First published in the October 2022 issue of FMCG Business.
The speed at which brands come to market in the food and beverage industry can create a tendency to aim broadly but short-sighted when considering brand protection. However, it pays to take a more strategic approach to maximizing the protection of the trademark registration and, ultimately, its value to the business.
An intellectual property specialist can help you identify the critical elements of your brand that most deserve protection. When proposing a new brand, many companies make the mistake of asking for the full brand of what they use rather than its individual, distinctive elements.
For example, if you register a stylized version of JASMINE’S JAGUAR JUICE for orange juice, your scope of protection will be much less than if you only register the JAGUAR mark in plain text. The registration will be infringed by anyone who uses the word JAGUAR (or words that sound similar) in connection with the juice.
Whereas the longer stylized version of the mark will only be infringed by someone who uses all or most of the words, or similar sounding words, and uses a similar form of stylization. Likewise, while a logo may be easier and cheaper to secure, it may not provide the best rights for your business.
There is also an art to ensuring that the registration is broad enough to cover your key products profitably, to maximize your ability to sue for infringement, and to avoid a registration so broad that it could be vulnerable to attacks.
If the company has a clear and realistic business plan for the brand’s future prospects in five years, this should be reflected in the scope of goods and services requested.
Rights holders have a period of three years to start using the mark on the goods and/or services requested. After this period, the mark may become vulnerable to removal from the register if it has not actually been used on or in connection with the goods and/or services.
There may also be implications for international applications if the scope is too broad. For example, in the United States, when an applicant files a trademark application, they must state a legal basis for filing the application. One of these legal bases includes possessing a good faith intention to use the mark in commerce with the goods or services identified in the application. This applies even if the applicant has a registration for the same mark in his “country of origin”.
In this case, it will be important for companies to document all steps taken to bring the goods and services to the US market under the brand.
When considering international trademark protection, it is good to identify at the outset which protection is urgent for enforcement and which countries should be prioritized. For example, there is only a six-month window where you can file in other convention countries (which are signatories to the Paris Convention for the Protection of Industrial Property) and claim earlier priority over the register from the date of filing your application/registration in New Zealand. .
There may be good tactical reasons for wanting to do this, and knowing which countries will be a priority for the company can help better achieve registration in a cost-effective manner.