Does your Trade Mark Protection still match your business?

A business may start with a relatively simple offering and, over time, develop into something considerably broader. A company that originally sold one category of product may later introduce complementary ranges, launch an online store, offer training or consulting services, license its brand or expand into entirely new markets.

The trade mark remains the same, but the business operating under it has changed.

That development should prompt a review of whether the trade mark protection obtained when the brand was first registered still reflects the way in which the business is now trading.

Trade marks are registered in accordance with the Nice Classification, an international system that divides goods and services into 45 classes. There are 34 classes for goods and 11 for services. The class or classes selected when protection is sought are therefore closely connected to the goods and services for which the trade mark will be used.

For a business owner, the important question is not simply whether a trade mark has been registered, but whether it has been protected in the areas of commercial activity that actually matter to the business.

A company might, for example, have secured protection for the products it manufactures but later expand into retail services under the same brand. Another may begin as a professional services business and subsequently develop software, training programmes or other branded products. As the commercial use of the brand expands, additional classes can become relevant.

This is particularly worth considering when a business is planning a new product line, entering a new market or developing another revenue stream.

Applying for protection in more than one relevant class can help align the trade mark portfolio with the wider commercial footprint of the brand. It can also become increasingly relevant where a business is considering licensing, franchising, investment or a future sale, as the strength and scope of its intellectual property portfolio can form part of the value being assessed.

The objective, however, should not be to pursue protection in as many classes as possible.

Trade mark filing should remain connected to the business's present activities and its realistic plans for expansion. Each additional filing carries a cost and should serve a clear commercial purpose. Careful class selection therefore requires an understanding both of what the business does today and of the direction in which it is likely to develop.

For established businesses, this also makes trade mark protection something worth revisiting periodically rather than considering only when a new brand is created.

Products evolve. Services are added. Businesses enter different markets and brands begin to perform commercial functions that were not contemplated when the original applications were filed. A trade mark portfolio created several years earlier can consequently cease to reflect the business that exists today.

A review of existing registrations can identify those gaps and allow the business to consider whether further protection is appropriate before the next phase of growth begins.

Barnard's Intellectual Property team assists businesses with trade mark registrations, class selection and reviews of existing trade mark portfolios to ensure that their protection remains aligned with their commercial activities and future plans.