This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.
Increasingly Trade Mark Offices and Courts are willing to recognise trade marks with longstanding and intensive use as being well-known or reputed. This is important because in both trade mark registry and court case proceedings it can increase the scope of protection that your brand is entitled to. For example, if you are able to prove your trade mark is reputed, you may be able to enforce your trade mark against a third party using a trade mark similar to yours, but for dissimilar goods or services (i.e. goods or services which are outside the scope of your trade mark registration).
So what do you need to show that your trade mark is reputed or well-known? You need evidence. And lots of it.
Whilst we as your trade mark advisors can tell you what types of evidence are useful, this will need to be tailored to your specific business. The list below identifies the things you should be thinking about retaining on a year to year basis to assist with your portfolio. As the brand and business owner you are best placed to know the ins-and-outs of your business. A short index and a binder of evidence incorporating the following documents could be the difference between winning and losing your case:
- Information relating to your licensees, importers, retailers and consumers. Do you carry out customer surveys on the recognition of your brand? Do you have agreements that can be disclosed or partially disclosed relating to the volume of sales, showing the number of importers/exporters/retailers?
- You should enlist the help of your marketing department. They understand how valuable your brand is and should be able to help you collate key evidence including:
- What are your annual sales figures? Do you have annual financial reports that can be disclosed?
- How much do you invest in advertising? What sort of advertising is it? Is it in a newspaper? Keep a copy! Is it radio or television advertising? Record a copy onto a CD. How many times a day/week or month is it played or printed? Is there anything in writing to show what you paid for the advertising? How many people have seen or read the advertisement?
- Do you sponsor anyone to advertise or sell your products or services?
- Do you advertise or sell online? Do you have a website? Are you able to record your website's traffic?
- Do you attend trade shows or Exhibitions? Where? How many consumers/clients attend the event? Do you have brochures or images from the event?
- Do you have a branded magazine or email shot to clients? If so, what are the circulation figures?
- Have you won any awards? Again your marketing department may have a record of what awards and when they were presented?
- Where do you use your mark? Is it in one country or many?
- Enforcement - do you protect your brand in other countries? Do your trade mark advisors know about the enforcement you carry out in other countries?
- Do you have physical goods that are branded? Take pictures to show the development of the brand - even if it changes this can still be helpful.
The evidence above in combination with the witness statement and arguments written by your advisors should make for a persuasive case.
In many territories once a trade mark has been registered for 5 years it also becomes technically vulnerable to attack from any third party. If you are using your trade mark this should not be an issue, but your binder of evidence can also help to prove the use you have made of your trade mark helping to defend your mark from attack.
