Something we’ve been noticing lately…

Photo by John Schnobrich on Unsplash

Recently, we've seen a bit of an uptick in cold emails landing with clients and contacts.

These emails are seemingly from law firms. They've found businesses registered on Companies House. They've then cross-referenced the company name with the trade mark registry.

Presumably, if they have found that there isn't a registration, they then pitch registration services, out of the blue.

On the surface, it's a fairly basic cold outreach campaign for businesses, but if you're on the receiving end, there are a few things to be aware of.

One of the big issues I have with these emails is that they use a scare tactic.

They state, or strongly imply, that failure to register a trade mark will result in loss of rights to a company name.

This is not strictly true, and at worst, it is purposefully misleading.

Company name registration and brand protection

First things first. There's a common misconception that registering with Companies House equates to brand protection.

This is incorrect.

These firms are correct to suggest that businesses may want to protect their names through a trademark.

Crucially, it's more important to do this for your trading name (if different from the company name).

But there's more to it than that.

Unregistered brand rights

If you have operated under a business name for a length of time within a certain jurisdiction, you have unregistered rights to that name.

These are often referred to as common law or equitable rights.

It may be the case (and often is) that registering a UK trade mark for the name will offer you better protection, and they will certainly give you UK-wide rights.

This typically makes your rights easier to enforce and can open up the opportunity to obtain overseas rights.

But, this is a decision that is ultimately something you need to think about with a commercial perspective and from a fully informed position.

Without blowing our own horn...

Sadly, many businesses don’t realise this, but with registering brands, the devil is really in the details.

It’s one of the reasons we see trade marks which have been filed by people themselves in good faith are far off the mark (and why some of them fail from the outset).

Simply registering the name as presented on Companies House data for the goods or services you offer is an extremely crude way of going about it.

Any intellectual property specialist worth their salt will want to understand:

1. The specific way the proposed brand is communicated to the buying public

2. Your current and future business plans, and how this should be factored into any registration

After a professional review, your brand might be better registered as a stylised logo, or in a number of specific classes where you hadn’t thought of getting protection.

Again, getting the specification drafted so that it covers what you need (and avoids classes you don't) gives you much better protection when you need it.

Getting the details right is absolutely critical when it comes to enforcing any infringement that occurs. It is also vital if you want to use your brand name in overseas markets.

A considered and tailored trade mark specification that covers current and planned future use avoids the likelihood of oppositions in an increasingly crowded trade mark registry and is key to brand expansion and extension.

A "kitchen sink" style application, which many DIY-drafted trade mark applications are will more than likely result in proceedings in the IPO, slowing you down and costing you unnecessarily

What's more, the registration may not reflect its actual and planned usage, meaning that the whole exercise was a waste of time and money.

My recommendation

I speak about this quite a lot, but it's true that these days your brand really is one of your key assets. It can be perpetual and increase in value over time.

As such, it's not something that you want to leave to chance, make a knee-jerk decision on, or cut corners with.

My advice is, if you receive one of these emails, to take a step back and have a think about how people recognise your company/product or service.

What is the unique, recognisable impression in the mind of the consumer?

Then seek out a legal specialist who can help you protect exactly what's needed rather than just respond to scare tactics.

Wrapping up

It goes without saying that I'm happy to speak to anyone about their brand. Whether they're looking to move into new markets, categories or launch something new.

Get in touch with me for a chat (no obligation), and I can point you in the right direction to make sure that you get it right and end up with a valuable asset... (rather than an accident waiting to happen).

Drop me an email and I'll put some time in the calendar.​