A brand is the public face of every business and one of its most valued assets. As more and more businesses operate at an international level, so the importance of protecting their brand internationally increases.
The value of a brand can far outweigh the other tangible assets of a business. In some cases, the top global brands can account for as much as 75% of their organisation's total stock market value.
Shepherd and Wedderburn has recognised the need to protect this value by establishing a trade mark practice within the media and technology team. Instead of operating through a network of agents, its dedicated trade mark practice carries out its UK and EU trade mark registrations itself, thereby cutting out the middle man. For registrations further afield it makes the initial applications to the World Intellectual Property Organisation (WIPO) itself (where appropriate) or to agents in the relevant countries.
As Alison White, the partner heading up the trade mark group, explains: “We took the view we would offer a comprehensive service for trade marks for clients. We would then be able to better advise in relation to any licensing or infringement action as we would have the overall knowledge of their trade mark portfolio."
“We also have the benefit of a network of agents and as members of the World Services Group we have access to trade mark attorneys and lawyers overseas.”
Since the practice was established it has become the agent for over 160 trade marks, including those held by the prestigious Royal and Ancient Golf Club of St Andrews, known as The R&A.
The work Shepherd and Wedderburn does to protect The R&A brands worldwide is a good example of the trade mark service.
The Royal and Ancient Golf Club of St Andrews, the governing body of golf around the world (except the US) was established in 1754. It has evolved through two and a half centuries as the leading authority on the world game.
The Club celebrated its 250th anniversary in 2004 when it handed responsibility for the Rules of Golf, the running of The Open Championship, and the development of the game in existing and emerging golfing nations to a newly formed group of companies. These are collectively called The R&A. Its brands include 'The Open Championship', the image of the claret jug as well as 'The R&A' brand itself.
Alison explains: “It is particularly important to The R&A that we are able to offer the single service. In addition, part of what we do for The R&A is to provide a watching service to notify them of potential conflicting applications being lodged worldwide. This has uncovered quite a few issues, particularly because of the popularity of golf. As a result we’ve taken action in many far-flung corners of the world.”
One recent action Shepherd and Wedderburn has been involved in concerns an opposition to a trade mark application in Uruguay which was discovered using the watching service.
Alison says: "Uruguay is unusual because in order to raise an opposition to a trade mark application you have to register or apply to register a trade mark there. One of the first things we had to do for the client was to apply for a trade mark for them in Uruguay."
Angus Farquhar, Commercial Director of The R&A, recognises the value of working with Shepherd and Wedderburn: "The team has the expertise to assist The R&A in applying for appropriate trade marks worldwide, monitoring trade mark activity worldwide and providing detailed analysis and specific advice.
"Their international network of contacts is of particular benefit. The biggest challenges we face in this area include information gathering and understanding the legal processes in various territories. Alison and her team help us to overcome these."
Although the team of Alison, Rachel Payne and Lorna McCall can call on specialist intellectual property litigation partner Gordon Deane to assist clients throughout the UK, often conflicts can be resolved in other ways.
Parties may agree to 'live and let live' through the mere consent of the prior owner blocking the application or a coexistence agreement between trade mark owners setting out what actions each is prepared to put up with by the other. However where such agreements cannot be made, the courts or relevant trade mark office will have the final say.
"The services we provide are applicable to all types of business, whether they are UK based or global. We are currently advising clients across a range of sectors including bioscience, computing and software, tourism, leisure and hospitality, manufacturing, charities, advisory services, and the financial services industry," explains Alison.
"We offer a full range of branding, licensing, protection and litigation. If we are already advising a client regarding property deals, commercial contracts or corporate dealings, we have an understanding of the company and the way they like to do business. Moreover, for new brands we can help the client identify potential problems before they have incurred significant costs and help to resolve any issues at an early stage."
With brands potentially accounting for such a significant percentage of a business's value, not taking steps to protect your brand could be costly.