Trade marks are badges of origin and can be any word, phrase, symbol, design, or any combination of these that identifies goods or services. They are how customers recognise a certain brand in the marketplace and distinguish them from their competitors. The importance of individual brand identity was highlighted in a recent letter sent by major British retailer M&S to a small ice-cream seller.
Fabio’s Gelato, which is based in Hertfordshire, only began making its gelato with the Perky Pig name last week after taking to social media to promote the new product. However, the owners of the dessert parlour quickly received a letter from M&S requesting that the family-run company change the name of their ice cream flavour to something less similar to the famous ‘Percy Pigs’ sweets. To sweeten the deal, M&S generously provided Fabio’s Gelato with a packet of Percy Pigs.
The family-run ice cream parlour already creates gelato from several branded items including chocolate bars, energy drinks, McDonalds and Marmite. However, this is the first time they’ve received a legal request from a brand to change the name of their product.
In the letter, M&S stated why it was important to them as a brand that their trade marks are protected and used appropriately, saying:
“Percy Pig is one of our ‘hero’ brands, and we own trade marks to protect it. We risk losing those trade marks (and, more importantly to us, consumers will no longer be confident that PERCY PIG-branded products originate from M&S) if we do not take steps to stop others from using them without our permission.”
The Importance of Due Diligence
As exemplified above, it’s important when naming a product that you have done the correct due diligence to ensure that you are not infringing a trade mark. Before rushing to register your own product, you can check it isn’t already taken by using the Intellectual Property Office (IPO)’s trade mark search which you can find here.
Even if you have already registered a product, any infringements may not have been flagged as Companies House and the IPO are separate government departments and their databases are not linked together. Thus, thorough research to ensure that there is no infringement is crucial before paying a wasted registration fee.
It is also important to consider unregistered trade marks when doing due diligence, as they still remain enforceable if they are infringed. Although unregistered trade marks are not protected by a legal statute, it is still a mark used to distinguish a business or individual from others. If you infringe an unregistered trade mark, their claim will be based on the law of passing off.
Trade marks protect the branding of a company including names, slogans, logos, and symbols. A registered trade mark lasts for 10 years with the option to renew for 10 year periods. On registration, you are required to choose which trade mark classes are relevant to your branding from a choice of 45.
A registered trade mark provides value to a company as it prevents rival businesses from using your individual work for profit as well as ensuring that your brand is unique and distinguishable in the market. Therefore, a thoroughly researched and registered trade mark is vital to the value of a company.
At Berry Smith, we can assist on a range of matters relating to trade marks, ensuring that your business has vital and necessary protection over its branding. We are also able to assist with the application for UK trade marks and work closely with partners in the EU who are able to assist our clients with any EU requirements.
If you have any queries or need any assistance relating to trade marks, please do not hesitate to contact us at email@example.com or on 029 2034 5511.