Retail surgery: How do I protect my brand from infringement?

The most effective way for retailers to protect their brand is to obtain a trademark registration, according to Nick Fenner, a brand protection specialist at law firm TLT.

With more businesses looking to expand internationally, he says separate trademark applications might also need to be made in target overseas markets.

“Making an early application for trademark protection is advisable, as the application date can be an important factor in determining who has the right to use a brand,” Fenner says.

Armed with trademark registrations, a brand owner can create a protected space around the brand and form the basis for infringement actions.

These can include trademarks used to assist with customs seizures, as well as enabling the brand to challenge domain name cyber-squatters. It can also attack unfair use of the brand in competitor marketing, as well as block access to copycat sites. Finally, it means co-operation of trading standards can be relied upon in tackling counterfeit goods, as well as online auctions sites such as eBay.

Another important factor in maintaining a protectable brand is to ensure it remains distinctive in the mind of customers. This is achieved by drawing up a set of guidelines ensuring the brand is used consistently in a way that protects and enhances its distinctiveness.

It can take several years to acquire distinctiveness over certain aspects of branding, such as use of colour in packaging.

Fenner says: “Retailers who regularly refresh their brands need to be aware that they might not have accumulated sufficient distinctiveness over elements of their brand for them to be protectable, which could result in the brand being vulnerable to infringement.”