Trademark law for advertisers

Trade mark issues arrive in two forms: somebody objecting to your name, or you objecting to somebody else's. The preparation for both is the same.

Search before launching

Before committing to a name, a claim or a product designation, search the relevant trade mark registers and the market.

The cost of a search is small. The cost of discovering a conflict after printing signage, vehicles, packaging and stationery is a rebrand, and rebranding a business with two years of accumulated recognition destroys real value.

What to search

Search the classes relevant to your goods and services, and also adjacent classes where confusion is plausible.

Registration

Registration gives a clear, dated, enforceable right and makes enforcement straightforward. The cost is modest relative to almost any other business investment with comparable protective value.

What to register: the name, and where it is distinctive, the logo. A word mark is generally more valuable than a figurative one, because it protects the name in any presentation.

Register in the classes you actually trade in and those you plan to enter within the protection period.

Using somebody else's mark

Permitted in defined circumstances: in lawful comparative advertising; to describe the intended purpose of a product, such as compatibility or spare parts; and in genuine descriptive or referential use.

Not permitted: use that takes unfair advantage of the mark's reputation, that suggests a commercial connection, or that could cause confusion.

The compatibility case is common and needs care. Stating that a part fits a named vehicle is generally permitted; presenting the part in a way that suggests it is the manufacturer's own is not.

Bidding on competitor names

Using a competitor's trade mark as a search advertising keyword is generally permitted in European law where the resulting advertisement does not confuse a reasonably attentive user about the origin of the goods.

Using the mark in the visible advertisement text is a different question and considerably riskier.

Maintenance

Registrations require renewal, typically every ten years. Marks can also be challenged for non-use after a period, usually five years.

Keep evidence of use: dated material showing the mark in commerce, for each class.

When you receive a claim

Do not respond substantively without advice, and do not ignore it. Deadlines in trade mark disputes are short and the consequences of missing them are severe.