keep their domain name and trade mark portfolio under regular review.  In the long-run, doing so could mitigate many risks – including the risk of a large legal bill.  Prevention is always cheaper than cure!

The new year is a good time to take stock and diarise to spend a few minutes doing such a review to ensure that everything is in order.  To help you do so, we’ve set out some general points below as a check-list.  If they raise any concerns or questions for you, please do contact one of our trade mark experts on 0207 288 6003 or INFO to talk these over with us.

  1. Have you reviewed all of the trade marks (business names, product names, logos etc.) that are used in/by your business and – if some are not registered – considered whether you should register them (including as domain names)?
  2. Do your registered trade marks cover all of the goods/services which you sell?  For example, if you only registered for “clothing” but have expanded into bags, then it would be advisable to file to protect your brand for bags also.  If not, it could be difficult (if not impossible) to prevent someone selling bags under your brand.
  3. Are your trade marks registered in all of the territories where your mark is used?  For example, if you only registered in the EU and Hong Kong but have since expanded into China, Macau & Taiwan, then it would be advisable to file to protect your brand in China, Macau & Taiwan also.  Otherwise, someone could ‘block’ you in these territories and you may have a struggle to regain the right to use your brand there.
  4. If you have engaged anyone to create new logos for you, have you obtained a signed transfer of the ownership of the copyright from them to you?  If not, they will own the copyright in the logo.
  5. Have you used your registered trade marks in the territories where they are registered for all of the goods/services covered in the specification?  If not, after 3-5 years (usually and depending on the country), the mark may be revoked wholly or partially for non-use.  Therefore, if you haven’t used the mark on all of the goods/services for some reason and you are approaching – or have passed – the 3-5 year point, you should consider this risk and whether you should take steps to address it.
  6. Have you licensed your trade marks?  If so – generally speaking – the licence(s) should be recorded with the relevant trade mark office(s).  The consequences of failing to do so can be severe in some cases – for example, failure to record a licence (even an informal licence within the corporate group) of a Chinese registration can lead to revocation for non-use if the registered owner is not itself using the mark.
  7. Have any of your trade marks been transferred?  If so, this should be recorded with the relevant trade mark office(s).  Failure to do so promptly can cause serious problems (including losing the trade mark).
  8. Have you changed your registered name or address?  If so, this should be recorded with the relevant trade mark office(s) to ensure that you can rely on the mark, if required.
  9. Are you using our trade mark and domain watching services to ensure that you have the maximum protection for your brand?  These services ensure that you are notified about any potentially conflicting applications/registrations so that you can take prompt cost-effective remedial action to counter the issue.
  10. Have you subscribed to our BrandProtect policy?  This is insurance that covers you for the majority of costs in the event that you need to take legal action should your registered trade mark rights be infringed in the UK.  If this is of interest, do get in touch so that we can provide further information.
  11. Have you protected your brand online by:
  • registering ‘key’ domain names for important jurisdictions for your business (e.g. <yourbrand.cn>) or which you would not like anyone else to own (e.g. <yourbrand.sucks>)?  As mentioned, prevention is always cheaper than cure but – in the case of domain names – cure may not even be possible so it is important to keep this in mind when considering which domains to register;
  • applying to ‘block’ anyone being able to register them applies for one of the new ‘extensions’ which incorporates your brand (e.g. <yourbrand.fashion>).  This is cheaper than having to take action every time that someone registers your brand with one of the new domain names and you then need to take action

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