Protecting Your Brand's Intellectual Property

With an asset as valuable as a brand, you need to protect it from those who would like to imitate it in order to piggyback off your success. First you must understand that this is an on-going and increasingly complex challenge. Brand assets have an indefinite life and many brands think, act and trade globally. 

Although this is great for growing your business and expanding reach, it also means that you are exposing your brand's intellectual property to a larger number of potential counterfeiters. In a digital world where small brands can find customers in faraway places, counterfeiting is becoming a big problem, particularly for SMEs. We’re all familiar with fake Gucci and Louis Vuitton bags, but smaller brands often don’t have the resources to enforce their intellectual property rights.

An IP strategy based around international trade marks remains the best protection for brand names and marks, which can include colours, shapes and sounds, but design rights and domain names are also key. But even if you have registered trade marks in your key markets, brand IP does not look after itself. It needs to be monitored, grown and managed as the valuable asset it really is, in a continuous process of active protection.

Here are four tips to managing your brand IP assets:

1. Identify your brand assets

Every business needs to know what constitutes its Brand IP. Names, designs, colours, sounds, and copyright are all ‘soft IP’ whilst patents are considered ‘hard’. Trade mark attorneys will advise on soft IP, while patent attorneys are required for hard IP.

If your business relies on ecommerce, it's always worth considering defensive domain name registration. This involves purchasing domain names similar to your own in order to stop counterfeiters creating fraudulent websites to target your customer base. 

2. Protect your brand assets

‘Owning’ a name or a trade mark isn’t as straight-forward as buying a domain. Applying for a trade mark to protect your name sounds simple, but has someone got there first? And in what classes and which territories do you plan to use your brand?

As trade marks are applied for country by country, this can be a complicated and expensive exercise if you operate globally and requires careful planning and prioritisation. Searches are often necessary prior to finalizing the choice of a new brand name or extending your brand into new markets. This is vital to ensuring you aren’t unwittingly infringing an existing trade mark.

3. Engage a professional

Given the importance of brand protection, it’s well worth seeking expert professional help in both planning and executing brand IP strategies and trade mark applications. Wording classifications and gauging whether or not a mark is viable can save a lot of time and money.

Negotiating co-existence agreements, dealing with objections and managing numerous international agents are tasks best left to professionals. Of course, for litigation you will definitely need to use a qualified attorney. Similarly, if you need to commercialize your brand through licensing, distribution or partnership agreements, an expert is essential.

4. Watch your marks

Once you have registered your mark, you must manage it. Just because a registration lasts 10 years it doesn’t mean others won’t try to register similar marks, often in far-off lands, or try and strike your mark off for non-use in another country. 

Some trade mark agents offer trade mark watching services, which are highly recommended as they can alert you to potentially damaging applications in time for you to challenge them. Monitoring online activity is also very important as social media is now so influential in forming consumer perceptions. 

There are several platforms that can provide insights into what’s going on in online marketplaces around the world so be sure to explore your options based on your individual business needs.

Have a proportionate response

Even the way you manage brand protection can affect brand reputation. Too soft an approach and there’s a risk of encouraging infringement; too aggressive and you may come across as a bully. An aggressive protection strategy risks hurting an organisation’s public goodwill, particularly if those pursuing the enforcement are seen as big brands taking forceful action against the little guys.

Almost inevitably, these actions are stylized and perceived as a ‘David vs. Goliath’ battle with the bigger organisation trying to bully the weaker company or business owner, even though the large corporation might legitimately be trying to protect its valuable brand asset.

Sometimes public backlash is unleashed, fuelled by social media with tweets and Facebook posts going viral. This can cause significant harm to the larger company’s public image and consumer goodwill.

Ultimately, there’s no one-size-fits-all approach to brand IP protection. A proportionate strategy tailored to your business priorities should be defined to ensure a consistent approach to brand protection is taken. As your business changes and grows, this should be reviewed and updated regularly.   

About the Author

Peter Matthews is founder and CEO of Nucleus, an independent London-based brand, digital and IP consultancy. A designer by training, Peter personally leads strategic brand creation, innovation and transformation projects for international clients, specializing in financial services, travel and luxury.