For many start-ups, building a brand is exciting. A strong name and identity can attract customers, distinguish a business from competitors and build a lasting reputation. However, trade mark protection is often overlooked, exposing businesses to disputes, forced rebrands and lost opportunities.
These are five common trade mark mistakes and how to avoid them.
1. Choosing a descriptive trade mark
Start-ups may favour names that describe their goods or services, but this can create trade mark challenges. Descriptive names can be difficult to register because they may lack the distinctiveness required for trade mark protection. For example, an organic coffee business may struggle to secure rights in "Organic Coffee Co.” because it describes the products. The UK Intellectual Property Office (UKIPO) may refuse a mark that lacks distinctiveness, describes the goods or services, consists of a common or generic term, contains offensive matter or is likely to mislead consumers. Distinctive, memorable marks - including invented words and unique word combinations - are generally easier to register, protect and enforce.
2. Failing to carry out trade mark searches before launch
Start-ups often invest heavily in branding, websites, packaging and marketing before checking whether their chosen name is available for use and registration. A name being available as a company or domain name does not mean it is free from trade mark rights. A third party may already have a registered trade mark or established prior rights through use of a similar brand. Launching your brand without carrying out clearance searches can expose a business to allegations of infringement. This can lead to businesses having to comply with cease-and-desist demands and significant rebranding costs. These costs are often significantly higher than the cost of conducting trade mark searches before a brand launch. Before committing to a new brand, businesses should carry out trade mark clearance searches to identify potentially conflicting rights.
3. Delaying Trade Mark Registration
Many start-ups assume that trade mark protection can wait until the business becomes more established. However, delaying registration can create unnecessary risks. Registered trade mark rights are generally granted on a first-to-file basis. This means that if another party files an application for a similar or identical mark before you, it may secure rights affecting your ability to use your brand. Early registration provides certainty, deters similar branding and creates a recognised intellectual property asset that can increase business value. Trade mark registration should be viewed as an investment rather than an optional expense.
4. Failing to protect your trade mark overseas
Trade mark rights are territorial, meaning that a UK registration only provides protection within the UK. If a business intends to sell products or services overseas, it will need to obtain protection in the relevant countries. Without protection in key overseas markets, competitors may register the same or a similar brand name first, creating barriers to expansion and increasing legal costs. An early discussion about international growth plans can help a business identify which jurisdictions it should prioritise for trade mark protection, and where it should allocate funding.
5. Failing to monitor and enforce your trade mark
Registration is only the first step: owners must also monitor the marketplace and take action where necessary to protect their rights. In the UK, a trade mark application will not automatically be refused because it is similar to an existing registered trade mark. If the UKIPO identifies a potentially conflicting application, it will notify the owner of the earlier registered trade mark. It is then up to that owner to decide whether to oppose the application. The UKIPO will not do this on their behalf.
If unchallenged, similar marks may secure registration and legal protection, causing consumer confusion and diluting brand distinctiveness. Regular monitoring of the trade mark register, Companies House and online marketplaces is key to identifying conflicting applications and potential infringements early, enabling businesses to take swift action to protect their rights.
How start-ups can protect their trade marks
Trade marks are among a start-up’s most valuable assets. Proactive protection from the outset can help avoid unnecessary costs, legal complications and forced rebranding while supporting long-term growth.
How can Thorntons help?
Our specialist Trade Mark team can help businesses protect and maximise the value of their brands through trade mark clearance searches, UK and international registrations, portfolio management and enforcement.
