Services relating to Branding

Jane Lambert

29 May, revised 21 Oct 2017

I described the services that I offer generally on the Services page of the NIPC Law website. Here are some of the services that I offer specifically in branding.

A “brand” is the public’s perception of a business or its products or services (see Jerry McLauhlin, “What is a Brand, Anyway?” 31 Dec 2011 Forbes). It is that perception which attracts customers to (or in a few cases repels them from) a business and it is that attraction (otherwise known as goodwill) that generates revenue. Those seeking goods or services usually identify businesses or their products or services by their names or logos though sometimes by the design or style of packaging of their products or by the layout or decoration of their business premises. A good reputation with consumers is maintained by good after sales service and prompt, efficient and sensitive handling of complaints and customer feedback. Through such services, businesses can acquire considerable information on their customers, their needs and preferences which can be enormously valuable for new product development and future marketing.

A company enjoys some protection for its corporate name automatically under s.69 (1) of the Companies Act 2007 and the law of passing off. Businesses can also register their names as trade marks in relation to the goods or services that they already supply or intend to supply within 5 years of their application for registration. If they have a website they can register a domain name that is similar to their trade mark either in the generic or a national top-level domain name space. If the appearance of their goods is new and has individual character they can register the of those goods as a registered or registered Community design. If consumers value particular goods for special characteristics, associations of producers of such goods can register a special form of trade mark known as a certification mark guaranteeing that goods bearing that mark will have those characteristics. Similarly, if specified goods are produced by members of a trade association, the association can register marks that may be used only by its members as a collective mark. There is also EU legislation guaranteeing the geographic origin and in some cases methods of preparation of regional specialities like Cornish pasties and Stilton cheese. Finally, databases of customer records are protected by database right and the programs for those databases by copyright.

I help businesses identify the branding assets that they can protect and suggest the optimum form of legal protection.

Most businesses can benefit from registering a trade mark and I can advise them of their options and the costs and procedures for exercising them. I strongly advise clients to consult trade mark attorneys and I help them to find one who meets their needs if they do not already instruct one. If, despite such advice, a client chooses to register his or her own mark I advise him or her on the relevant laws and direct them to search services before they make their applications. If they or their attorneys encounter objections from examiners or third parties I will advise and if necessary represent them in ex parte or opposition proceedings in the Trade Marks Registry. If they or their opponents are dissatisfied with the hearing officer’s decision I will advise them on the prospects of appeal and represent them before the Courts or Appointed person. Similarly, if a third party wishes to revoke a registration or apply for it to be declared invalid I will advise and represent a party to the revocation or invalidity proceedings and upon any appeal. I provide similar services in relation to registered and registered Community designs.

Where there is no trade mark registration as is often the case where a supplier relies on the get-up of his or her products or the layout and decoration of his or her business premises I will advise on the law of passing off and if necessary represent the client in the Chancery Division or the Intellectual Property Enterprise Court (“IPEC”).

In respect of customer records, I advise on database rights, copyright in database software, confidentiality and trade secrets and data protection. I draft non-disclosure agreements, confidentiality clauses in terms and conditions and commercial agreements, privacy statements and knowhow and show how agreements.

Since all intellectual property rights are enforced or defended by proceedings in the civil courts or IPO tribunals I advise clients of specialist IP insurance and other funding options.  I also advise them of the need to remain vigilant after grant and advise them about watch services which look out for possible infringements or problematic trade mark applications.

If it appears that someone has infringed an intellectual property right I can advise quickly on the merits of the dispute, draft letters before claim or response and try to negotiate a basis for settlement before proceedings are issued. Should proceedings be issued I shall try to resolve them quickly through direct negotiation, mediation or some other sort of alternative dispute resolution. If litigation cannot be avoided I will represent parties in the Intellectual Property Office or civil courts.

Where more cost-effective forms of enforcement are available such as complaints under the Uniform Domain Name Dispute Resolution Policy for the transfer of generic top-level domain names that are the same or confusingly similar to trade marks or corporate names or the Company Names Tribunal I advise clients how to use those procedures and draft the necessary paperwork for them. I have particular expertise in domain name proceedings as I have sat as a domain name dispute resolution panellist since 2004.

I can draft and review assignments, licences, joint venture and shareholders’ agreements as well as standard terms of business, franchise, distribution and all other agreements involving or relating to branding.

If I can help you in any way contact me through my message form or call me on +44 (0)20 7404 5252 during office hours.