September 17, 2020
Branding is a key element of marketing in the food and drink sector and a distinctive brand will be key to the success of a product, whether new or existing. A distinctive brand is required to differentiate your product(s) from competitor product(s) and so it is easily recognisable by consumers.
The brand creation process will invariably generate IP. Certain IP rights may subsist automatically without the need for formal registration. These unregistered rights include unregistered trade marks (e.g. words, slogans), unregistered design rights (e.g. non-artistic 3-dimensional objects, such as packaging) and copyright (e.g. artistic and literature works). Registered IP rights, such as registered trade marks, registered designs and patents, are granted by government bodies and must be applied for and fees paid. Each form of IP right has a different purpose and protects different aspect(s) of your work and creativity.
Registered IP rights are generally stronger than unregistered IP rights; it is also typically more difficult to enforce an unregistered right compared with a registered right which provides an absolute monopoly right. As your brand is a key business asset, it is important to protect it with a suitable combination of registered IP rights, in the appropriate global market places, to allow you to maintain and increase market share and to prevent the sale of copycat competitor product(s). Registered IP rights represent powerful commercial and legal tools.
Trade marks may be registered for words, logos, graphics, colours, shapes and sounds. The mark must be distinctive and not descriptive. A mark may be refused registration if there is an earlier identical and/or similar mark (e.g. an earlier filed conflicting trade mark application). A registered trade mark provides an absolute territorial monopoly right which permits you to stop others from using the same or confusingly similar mark in a territory where your mark is registered. A registered trade mark will last indefinitely, provided the necessary renewal fees are paid. Registered trade marks are used to protect some of the most important aspects of a brand and it is not uncommon for a perceived “single” brand to be protected by multiple trade marks, for example, the name, logo and graphics found on packaging.
A registered design right can be used to protect the appearance, shape, configuration and decoration of a product or part of a product. A registered design protects the aesthetics of a product. A lot of work usually goes into the design of the packaging of a product, including the shape of the container (e.g. shape of packaging), the ornamentation, artwork and logos. All of these elements can potentially be the subject of one or more registered design applications, provided the design(s) is novel and has individual character. A registered design provides a territorial monopoly right for up to 25 years and will allow you to prevent others from using the same or a similar design. As packaging design is a powerful driver when it comes to consumer choice (e.g. Toblerone bar and Coca-Cola bottle), one or more registered design applications, in combination with trade mark application(s), should be considered.
It is essential the appropriate elements and/or combination of elements of a brand are carefully selected and then protected with the appropriate registered rights. Filing too many applications will also be unnecessarily expensive. Separate applications need to be filed in countries and regions of interest outside of the UK, though the expense for these applications can be deferred.
A registered IP right allows you to prevent others from doing something, it does not grant you a right to do something. Although a distinctive brand is less likely to infringe competitor intellectual property rights, freedom to operate searches should be performed from the outset to mitigate and identify any potential infringement risks. This will allow you to select early one potential brand over an alternative where there may be a problem.
Creating and protecting a new distinctive brand requires time, effort and capital expenditure. It is strongly advisable that you engage an appropriately qualified IP attorney as part of your team from the outset.
Stephen Thompson, Managing Partner, Darwin Gray
Richard Frith, Director, Alchemie IP
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