CLARE’S LEGAL LAIR


CLARE’S LEGAL LAIR FMCG News’ resident lawyer, Clare Thomas, is here every issue tomake sure you stay on the right side of the legal trackwhen operating in the industry


Hello readers! Hope you are well-settled in to the new year and that you enjoyed my first column in the last issue. This month, I am discussing the importance of brand protection.


whetherwhen starting up, relaunching or introducing new products to theworld ormarket. I knowfrommy own clients' experiences just howimportant it is to get the basics right fromthe start, so as to protect the new brand and ensure it does not encroach onto rightswhich belong to third parties - exposing you to the risk of a costly dispute. Fromthe outset be aware of other


I


people's rights. It is advisable to instruct trademark attorneys early on to carry out trademark searches in relevant countries tomake sure there are no registered trademarks which stand in yourway andwhich could expose you to legal proceedings for trademark infringement.Unregistered trade marks can also be an issue, so carry out internet searches to seewhether there are any similarly branded products already on themarket. Once you have your new


name and/or logo, ideally you should register it as a trade mark. Registered trade marks give you much stronger rights which are easier to enforce than unregistered rights. In order to be registrable as a


trademark, themark has to be distinctive andmust not be descriptive of your goods. For example, you could not register ‘crusty bread’ for bread. Tomake sure your trademark is sufficiently distinctive, opt for a mark that is easily distinguishable, such as amade upword orwordswithin a logo.


always tellmy clients in the food and drink sector that you need to protect your brand -


Themore distinctive your brand, the easier itwill be to register it and protect it going forward. Use ®


on productswhere you


have a registered trademark (but only then, it is a criminal offence to state that amark is registered when it is not). If yourmark is not a registered trademark in that country, use ™


. Thiswill put other


people on notice of the rights you have in your brand. Make sure that the rights in


any logos or packaging are owned by you. If a design agency is creating the brand artwork ensure that they transfer (assign) the copyright to you. A range of originalworks are also protectable under design law, but only if they are new, so you need to register themearly and no later than 12 months after theywere first marketed by the designer. Finally, check the availability of


any relevant domain names for websites thatmay be used in conjunctionwith the brand. Register these early on so someone else doesn't register themfirst! Once you have set yourself up,


make themost of your brand by ensuring it is used in the right way and consistently across your business. Put internal guidelines in place to ensure that this happens andmake sure marketing run advertising copy past a central contact. Howyou put into action the


abovewill be largely dictated by your strategy and budget. Decide themost effectiveway your budget can be spent on the registration process and prioritise trademark filings in yourmost importantmarkets. I can't stress enough how


important it is to get your house in order fromthe beginning to avoid other people stepping on your toes, aswell as risking having to give up a brand you've spent time andmoneymarketing


FMCGNews.co.uk | FMCG News | 15


“Decide themost effectiveway your budget can be spent on the registration process and prioritise trademark filings in yourmost importantmarkets”


because you found out too late that it belongs to someone else. Tomakemattersworse, that is likely to result in you spending yet more time andmoney fending off a claimfromthat other party.


Clare Thomas is Partner at law firmAddleshawGoddard LLP, where she heads up the firm’s food & drink team. Formore information, visit www.addleshawgoddard.com.


Any FMCG


manufacturer has to be ruthless in protecting their brand to ensure success with every product


© Robin Jeffries 2012


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