The importance of considering IP from the outset

10th Nov 2021

How could considering IP at an early stage help you later on?

© iStock, Gorondenkoff

A rewarding part of a CITMA member’s job is guiding businesses from their hopes for their new brands, to protecting and launching them.

Unfortunately, a lot of what we see across our desks are matters that have gone wrong, which can happen very easily.

So how do we really consider and learn to appreciate IP at the outset?

This subject matter is huge - so let us focus on the nitty gritty with some good examples and fables to begin…

  • A famous juice brand realising it did not own the copyright of its logo, subsequently having to rebrand and re-establish itself a decade after launch 
  • An injuncted hotel group seeing its foyer smashed to remove the etching of a trade mark and logo on its ten feet tall windows 
  • Friends taking out business loans and launching their brand, only to receive a cease and desist letter from a major name claiming reputation extending from clothing to beer

“Cheap is dear”

A significant reason to consider IP at the start is to protect financial (and emotional) investment.

That initial effort of lining your ducks up can, in nearly all cases, avoid huge heartache, embarrassment and loss. 

For example, the expense of unusable stock following an abandoned launch or rebranding can potentially be entirely avoided by spending just an hour or two with a Chartered Trade Mark Attorney at an early stage.

Taking even a few important initial steps can allow for a trade mark or brand to develop.

This success can attract investors or buyers in the future, leading to  both investment and potentially good market value.

Put simply, in many cases ‘cheap is dear’.

To consider… 

Ideally, to establish solid IP foundations from the outset as far as possible, it is advisable to engage a Chartered Trade Mark Attorney in order to explore and obtain advice on matters such as:

  • Clearance searching: to ensure use and/or registration will not lead to expensive opposition proceedings preventing you obtaining registered trade mark protection, or in the worst case, staggeringly more expensive infringement claims and injunctions.
  • What to protect: Have you considered protecting IP that your company may make use of in the future?? Where could or might your company go?  Do you understand complementary good and services, and the concept of ‘reputation’ in IP enforcement?  Such discussions will help to determine strong and truly useful protection..
  • Is it protectable? Your trade mark could potentially be descriptive and if you went on to use it, it may then be very difficult to assert or enforce rights against third parties who use similar marks. Relying on Passing Off is, generally, punitively expensive.

Copying is not flattery in the world of IP

Considering IP at the outset can also ensure correct protection is in place before third parties become aware of you and try to ride on your success and investment.  

This is not only about protection for your company – it is also to ensure your use of a trademark/brand does not infringe a third party’s registered intellectual property rights and own economic investment. 

Imagine it the other way around: your brand becomes successful and then a third party launches a brand that is identical or similar, without checks and due diligence. 

Without having your IP rights in order, it would be a lot harder to protect your brand. 

Taking these considerations seriously at an early stage can help you build a solid future for your brand and an excellent investment.

In addition, considering IP at the initial brand development stage with an IP professional can open discussions on very important but often overlooked peripheral issues, such as true ownership of the copyright of your logo and the potential need to protect design rights.  

If budget allows, such discussions from the very start can lead to good-value strategies, such as filing applications to ‘flush out’ potential third party objections, or staggering budget for possible expansion of protection using the Paris Convention. 

Takeaways

So, the takeaway from this brief dip in to the vast field of IP issues and considerations when creating a new trade mark or brand is that considering IP initially makes for expert management of legal and financial risk.

Many cases are totally straightforward; some are very complex but only at the beginning; there are also other instances when everything is fine at first, but success can expose you to third parties with earlier rights who can then attempt to stop you much later down the line.

Considering IP at the very beginning, or at least appreciating some of its key elements, is the best way to ensure financial (and emotional) investment is not lost. If you need advice or support, you will find a friend in any member of CITMA.

Author