Tips For Safeguarding Your Concept, While Making Your Mark on the Wellness Industry

By Emma Green
March 22, 2018

Tips For Safeguarding Your Concept, While Making Your Mark on the Wellness IndustryConsumers driving the Wellness industry seek more than just a clothing company, a new workout, or a healthy alternative to the standard lunchtime sandwich – they value brand integrity and want to build relationships with brands that align with the lifestyle they aspire towards. In order to compete in the $3.7 trillion dollar industry, Wellness companies need to have a solid brand protection strategy in place from the outset. Ideally one that is capable of scaling with your international ambitions, and which can help prioritize spending, save resources and attract investors. Early-stage checks on trademarks, designs and domain names are essential to ensure your business can trade with confidence.  

What follows are some questions and considerations those in the Wellness industry should taken into account as they try and position themselves for growth.

Small scale or worldwide domination?

Are you a US company wanting to expand your brand into Asia? Or maybe a UK company expanding into Australia? Against a global retail industry, it’s important to remember that trademark and design rights are territorial. Think about where you want to target your business and draw up a list of key markets you intend to reach immediately. Consider your plans for launch, your short-term growth in the first 1-2 years and your long-term expansion plans.

Focus on the essential territories first. There are mechanisms to extend protection to additional countries within the first 6 months, whilst maintaining the date of first filing. It’s also possible to achieve protect across multiple countries via a single International Application, which saves on cost and time. Also consider your launch plans, and whether your brand or product needs to be kept secret – there are easy ways to achieve this as well, like filing in the name of a shell company, or deferring publication of your design.

Wait a minute, what do you actually do?

Trademark applications are tailored to cover a specific range of goods or services and can be relied on to prevent others using your brand (or something similar) in relation to the identical or similar goods and services. Trademarks are therefore incredibly useful in preserving space in the market around both your business name and logo. Design registrations – which essentially look at the shape and appearance of products or the UI of apps – can also be an important tool in preventing others trying to piggyback off your success.

What is your core business offering? What do you intend to sell to consumers in the next 5 years? Do you have plans to expand your product range, or your global reach? What would you be most bothered about someone else doing?

These are all important questions that should be addressed before filing applications to protect your brand. You don’t have the opportunity to retrospectively amend the content of a design or trademark application, so anything you’ve missed or need to change would need to go into a new application, driving up cost.

An IP lawyer or trademark attorney can help you to help decide what needs to be covered.

Trademark clearance checks – don’t run before you can walk

Once you’ve identified the relevant geographical scope and the goods/services for which you need protection, it is essential to check whether the mark you want to use (which could be plain text, a logo with words or an image) or the design of your product (1) can be used without risk of infringement and (2) can be protected.

Clearance searches look for identical and similar marks which have been registered in relation to the relevant goods/services. Design clearance searches are more complex, but essentially look for designs which are similar to your product.

We do this to identify the infringement risk – someone with an earlier registration could sue for trademark or design infringement if your brand is confusingly similar to theirs. And, in a worst case scenario they could get an injunction to remove your products from the market, meaning loss of revenue, and may ask you to pay them damages.

Both design and trademark clearance searches should also check whether anyone might have unregistered rights in similar marks. These do not appear on any register and are generated as a result of trade. If you’ve done your market research, you’re likely to have a good idea who your key competitors are, and this advice is invaluable to any attorney assisting with a clearance search.

Checking the availability of a domain name is also important, but is entirely separate to trademark and design clearance. Just because a domain is available doesn’t mean there is no risk of infringement.

Draw a line in the sand – and file your applications.

Once you’re happy with the results of the clearance exercise, it’s time to file your applications and secure the domain name registration.

Act quickly as your rights run from the filing date of any application.

The time it takes for your mark or design to achieve registration depends on where you have filed, whether the Registry raises any concerns and if any third parties oppose your application(s). Having a good relationship with an IP lawyer will help smooth the process out, as they will be experienced in dealing with those issues quickly and efficiently.

Even if you’re already a few years into trading, reviewing your protection and checking whether it still suits your business is important. You might find you need to file some new applications to top-up your protection to cover a re-brand, product extension or expansion into new territories.

Maximizing the strength of your brand – why is this important to me?

Build strong foundations first. Clearance searches identify risks and, provided you use the results to guide the development of your brand, can significantly reduce the likelihood of being sued for trade mark or design infringement.

No one wants to spend money generating consumer interest in a brand if shortly after launch the threat of litigation means you have to change it all again.

Obtaining the right protection means that you have the ability to stop people who try to copy your brand or take advantage of or damage the reputation you have created. The Wellness industry is becoming increasingly crowded so it’s worth investing in protecting your brand and space around it to remain attractive and relevant to consumers.

A brand protection strategy is also a huge attractive for investors. It shows commitment, forward thinking and helps to portray your business as a viable investment opportunity.

This is true for any size of business, whether you’re looking for startup funding or you’re considering growth via Venture Capital or with an Angel investment approach. IP rights are assets that add value to your business and a brand protection strategy should be seen as a long-term investment for future growth.

 

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Image ID: 61850080
Copyright: Iakov Filimonov

The Author

Emma Green

Emma Green is an Associate at Bird & Bird’s Intellectual Property Department, based in London works on a range of contentious and non-contentious intellectual property matters, with a particular emphasis on trade mark, brand protection and portfolio management.

For more information, or to contact Emma, please visit her Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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