Trade mark lessons from The Smiths

Johnny Marr has issued a statement in response to Morrissey's claim that he has registered THE SMITHS trade mark without his permission. It appears from the statement that in fact an agreement was made between the parties and a document awaits execution by Morrissey that would see Marr and Morrissey own the registration jointly. 

It is always interesting when stories like this arise because I am genuinely surprised that The Smiths trade mark was not protected via trade mark registration in the UK a lot earlier than the filing date of 2018. If you are a brand owner that is yet to consider the legal issues associated with the use and protection of your brand then it is important to do so in order to avoid some common pitfalls and to ensure you are in a good position to prevent infringing use. 

How soon is now?

Brand owners should engage with the legal issues associated with the clearance and registration of brands as early as possible. 

A strategic approach gives you the best opportunity to fully consider any risk to your use and registration that is posed by earlier trade mark rights and, once clearance has been conducted and registrations are in place, will put you in a stronger position to prevent third parties from using your brands. 

Heaven knows I'm miserable now

It is extremely common for brand owners to launch new goods and services under new brands without conducting proper checks to assess whether the brands in question are free to use. Launching a new brand without considering earlier registered rights that could conflict with what you intend to do under your brand can have significant implications after launch if a third party brand owner objects to your use and you are forced to rebrand, pay damages, and recall any branded goods.  

What difference does it make?

Owning a trade mark registration gives you an exclusive right to your brand in relation to the goods and services protected by your registration. It is cheaper to enforce than unregistered rights and it is a valuable asset, which can be licensed and assigned to third parties. 

There is a light that never goes out

Provided that renewal fees are paid, trade mark registrations give protection to a brand indefinitely. This means that if The Smiths brand had been protected in the 1980s, it would still be in force now and could have been relied upon to prevent infringing use since that time. 

Ask

If you are creating and launching new brands then you should speak to a Chartered Trade Mark Attorney as early as possible in order to properly understand the issues relating to your use and registration.