Help protect your business from sharp practice by registering your business name as a trade mark, is the message from Which? Trusted trader, KJM Group Limited after it fell foul of a competitor’s misleading advertising campaign.
Google ads are the paid-for adverts that appear at the top or side of your search in Google. When used properly, they are an entirely legal and above board way to advertise, and many companies use them. However, in this instance, a third party chose to use KJM’s name in what appeared to be an attempt to trade on the company’s positive brand reputation.
The Andover-based home improvement specialist was targeted by a competitor business, registered to an address in London. The competitor business ran a series of Google ads in April 2017 using KJM’s name in the header plus a link to the competitor’s website, like this: ‘KJM Windows – Top Quality Windows and Doors – competitorwebsite.com’.
Mark Pearce, managing director of KJM Group Limited, said: ‘The ads placed by the competitor could, in our opinion, could be very easily mistaken by homeowners for ads placed by us. The use of ‘KJM’ in the strapline of the ad means it’s not unreasonable to suggest that someone could click on it believing they were being directed to our own website, when in fact they were being completely re-directed to a competitor’s site.’
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Harder to protect without a registered trade mark
These ads would appear when a potential customer searched for KJM Group. Deliberately using the name of a competitor to trade on their reputation is not legal but is harder to put right, if it is not registered as a trade mark. Mark’s experience was that although KJM Group Ltd felt the ads were damaging and exploiting its brand, Google declined to remove them because the KJM name wasn’t registered as a trade mark.
It is possible to protect an unregistered trade mark - however, it can be difficult. Businesses that have not registered their company names as trademarks can bring an action for ‘passing-off’ under common law. KJM Group Limited could bring an action like this but the pressure would be on them to prove that:
- they had built up a good name for their brand and services
- the competitor was aiming to deliberately mislead consumers into thinking the ad was placed by and led to KJM
- KJM had suffered damage as a result.
It is usually much easier to protect a registered trade mark.
Tips on how to register a trade mark
Be aware that registering your business with Companies House is not the same thing as registering your business name or logo as a trade mark.
Step one: decide what you want to trade mark
Before starting the process, you need to decide exactly what you want to register as a trade mark. Is it the business name itself? Is it the name in association with a logo or particular colours? Think about what it is that makes your business name different and eligible for registering as a trade mark. It needs to be unique. You can register:
- any combination of these.
Step two: check to make sure no one else already owns that trade mark
Before you can register a trade mark, you need to check that it really is unique and that the particular combination of words, colours and so on isn’t already owned by someone else. This is one reason why you need to be so specific about what you want to register.
You can search the trade marks database on the government website. You also need to check the Intellectual Property Office’s trade mark journal, to see if something similar to your trade mark has been registered in the last week.
If your business name is already registered by somebody else you might want to consider changing your business name slightly. Or you can ask the holder of an existing trade mark for permission to register yours.
Registering your trade mark
It’s possible to register your trade mark yourself on the government website for a fee of around £170, plus an additional £50 for each additional class – or category – you wish to register in.
There’s also the option to use a checking service to make sure your application meets the regulations. This is slightly more expensive, at £200, plus £50 for each additional class. You can also fill in paper forms to apply by post (£200 plus £50 for each additional class).
While this may work for some businesses, it’s often a good idea to use the services of a specialised trade mark lawyer. Trade mark law can be complicated and having a specialist lawyer on your side can help you deal with potential issues, such as another business opposing your application, which class(es) to apply for, whether you want a UK or international trade mark, and so on.
Once you have successfully registered your trade mark, you can sell, market, license and mortgage your trade mark should you wish to do so. After 10 years, you will need to renew the registration. You will also need to report any changes to your contact details during that time.