This document provides an overview of branding and brand protection. It discusses the importance of branding for business success and how trademarks can legally protect brand elements like logos, words and packaging. It recommends researching potential brand names to ensure they are unique and capable of trademark protection. Formal trademark searches that examine registered and unregistered marks in multiple territories are suggested. Registering a trademark is described as the strongest protection and details are given on the UK registration process and maintaining protection over time through review and renewal of trademarks and domains.

1. Brand Power: How to build and
protect your brand online
Brand Protection
03 March2015
Jill Bainbridge

2. Introduction to Branding
• Branding is essential to ensuring the success of your business and is
a valuable asset in modern commerce.
• Brands are protected by intellectual property rights, most commonly
by trade marks.
• Trade marks can be registered or unregistered either way they have
the same basic purpose: to protect the reputation of a business,
consumers from deception and create custom.
• Trade marks can protect several elements of your brand including
words, logos, symbols, sounds, colours, smells and the distinctive
packaging or "get-up" of a product.

3. Choosing a Brand
• A brand needs to be:
– Unique
– Capable of distinguishing your goods and services from those of
your competitors
– Capable of protection

4. Research (1)
• Your initial research should cover:
– Internet searches;
– Trade press/coverage; and
– Companies House.
• In carrying our such searches you will be looking for identical/ similar
business/product/service names.
• You can also search against registered trade marks on via
www.ipo.gov.uk but beware, the results can be deceiving!

5. Research (2)
• Once you are down to your favoured handful of potential brands then
it is important to obtain a more formal trade mark search.
• Typically a UK search costs around £500 per mark.
• Searches can be carried out against both registered and
unregistered marks across a large number of territories around the
World.

6. Protection
• The strongest form of protection for a brand is a registered trade
mark.
• Trade marks are territorial rights i.e. you can obtain a UK, French,
Finnish, Bolivian etc registration.
• There are also ‘bundles’ of national rights such as the Community
Trade Mark (EU).
• Finally, there is an ‘International Registration’ administered through
WIPO and allowing one application to cover more than 80 different
territories around the World.

7. UK Trade Mark Registration (1)
• Application to the UK Intellectual Property Office (IPO).
• The application must fulfil the requisite criteria and must not conflict
with prior rights.
• The mark must be:
– capable of being represented graphically;
– not descriptive of the goods or services for which it is registered;
and
– capable of distinguishing the goods or services of one business
from those of another.

8. UK Trade Mark Registration (2)
• When registering a trade mark, you must specify which classes you
are intending to seek registration in. There are 45 classes within the
Nice Classification, 34 in respect of goods and 11 in respect of
services.
• Costs of a UK application are official fees of £200 for the first class
and a further £50 per additional class plus professional fees.

9. Registration Process
• Examination. Once the application has been submitted an examiner
will examine your application based on the requirements of the Trade
Marks Act.
• Publication. Your details and application will be published in the
Trade Mark Journal for an initial 2 month period (extendable by a
further 1 month).
• Registration. If no one opposes your application, your mark will
become registered approximately two weeks after the opposition
period ends.
• Registration lasts for 10 years and can be renewed at 10 year
intervals thereof.

10. Continuing Protection
• Protecting your brand is an on-going process.
• Review and renew domain name registrations and trade mark
registrations to prevent losing them.
• Ensure that your brand is used consistently.
• Rights can be acquired and lost in contracts with third parties.
Ensure licencing agreements are correctly drawn up and if works are
commissioned to an external agency ensure that any rights are
transferred to your business in writing.

11. Thank you
Jill Bainbridge
Partner
Blake Morgan
Jill.bainbridge@blakemorgan.co.uk