March 16th, 2019

Legal Talk 8: What's the point of trade marking? 

Another Whatsapp message from you pings onto my phone and I'm glad to hear from you. I click in eagerly to see what's new. 

Branding is still on your mind. This time you just want to find out more about trade marks. 

Okay, so you have applied for your trade mark on the internet but you're getting a bit confused. 

You say: 

"Hey Legal Coach, even if I did decide to register my trade mark, what does this trade mark give me once it is actually registered anyway?" 

Well, in short: 

1. The Compensation Effect: It gives you the right to claim against people who are using your trade mark in a confusingly similar way to what you are using your trade mark for.

2. The Deterrent Effect:  What you hope is that once your trade mark is registered and they see the ® next to it then this will act as a deterrent re: them trying to copy your brand. You don't actually want to sue them because it takes a lot of time and costs a lot of money so hopefully the deterrent will work!

3. TM and  ® (Be Careful!): Once your trade mark is registered (and only once its registered) you can start using the ® next to your trade mark.  The reason that you must only use the ® only once your trade mark is registered is that to do so otherwise is a criminal offence in the UK! And so obviously that is not good because this doesn't really have any synergy with starting and growing your Tech business. 

What you can do whilst you applying for your trade mark is use the TM mark next to it just to show people that you think (in your opinion) that you have some rights to your trade mark although the rights using TM are far less (and far more debatable) than getting your trade mark registered and then using the  ® symbol next to it. 

4. Getting Investment: Oh, and one other thing. When you are going for investment you are bound to be asked the normal Investor type Dragon's Den like question of "What have you done to protect your IP?".

In my view, this question is normally asked to show how clever the questioner is. 

BUT, and obviously, the questioner probably has the money and might be an investor so you can't really quiz them on their detailed knowledge of IP.

So if you reply by saying "I have done nothing to protect my IP" then they can say something like "I'm Out" in a kind of dramatic and theatre like way  and particularly if the cameras are rolling or if they have an audience like fellow investors and analysts etc. 

So, applying for some trade marks to protect your brand not only helps to protect your brand once those trade marks are registered but it also gives you some kind of answer to the IP question which can normally expect.

If you do have some answers to that IP question (which you know is coming) where you say: "Yes, we have thought of that and done X, Y and Z to protect our IP" then you kind of look like the smartest person in the room or at least shows you know some stuff. This might then help you on your way to getting investment (or a least not stalling investment talks). 

Hope this helps, but if you want a bit more info on the area, I recommend starting here: https://www.marcaria.com/ws/en/articles/the-importance-of-trademarks-in-business.

Best wishes

​
Jimmy Desai
​Your Legal Coach

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