Futureproofing your brand

By Jonathan Perlmutter, Birkett Long

At Birkett Long, we are lucky enough to be able to work with some very well-known brands. Some of them are almost as old as the firm itself, while others are recognised in households across the world.

Published in Suffolk Director Magazine, Summer 2021

Protecting the Director: Birkett Long

Whilst few can claim to predict market trends or social mores with any degree of accuracy, we can provide a firm foundation on which to build and work with you to keep you on an even keel for years to come.

When creating a new brand it is very easy to think with the heart, to the exclusion of other considerations. You might settle on a word or logo style because it just feels right, or that it in some way embodies your passion. What you might not realise is that brands are laden with intellectual property rights; many registered but some unregistered and so harder to spot.

Protecting against trademark infringement

If you can’t claim such a territory, you risk major problems at a later stage, such as being sued for trademark infringement or being prevented from using your brand.

Whilst it is very easy to form an emotional attachment early, it is best to be at least part-rational to begin with. This will avoid a greater upset further down the line, not to mention the resources wasted in building a brand twice. Planning is therefore key…

In order to build it into our filing strategy, when we conduct pre-filing searches for you, we will want to know not only whether you are trading in the UK, but what your future expansion plans might be for trading overseas.  When undertaking these searches, we can check all major markets of interest to you, so that you make a choice which will not be fettered by an already existing trademark in another jurisdiction when you come to expand.

A useful trick in international trademark filing, is to utilise something called a priority right. This allows you to file in a first country on a first date, and then file in secondary countries up to six months later using the same first date. This enables you to spread costs and also to pursue multinational filing strategies without fear that someone will file something which blocks you in one of your secondary target countries.

Futureproofing trademarks

We can also help you with futureproofing the mark itself, both in terms of the scope of goods and services which we recommend. We want not only to protect your brand, but also to assist you in occupying a space that is sufficiently broad to provide an impediment to competition.

By optimising the first instance filings you make, we can provide you with room for manoeuvre. A good, robust word mark can, for example, provide protection for visually different iterations of your logo, and a thoughtfully drafted specification can provide you with protection for additional goods and services you might offer as you expand.

This allows you to maintain a high level of agility, giving you scope to pivot in order to react in a timely fashion to new commercial opportunities and customer needs.

Birkett Long loves working with passionate brand-builders and would be delighted to chat with you about how the team can help you with your brand planning and trademark strategy. 

Jonathan Perlmutter is Head of the Intellectual Property Team at Birkett Long LLP.
E: jonathan.perlmutter@birkettlong.co.uk T: 01206 217318 or visit: birkettlong.co.uk

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