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Trade marks and brands - what your charity needs to know

Why do we need a trade mark? We're not a business!

Any name that is recognised by members of the public may benefit from trade mark protection, and there's a good argument that charities need protection more than businesses do. Your name or brand may be your most important asset, and if you're a fundraising charity, it may be your main source of income.

Having a registered trade mark means you can use the (R) logo, doesn't it?

It does more than that. The main legal effect of a registered trade mark is that you can block others using the same name, or a confusingly similar one, in the same or a related field of activity to yours. This extends to trading/operational names as well as registered ones. It’s also sometimes possible to recover compensation from the infringing party.

Our name is registered at Companies House and the Charity Commission. Isn't that enough?

No. Registration as a company or charity name gives you little in the way of rights against impostors. It may allow you to block others registering a conflicting company or charity name (though even that’s not guaranteed); it will give you no power to stop someone using that name. Trade marking is the only form of registration that will enable that.

It is possible to acquire trade mark-like rights in a name through use alone, without seeking registration (known as ‘passing off’ rights). These are usually of narrower scope than registered trade marks, are harder to enforce, and can take years to build up. In our view these are a weapon of last resort.

Do trade marks apply just to the name of our organization, or can other things be trade marked?

If it’s something that you’d be unhappy about someone else (accidentally or deliberately) imitating, you should think about trade marking. Logos, acronyms, the names of fundraising campaigns, and the names of products you provide to service users, can all be protected.

Do I need to worry about other people’s trade mark rights?

Because the whole point of trade marking is that you can block others use of conflicting brands, it stands to reason that someone else may have rights that could be invoked against you.

If you’ve been using a particular name for (say) a few years, the chances of someone coming out of the woodwork now to challenge you are pretty slim. However, where you’re looking to adopt a new name (or are considering changing the scope of use of an existing one), we would recommend carrying out clearance searches to check that the proposed brand doesn’t step on anyone’s toes.

When you create a new brand, ‘we need to trade mark this’ should be your second thought from a legal standpoint. This first should be ‘we need to check this is safe to use’. Your solicitor or trade mark attorney will be able to help you carry out thorough clearance searches.

As a charity, we’re never going to take someone to court, so what's the point of trade marking?

It's true that, whenever two charities have gone to court over a name or brand, the judge has had harsh words to say about the parties spending charitable funds on legal fees. But nowadays the whole English legal system is configured to try to stop matters reaching this stage. There is a host of alternative dispute resolution options open to people, including mediation, arbitration, and where charities are concerned, getting the Charity Commission involved. All are cheaper and lower-profile than taking someone to court.

When you also consider that a majority of brand name disputes are settled in correspondence between the parties, without having to commence even these kinds of semi-formal proceedings, the overall picture is that charities can effectively and economically enforce their trade mark rights, provided they take the right strategic decisions. Of course choosing an advisor who understands both trade marks, and the world charities inhabit, is crucial.

Our name is just a description of the charity. We can't protect that, can we?

For obvious reasons the law does not like giving monopolies in chunks of ordinary English that describe your activities. What many charities do not realise is that their names describe their organization itself rather than what it does - and names of this character can usually be trade marked. Names like Royal National Institute for the Blind, The Football Foundation and Cancer Research UK are all eligible for protection.

Does registering a trade mark make it impossible for someone else to use it with our permission?

Whether your name is trade marked or not, you'll want to set out the parameters of how other people can use it. The only effective way of doing this is via a trade mark licence. This is a formal document that sets out the terms of a third party's use of your brand. You'd normally expect to see information about the kinds of activities the licensee can use the name for; the geographical area of use; and the length of time the licence is to run for. The person granting the licence may want the option of terminating the licence if the other party does anything beyond the pale (eg. behaviour that could damage its name or reputation); the licensee may want a guarantee (or 'warranty') that the name is safe to use - ie. that it doesn't infringe anyone else's rights.

Trade mark licensing is high-risk - if you get it wrong, you can inadvertently sign away rights in your name or brand to someone else, with little or no comeback. So it’s important you get good advice. Be extra-careful where you’re licensing your brand to be used on others’ commercially-sold products (10p of the price of this cereal goes to ActionAid, that sort of thing), or by professional fundraising organizations. Both these scenarios are subject to certain provisions of charity law as well as trade mark law, so ideally you’ll want an advisor who is an expert in both disciplines.

If you have any questions, or would like some further advice on any of the issues raised above, then please contact our team of trade mark experts

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