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30% of small firms suffer IP infringement claims: IS YOUR BRAND AT RISK?

Are you Registered or are you unregistered? 

Trademark infringement claims on small firms are increasing. Intellectual Property Office surveys show over 30% of small to medium size businesses suffer infringement problems. As a result, many have to change brand names and logos at high cost. Some are sued for up to half their historical profits. Some have to close the business.

So how can you protect yourself? Here are the top ten key tips to avoid legal action and protect your brand name and your reputation by Clive Bonny, MD of Strategic Management Partners in Brighton UK.

1 Companies House

Do not assume that Companies House registration protects your trading name. Thousands of Registered names on Companies House actually infringe third party trademark owners. Business owners and Directors should always undertake searches on the Trademark and Design Registers before applying to Companies House.

2 Trademark Rejections

Last year over 10,000 DIY trademark applicants were rejected and lost their application fees. Applicants failed to identify similar names and logos and made mistakes in trademark application procedures.  There are over one million trademarks and designs registered online. Trained trademark agents use several database filters to identify similar names to your own. Online searches by a qualified trademark agent can cost as little as £100, saving you time and money. Before you publish your brands or make a trademark application seek a certified trademark advisor.

3 Infringement Risks

If you apply to register a brand name that infringes a third party it can become a very expensive mistake. The registration body can alert them to your application. This may create an expensive public claim against you and ruin your reputation.  A professional search by a qualified person can prevent this.

4 Author Ownership

Do not assume that you own your brand name even if you paid for it. If your branding was created by an independent designer or consultant then the author retains ownership even after you paid them. Ensure your contract with any designer or consultant includes their assignment to you of their author IP rights. Some trademark agents can give you relevant contract terms.

5 Domain Names

If you buy a domain name this may not give you ownership and may not protect your brand name. Domain name sellers do not search IP databases before they offer the names for sale online. This results in buyers buying domain names which are often owned by third party trademark holders. You can be sued for using domain names registered as trademarks to others. A trademark search can prevent this before you buy domain names.

6 Unfair Adwords

Trademark owners can use their certificates to prevent competitors from obtaining their online enquiries. Many online global marketing platforms (eg Google, Bing, Amazon, eBay, Etsy etc) accept a trademark certificate to prevent unfair online competition and unfair trading with Adwords.    

7 Lifelong Protection

Many firms register their domain name as a trademark if it meets trademark eligibility criteria. This gives them ownership of associated domain names and can reduce their ongoing annual domain name fees. Trademarks last 10 years and can be renewed indefinitely. Stella Artois and Lowenbrau trademarks are over 600 years old. A trademark gives a brand lifetime value and can be licenced or sold to others.

8 Licencing Benefits

Registered trademarks and designs can be owned and licenced by individuals, families, charities, partnerships, franchisors and any type of organisation. This enables small start-ups to scale up quickly by licencing their registered IP to others. A trainer or consultant who develops protected branding and content can safely offer this to multiply revenue streams via third parties. A sole trading trainer or consultant or product designer can multiply their revenue one hundred times if they licence to 100 others. Online marketing with registered and protected IP can turn a £100 sale into £I million.  

9 Choosing Advisors

How do you select the right trademark and design agent? Check their LinkedIn profile for their certificated qualifications, sector experience and endorsements. Check their website for their articles, blogs, education materials and any offers of free advice time with no obligations. Check their clarity and transparency of fees and costs, hourly rates, and any ongoing correspondence expenses. Rate them and score them. Remember that 50%-80% of business assets are IP based so take care when choosing an advisor. Expensive offices do not always reflect value for money. 

10 Murphy’s Law

Finally, consider Murphy’s Law. If it can go wrong it will go wrong. The world of IP is full of adversarial legal eagles. Just one infringement court case can cost your lifetime earnings. Alternative dispute resolution with independent mediators can avoid expensive time-consuming court procedures. IP disputes using mediation can be settled within days at a fraction of the cost of traditional adversarial suits. If your IP advisor is also a qualified mediator this can be a life-saver.

Clive Bonny is a certified IP advisor, a Fellow of the Institute of Patentees and Inventors, member of the Authors Licencing and Copyright Society, and has provided consultancy and design services to Dragons Den and UK IPO who also list him as a qualified mediator to resolve IP disputes at low cost. Clive founded SMP in 1990. SMP’s Industry Award recognitions include 2014 Top 50 UK Advisor by Enterprise Nation; 2016 Emerging Technology and Innovation Award by Corporate Vision; 2017 Risk and Reputation Management Award by TMT Media; 2018 Mediator of the Year and Technology Award by Corporate Livewire; 2019 Sustainable Design Award by Futurebuild; 2020 Awards for Most Innovative Sustainable Partnership by Homebuilder and Most Innovative Reduced Cost Consultancy by Global 100.