How to future-proof a business brand

Although you may have a vision of where you want your business to end up, have you considered that your business and brand will evolve over time as it grows? This means that you could end up selling goods or offering services that expand your existing range in the future, that you do not sell now.

Take, for example, a clothing company which currently only sells clothing, headgear and footwear. Now think about the consumer who might buy clothes from this company but may also want to accessorise their apparel with, e.g., bags or jewellery items. Seeing this, the owner of the clothing company may use this as an opportunity to sell other items ancillary to the core products.

Now imagine that the owner of the clothing company has a registered trade mark that only covers them for selling apparel, because, at the time of filing their application they did not foresee this evolution in their business. What impact could this have? Well, because their brand only covers them for apparel, it is possible that a third party could seek to register a similar brand to cover, e.g., jewellery, making it more difficult for the owner of the clothing company to expand or evolve into other business sectors, thereby limiting the ability to grow and expand.

Remember, the purpose of a trade mark is to provide you with a monopoly of your brand so that others cannot use the same or similar mark to designate their goods or services. Therefore, not adequately protecting what your business does or will do in the future may have ramifications on the strength of trade mark protection you hold.

The answer is understanding what your business does and what it is likely to do in the next three to five years – and widen the scope of your trade mark application accordingly.

When it comes to trade mark protection, there is no requirement to currently be selling the goods or provide the services you’re seeking to protect. However, there is a requirement that you sell the goods or services within five years of achieving trade mark registration. Failure to use your trade mark in the course of trade will mean that your trade mark is vulnerable to cancellation on the ground of non-use and may be removed from the trade mark register, leaving you with no protection.

It is therefore important that you have a genuine and bona fide intention to use the trade mark in relation to the goods/services covered and make actual use of it.

The easy way to remember this is – use it or lose it.

When you file a trade mark application, you have to identify the mark you want to protect and define the goods and/or services that your mark will cover. The definition of goods/services is based on an internationally agreed system of classes covering different areas of trade in goods and provision of services (a.k.a., the Nice Classification).

There are 45 classes in total which group together broadly similar goods or services. Classes 1-34 refer to the provision of goods and classes 35-45 refer to the provision of services.

Whilst the Nice Classification is largely an administrative tool, it can be used when determining the boundaries of infringement, which could mean that you are unable to enforce your legal rights if you have failed to adequately protect your business.

In other words, if you failed to cover the relevant classes that your business does or will do, then you may lose the opportunity to prevent others from gaining a monopoly right.

Other than choosing a brand that is not descriptive, it is really important to understand what your business will evolve into in the next three to five years and understand which classes from the Nice Classification will be required.

The best way is to speak with a trade mark specialist who will have the experience to ensure that your brand has adequate and a broad scope of protection by ensuring the relevant classes are selected to cover what your business does and what you may genuinely expand into.

Once an application is filed, the scope of protection, i.e., adding additional classes to that application cannot be done. The only way to cover additional classes is to file a whole new application which is likely to add to overall costs. So, it makes sense to ensure that your application covers your business needs, now and in the future, to ensure adequate brand protection.

In recent years NFTs and the metaverse have been likened to the gold rush and are dominating the headlines. Stories of the likes of Nike and L’Oréal creating NFTs or protecting their brands in the metaverse are rife and many other businesses are following suit.

So should you do the same thing? Well, the first thing is to properly understand what an NFT is and what the metaverse is.

Both work in a digital space and are not tangible, that is, you cannot physically hold or touch an NFT or the metaverse.

An NFT stands for a non-fungible token, which means that it is unique and can’t be replaced with something else. Consider it to be like a unique barcode of “metadata” that authenticates and represents digital content. It acts as a certificate of authenticity. NFTs have largely been used in relation to digital art where the need to authenticate the original owner of the work is required and also the ability to track the change of ownership. The exclusivity and authenticity are what makes the NFT valuable as you will own an original, one off, piece of digital work.

The metaverse is a 3D virtual online world where you will interact with others entirely digitally, via a personal avatar and consume nearly all the goods/services that you would consume in the “real world”. For example, your avatar might purchase a pair of Nike trainers or a Louis Vuitton bag.

Going back to the question of whether you should protect your brand in the metaverse or whether you should create an NFT will largely depend on the goods or services you provide. Whilst it may seem prudent to jump on this new trend, you should be mindful of whether your business will actually evolve into producing NFTs or whether you will look to exploit your brand in a digital environment (remember the rule: use it or lose it).

More importantly, this area is constantly changing, for example, the metaverse isn’t yet fully operational. In addition, the law and in particular, trade mark law, hasn’t quite caught up with the legal implications of the metaverse and NFTs and there is still talk of regulating this area.

Therefore, the key consideration is whether your business will evolve into offering goods in the digital arena and/or whether you will create one off digital works and put them to use in the course of trade within three to five years of achieving trade mark registration. If it will, then yes, consider it. If it won’t, then leave it.