The UK Supreme Court recently decided in SkyKick v. Sky that the British media company Sky had partially obtained its trademark registrations in bad faith, criticising many elements of its overall enforcement strategy. 

As a mainstream or luxury brand owner, you must protect your brand but balance your legal arguments with your exposure to the court of public opinion. Here are some recommendations to strike that balance:

Protect your luxury brand 

First, seek to register all key brands and sub-brands (including words, logos or other graphic devices) in all of your key trading countries. That will let you retain control of your branding and luxury trademarks, enabling you to licence the use of your registered rights where appropriate and ensure you are best placed to stop others from using similar branding.

Carry out clearance searches 

High-end business owners face a common pitfall: putting time, effort and money into creating a brand, only to discover that another business is already using something identical or similar. Clearance searches will save you time and money by ensuring you can use a brand before you start investing in it.

Register marks in the form that you use them

Although this sounds obvious, branding evolves over time. To enforce your brand as you use it, and avoid cancellation actions for non-use, you need to ensure your trademark registrations reflect your actual branding. The Supreme Court’s decision in SkyKick highlights the importance of applying for a trademark for goods and services for which you genuinely intend to use your brand. A lack of intention to use for certain goods or services can make your registered rights vulnerable.  

Avoid overly broad specifications 

Word your specifications of goods and services clearly and precisely. Use of overly broad terminology could have a detrimental effect on your scope of registered protection. Going forward, it’s possible this could result in delays to the issuance of registration.

Collect evidence of use

Once registered trademarks are more than five years old, enforcing your rights requires evidence of the use of the registered mark. Keeping a note of where you have used your registered trademarks (online, on social media, in marketing emails, in leaflets, in advertising and so forth) will be helpful. This can also help to evidence that you have goodwill or reputation in elements of your branding. This is particularly useful if you are starting up or transitioning to a new brand.

If you spot an infringement:  

Think public relations (PR) 

High-profile disputes are often reported by the press, which can lead to the court of public opinion passing judgment before the matter gets to the legal courts. That doesn’t mean you shouldn’t enforce your trademarks, but you should plan to deal with any fallout. If you think the dispute will be covered by the press, or reported on social media, you should engage PR specialists early on, so that you have a strategy in place to minimise damages to your luxury business.

Establish your rationale 

Are you seeking to monopolise a name at any cost, or just for the goods and services you use it for? Is it likely that you would succeed if the dispute went all the way to court? Being clear and realistic with your objectives is key to obtaining the best resolution for your luxury business, and also for explaining your actions to internal and external stakeholders.

Know your opponent 

Are you writing to a business or an individual? How large is the business? Have they made any investment, for example, in a website or product that they have launched? Do they have a following on social media? An internet search is a simple but key step.

Consider content and tone

Use that research to inform the content and tone of any cease-and-desist letter you send. These letters are ‘open’ correspondence, meaning they can be shared in court and could ultimately be published, including on social media. This creates an opportunity for the public to scrutinise and critique how you deal with other businesses. If you are writing to a company that is much smaller or less luxurious than yours, take care to get the right tone and avoid being unnecessarily heavy-handed or aggressive.

Think big picture

Try to be rational about what you’re trying to achieve. Take a step back and consider the possible PR consequences, as well as the legal merits of your case, and build strategy from there.

For advice on any aspect of intellectual property, including trademarks, contact Iona Silverman (0345 030 5781), Dan Cahill (0345 030 5346) or Kishan Pattni (0345 070 3811).