Get Off My Brand
28 April 2015
Converse, one of the world’s leading footwear brands, has initiated proceedings against 31 companies, including Sketchers, H&M, Ralph Lauren and Wal-Mart, for copying the design of its Chuck Taylor All-Star shoe.
Converse have said that they own trade mark registrations for the “distinctive midsole design made up of a toe bumper and a toe cap, plus an upper strike and/or a lower stripe” which has become synonymous with Converse and its ultimate goal is to remove confusingly similar imitations from the market. Converse seeks damages together with injunctive relief which, if successful, could mean the removal of all ‘copycat’ shoes from the marketplace and destruction of all such shoes in production.
However it isn’t just the big brands that need to be on the lookout for trade mark infringement. As the internet continues to evolve and expand, so too do the risks to your business.
Here are some practical ways to help protect your brand online and, in doing so, protect your reputation and business.
The more you use your brand, the more the public will associate you with such branding. Even where you have not registered your brand, a degree of protection is afforded in common law by passing off rights provided that you have built up a sufficient trading reputation with your brand.
Register your intellectual property.
If you don’t register your trade mark, someone else can. Trade marks may take the form of words, logos and even shapes, such as the famous Coca-Cola bottle. Where your application is successful, registration will give you the exclusive right to use the trade mark in the particular class against which it was registered. A trade mark also develops a value as your business grows and is an asset to your business which can be sold. Using the © and ™ symbols on your website may also deter potential infringers.
Search for infringers.
Cybersquatting is registering, selling or using a domain name with the intent of profiting from the goodwill of someone else's trade mark. It is prevalent on the internet. It is important to monitor so that you are aware when your branding is being used by others. Consider using a ‘watchdog’ service to monitor the trade marks registry, Companies House and different domain name registries. Marks & Spencer, Virgin and Ladbrokes all found that their domain names had previously been registered by a cybersquatting company. In the absence of regular searches, you may not be aware that potential business is being diverted away from you.
Deal with infringers.
Unauthorised parties who use your trade mark can damage your brand, reputation and business. It is important to act quickly. The longer you leave it, the more it looks like you have accepted the infringement. In some cases, all that may be required is an email to notify the infringer or a cease and desist letter. It may be possible to take an action against the infringer for passing off.
Use the dispute to your advantage.
Instead of bringing down the weight of the law on an infringer, another possibility is to licence the infringer to use your trade mark for a fee. This will bring further revenue to your business and will also allow you to control the use of the trademark by anyone to whom you provide with a licence.