Digital Health Technology – Trade Mark and Design considerations
Given the fast pace of digital health technology, the need to ensure IP is adequately protected is greater than ever. Here we are considering trade… Read more
Given the fast pace of digital health technology, the need to ensure IP is adequately protected is greater than ever. Here we are considering trade marks and designs specifically.
In terms of trade marks, there are a few key considerations:
1) brand name
A brand name is the way that a business stands out from the competition. It therefore needs to be able to identify the business as the only source of a product, service or solution under that brand.
You may want a brand that leaves customers in no doubt as to what you do or what you sell. However, an overly descriptive trade mark is highly likely to be rejected by the trade mark registry as it will be unable to act as a trade mark; that is to denote your business, product, service or solution to the exclusion of everyone else. Therefore, brand names should aim to be a distinctive and strong as possible.
That said, if you’ve already built up a real following and been trading for a while under such a brand, you might be able to establish, with evidence, that you’ve done enough to make a descriptive mark distinctive of you and your business.
2) clearance searches
Before using or registering a new brand name as a trade mark, it is strongly recommended that clearance searches are conducted to ensure that there are no conflicting third party marks.
If conflicting marks are identified at this stage, it is much easier to change the brand if necessary or obtain the necessary consents to use before such use has begun.
Also, clearance searches are a useful tool to narrow down a list of potential brand names to the final one.
Although the UK recognises unregistered trade mark rights, it is often harder to protect unregistered marks as you first have to prove that the unregistered mark has acquired sufficient goodwill or reputation. Outside of the UK, in “first to file” countries, use will give you no protection at all. Therefore, registered trade mark protection is recommended.
You can register a word, a logo or a combination of both as a trade mark. In some jurisdictions, such as the UK and EU, it is also possible to register more exotic marks such as colours, smells and sounds.
Logos or device marks can also be extremely valuable and, in some cases, have the power to designate a brand without any further clues. In an increasingly online world these are likely to grow even more important as they can be used more easily to denote the brand figuratively.
Once you have successfully registered a trade mark, you should take steps to ensure that:
• the mark is not used in a manner that could lead to your registration being revoked or cancelled;
• you take action against uses that infringe your trade mark right; and
• you maintain sufficient control over the use of your trade mark by employees or licensees.
To assist with the above, we recommend that you keep evidence that your trade mark (as registered) is used in commerce and has acquired a reputation in the market, for example, by keeping copies of advertising campaigns and articles in which your trade mark is mentioned.
Do not permit use of the mark in a way that could make the mark generic— a trade mark should always be used as an adjective rather than a verb or noun. For example, a Hoover vacuum cleaner/vacuuming rather than a Hoover or ‘hoovering’.
For key brands, it is worthwhile setting up a monitoring service to help police the marks by providing notices of newly published/registered trade mark applications which are identical or confusingly similar to your own mark in its specified classes.
We also advise that brand owners regularly perform Internet-based searches for marks that are identical or confusingly similar.
A registered trade mark means you can stop others from doing the following acts:
• using an identical trade mark in relation to identical goods or services;
• using a similar mark in relation to similar goods or services where it is likely that such use will confuse the relevant public for those goods or services.
If your registered trade mark has a reputation in the UK, you may also be able to stop third parties using a similar mark in relation to different goods and services, provided you can prove that such use takes unfair advantage of and/or causes detriment to the distinctive character or reputation of your trade mark. In order to qualify for this protection, however, a mark has to be very well known. This type of infringement tends to be available to trade mark owners only after several years of intensive use of the mark.
Once a trade mark has registered, you may wish to monetise it by way of licensing the use of your trade mark to others.
Remember that you only gain protection for your trade mark as it is registered—if you change your branding then it is advisable to make a fresh trade mark application (even if the changes to the mark are only marginal).
In addition to trade marks, it is also worthwhile considering design protection for digital health devices, logos and/or graphical user interfaces (GUIs), for example.
A design protects the appearance of the whole or part of a product and results from the features of the lines, contours, colours, shape, texture and/or materials of a product and therefore is an important IP right. Design protection gives the proprietor the exclusive right to use a design, including making, offering, putting on the market, importing, exporting or using the product.
Designs can also be licensed, allowing you to monetise your product.
Kemp Little’s Trade Mark and Design Practice offers the full range of trade mark and design services in the digital health sector to ensure that you are Better Protected.
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