This week’s blog marks the start of a series where we’ll delve into the lesser talked about areas of running a successful online business. Compliance with the law of a particular jurisdiction alongside Amazon’s often more stringent policies is essential to ensure that your product gets to market - and stays there. Naturally, the first layer of compliance for brand owners when selling on Amazon is registering on Brand Registry which requires that you have an active registered or pending trademark. But what exactly are trademarks? When should a small brand look to get them and what protection will they be afforded? We’ve got you covered!
Section One of the UK’s Trade Marks Act 1994 defines a trademark as:
(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
(b) of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.
A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. This often takes the form of a logo or catchphrase, but even hand symbols or celebrations can be trademarked: just look at Usain Bolt’s ‘Lightning Bolt’ celebration which he applied to trademark in 2022, or Mo Farah’s ‘Mobot’ that was successfully registered (UKTM registration no. 2645895).
You’d be forgiven for assuming that these global sports stars waited until the latter stages of their careers to register their trademarks, and so should you. In reality, a body shape or gesture will likely need to be widely recognised by the general public for the IPO to accept it as a trademark; a brand name, on the other hand, can and should be registered early on in your brand’s journey. To elaborate: a trademark protects the owner’s intellectual property and allows them to report copyright infringement upon it by another person who may be trying to profit off the brand awareness that you have painstakingly built.
Now, let's say that you’ve built a decent-sized brand, you have a good web domain - and you’ve been assured that the legal side of things can wait. What’s to stop someone from filing your brand name and logo as a trademark? Absolutely nothing. It’s not uncommon to see this happen and brands can be forced to pay the legal owners effectively a ransom note to purchase the brand's trademarks.
That's why at Sitruna, we advise all our clients to register their trademark if they haven't already done so - we're always happy to lend a helping hand navigating this process. Don't be afraid to get in touch for more support.
This is a very common client question, and rightly so - let's clear the ambiguity. A trademark will only protect you in the jurisdiction in which it is registered. As such, following Brexit, trademarks registered in the UK after the 1st of January 2021 are not recognised in Europe. To register a trademark across the European Union, you will have to file an application with the European Union Intellectual Property Office (EUIPO). Please note the exception here, a successful application with the EUIPO will afford you protection across all EU member states.
To file internationally, you will either have to apply with the intellectual property offices of each jurisdiction or you can go through the ‘Madrid Protocol’ which will enable you to apply to 120 jurisdictions through one application as opposed to individually. For the sake of conciseness, we’ll focus on UK registration in this article.
Trademark registration with the IPO is split across numerous business classes: take a look on the IPOs trademark register to see the surprising number of classes a brand can cover. Take, for instance, the IPO register entry for Mo’s celebration discussed earlier - you’ll see that he’s got IP protection for multiple classes ranging from books through to computer games. We encourage brands to start as they mean to go on and register for classes pre-emptively. If you are a gym brand selling supplements, whose to say you won’t venture into apparel?
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I hope that this has provided an insight into the capabilities of trademarks, their limitations and the importance of registering your brand's intellectual property early in your journey.
If you have any questions about any of the matters raised or are facing legal or compliance issues related to your online brand, then please feel free to book a discovery session.
Harry Curtis
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