Making IP up? Five myths surrounding trade marks that could cost you your cosmetic brand…

Rosalyn Newsome, partner and trade mark attorney at Barker Brettell, discusses five common myths that, as head of the firm’s cosmetics sector, she has encountered while working with clients in the skincare, beauty and personal care industry.

A domain name registration automatically gives you the trade mark rights to that name

It doesn’t, a trade mark, a domain name registration and a company name registration are three separate legal rights and owner of one does not translate to an automatic right to own another. The reason behind this is that the same trade mark can be registered for different goods or services and legally owned by different businesses.

My advice is to do your homework: securing a trade mark registration and domain name in tandem will help protect your brand and help avoid potential infringement issues at a later date.

We’ve made it: our brand name is being used as a generic term

Why should this be a problem for a business? Surely all publicity is good publicity? Unfortunately brand recognition can be a double edged sword. Just ask Chapstick®, Kleenex® and Q-tips®. Or rather Chapstick® lip balm, Kleenex® tissues, and Q-tips® cotton buds. These are just a few examples of the many brands which have, over the years, become so popular and synonymous with the product, that the brand name is used as a generic product descriptor.

By successfully trade marking a brand a business is allowed to protect the integrity of the brand, its trade mark rights, and ultimately protect consumers from purchasing products incorrectly identified as the protected brand.

The cosmetics industry is constantly challenged by an influx of fake goods which you can read more about in one of our previous articles here. Unfortunately not all counterfeit goods are harmless imitations. Defending your brand and stopping its use as a generic term protects your customers.

You can only trade mark made up or personal names for your cosmetic brand

Surely in order to successfully trade mark a brand you need to create a unique word? This is not true.

In decades such as the 1960s and 1980s the focus was on technological advancement, so brands such as Elnett® and Pantene® were developed and launched on to the market. Names which were often an amalgamation of the ingredients used in the products, such as pantenol which lent part of its name to Pantene®. Equally, the power of using personal names in the industry has been strong since Hollywood’s golden age when Max Factor® dominated the sector. This opened the doors for brands such Estee Lauder®, Charlotte Tilbury® and Liz Earle®.

Today, there is a distinct movement towards pared-down brands and packaging, which we have spoken about in more detail here where many of cosmetics in this stable have chosen common English words as their brands. How is this possible?

Common English words can be registered as a trade mark providing they are inherently distinctive for the goods and services covered or have been used on such a scale that they have become distinctive through use. So, for example, the word Pears for pears cannot be registered and protected, but the word Pears® for soap can be.

Whether a word can be registered as a trade mark depends on the goods and services for which registration is sought.

Once you’ve registered a trade mark you don’t have to use it

The simple message here is: use it or lose it. And just saying that the trade mark is active will not cut it in court. As we demonstrated in a previous case law article that you can read here: if the trade mark registration is challenged, you will need evidence to prove it is active. This usually is through marketing material. However, you don’t need to overly panic, the law allows a five-year period from the registration of a UK mark before it can be threatened by a non-use action. This is particularly helpful for cosmetic brands which may have to jump through regulatory hoops before commercialisation can occur.

Despite this breathing period, my advice is that from the moment you register your trade mark you should start archiving evidence as to what use is occurring – this can be through internal record keeping, logging marketing collateral, advertising, or press and publicity clippings. The purpose is to build up the legacy of your brand. Hopefully you will never have to call upon this archive, but if sometime in the future your brand is infringed or another party wishes to use your trade mark, you will be in a better position to defend it.

You’re a startup. Cash flow is tight. Trade mark registration can wait

Let’s just back up here. Are you saying that you’re going to launch your cosmetics business without protecting it? The cosmetics sector was an early adopter of trade marks and other Intellectual Property (IP) to protect its innovation. The industry has reached a point in its development where many businesses have built up sizeable IP portfolios. Launching your business in such a mature market without IP protection would be folly.

That said, achieving an entry-level type of protection can be surprisingly cost efficient, and some of it can be done without a trade mark attorney getting involved. You can read about the options open to you in more detail here.

If you would like to discuss how to protect your new product, business brand, or just how you can make your IP budget go further, please do not hesitate to contact the author, or your usual Barker Brettell trade mark attorney.