“Spring Clean” Your Trade Mark Portfolio: A How-To Guide

Spring is here, the days are getting longer and a need to “spring clean” is taking hold. With that in mind, it’s a good time to “spring clean” your trade mark portfolio and review your brand protection. Streamlining the administration of your trade mark portfolio can save costs and align your brands with your business goals.

Here’s a how-to guide to “spring cleaning” your trade mark portfolio:

What does your trade mark portfolio look like at the moment?

  • Do you have sufficient protection for your full range of marks? Does your protection cover the full scope of goods & services that relate to your current and future use of the mark? And are you protected in all of the territories that you operate in, or intend to operate in? Think about where you can bolster your protection by filing for additional trade marks to fill in any gaps.

Have you recently had a rebrand? What does that mean for your trade mark portfolio?

  • Are you likely to start using different variations of your marks to those already protected? It is worth seeking specialist advice as to whether you can rely on the protection you have in your existing marks to cover the rebranded version, or if you should be filing additional applications.

Do you have any redundant trade marks?

  • Renewal fees can be expensive and the process can sometimes be arduous. It can involve power of attorney documents and formalities such as notarisation. If there are any trade marks that you are no longer using, consider letting them lapse and focusing your attention on other areas of the portfolio.

Have you thought about registered design protection?

  • This can complement your trade mark protection where you want to protect the appearance of a product such as its shape or pattern. You can find out more about design rights here. It is worth assessing what your brand incorporates in the round, to see if you would benefit from supplemental design protection.

Are some of your trade marks vulnerable to cancellation?

  • In the UK and EU, trade marks become vulnerable to cancellation 5 years from the date of registration. It is worth thinking about how the mark has been used since it was registered, and making sure that it is still in active use. Recent cases involving big names such as McDonald’s and Ferrari serve as a useful reminder that even well-known brands need to take note of the “use it or lose it” rule (see our previous articles on these cases here and here).

Legal representation at the IP Offices

  • If your brands are growing and the business is expanding, it might be worth thinking about appointing counsel. They can provide holistic and strategic advice on your overall trade mark portfolio. Even if you do already have legal representation, changing firms could lead to new and innovative ideas for protecting your brand, and a difference in direction and perspective.

If you would like to discuss any of the above, please do get in touch by clicking here.