How to score on and off the pitch

Oxford United’s recent success on the pitch leads not only to Wembley but also to potential commercial reward off the pitch. Penningtons Manches takes a look at how “The U’s” can protect - and capitalise on - one of its most valuable assets: the brand.

When Oxford United Football Club (OUFC) travels to Wembley on 3 April for the final of the Johnstone’s Paint Trophy, the U’s fans will be showing their support by sporting the yellow scarves, shirts, banners and any other Oxford United branded items they can get their hands on.

Not surprisingly, OUFC’s success on the pitch has not only attracted considerable media attention but also undesired attention from counterfeiters. The bigger the brand, the more attractive it is to counterfeiters seeking to free-ride on the reputation and goodwill of the brand.

To date, OUFC has had difficulties in preventing bootleg sales, which are undermining their ability to generate funds from official merchandise to plough back into the club rather than into someone else’s back pocket.

Securing the club’s valuable IP assets is now high on the club’s priority list, and trademark experts from the Oxford office of Penningtons Manches law firm are currently assisting the club to secure registered trade mark protection for its core brands. This is initially in the UK but with a view to overseas expansion in key markets once the UK applications have progressed to registration.

But it is not only big brands that benefit from trade mark protection. Gavin Stenton, a specialist trade mark solicitor at Penningtons Manches, says: “For many SMEs, their brand is one of their most valuable assets so ensuring that appropriate protection is in place is vitally important.

“The global nature of trade also means that trade mark rights need to be protected in all markets where the business trades or manufactures. Part of our role is to conceive and implement a carefully-considered trade mark filing strategy that meets both the current and future needs of the business.”

Here is Gavin’s basic advice for successfully defending your brand and avoiding any own goals.

Four reasons for registering your brand

1. Peace of mind – Trade mark registration makes it much easier to prevent others from using your brand, even before launch. Using an unregistered brand does not guarantee brand exclusivity and runs the risk that a competitor might take advantage of, or even register, your brand. If this happens, it could exclude you from using the brand in the future, forcing you to re-brand and leaving you potentially liable for trade mark infringement.

2. The deterrent effect – registration entitles you to use the ® symbol alongside your registered brands. This warns others that the trade mark is your property and should deter others from using or registering conflicting brands. So the chances of any disputes are significantly reduced.

3. Valuable commercial asset – registered trade marks are attractive to potential investors or acquirers because they are easier to value and commercialise than unregistered brands. Assignments, licences and charges are also simpler to negotiate and can each be officially recorded on the trade marks register as evidence of the transaction.

4. Always and forever – registered trade marks have the potential to last indefinitely, subject to renewal every ten years. The Bass red triangle was first registered in 1876 and is still in force today.

Five tips for choosing a trade mark

1. The more unique and unusual the name is for the goods or services, the more likely it is to be registrable.

2. Choose a trade mark that is distinctive for the goods and services you are selling under the mark.

3. Avoid descriptive words (tasty biscuits); laudatory words (quality, premium); common surnames (Smith, Jones); and place names (New York, Paris).

4. A trade mark can only be registered if it meets the criteria set out in the laws of the country in which you are seeking registration. Generally speaking a trade mark must be distinctive and capable of being written down.

Registered trade marks include:
slogans like “Have a break”
3D shapes and packaging like the Lindt chocolate bunny
sounds like Nokia’s famous ringtone
colours or colour combinations such as IKEA’s yellow and blue,
Duracell’s black and gold.

5. Before you start using a new trade mark, check that it is not already being used by someone else. Otherwise you may find that you are stopped from using your brand, having invested time and money in developing goodwill in it.

When and where to register your trade marks

1. Register your trade marks as soon as possible, before your brand is launched or used in commerce. This will make it easier to prevent others from encroaching on your rights and free-riding on your investment.

2. Your brands should be registered in all countries/regions where: you sell or intend to sell your goods or services you manufacture or expect to manufacture your goods are transited.

Penningtons Manches advises many locally-based SMEs across a wide range of industries in securing protection for their valuable brands and are involved at all stages of the brand’s lifecycle from creation and exploitation through to enforcement and divestment.

Penningtons Manches Cooper

Penningtons Manches Cooper is a top 50 UK law firm with an unusually wide range of expertise and an expanded international footprint. We provide a highly personal service focussed on delivering the best results for our clients.

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