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Protecting your goods and services as your business grows

By Elizabeth Coulson.

As businesses grow, the range of products or services commercially marketed may expand beyond the goods and services originally listed in trade mark registrations obtained to protect those goods and services. Additionally, as plans are made to enter into new commercial markets in new territories, existing trade mark registrations may not serve to protect your business. Does your company review its trade mark rights to ensure that your business' current portfolio of products and services is actually protected?

As commercial strategies change and your business enters into new markets and expands its offering, it is important to consider which corporate brands will be used, how they are and could be protected and in which countries protection is needed. Existing trade mark registrations may not offer sufficient protection or even no protection in the new territories. Having a trade mark registration in some territories for some goods or services does not automatically give you the right to sell everything everywhere! The primary issues to consider include:

  • Having a trade mark registration in one territory does not provide protection in another territory (although a Community trade mark registration (CTM) does provide protection for all EU member states and grows as new members join the EU).
  • Having a trade mark registration for one set of goods and services does not necessarily enable your company to stop a third party from using your company's brand on another type of product or service.
  • Having a trade mark registration for one set of goods and services does not necessarily prevent your business from infringing third party rights in relation to new product lines (this point may also apply to existing territories in which your business already has a trade mark registration).
  • Clearance searches conducted in the past and in relation to a specific set of territories may no longer be fully relevant.

Additional trade mark applications in the new territories or supplementary trade mark applications in existing territories may be a valuable and important asset for your business.

Before your business uses a trade mark mark it is important to have a clearance search conducted to check that "your" trade mark is not already being used and that it has not already been registered in respect of the new goods or services or in the new territory by a third party.

It may be prudent to investigate what other companies in the new market are doing. For example, are they already providing any of the new goods or services that your business intends to market, under a similar mark? Having a clearance search conducted will also check relevant trade mark registers. This may be useful because a conflicting trade mark may have been registered by a third party, but not yet put into use and any such registrations could cause your business problems if it uses a similar trade mark.

At Coulson & Rule we can provide advice and guidance about protecting your business' IP assets as your business grows. For more information, please contact Sarah Chatterley on:

This news item may contain information of general interest about current legal issues, but does not contain legal advice.