There are huge opportunities to harness the power of brands in the Hotels, Hospitality & Leisure industry. An effective and tailored IP strategy plays a crucial role in maximising and realising those opportunities in a dynamic market, striving to achieve consumer loyalty & brand recognition.
Checks on trade marks, designs and domain names are an essential step when launching a new brand; undertaking a rebrand or expanding internationally. Reviewing your brand protection and maintaining watching services should also be a priority for any Hotel business, regardless of how long you’ve been trading. With the industry getting back on its feet after the COVID-19 pandemic, it’s a good time to check whether your business has evolved or is getting ready to expand into new territories. Aligning your brand strategy with business growth plans will enable you to make the most of commercial partnerships that help expand the reach and appeal of your brand.
So what’s the most effective strategy?
Trade mark and design rights are territorial. Whether you are launching a new hotel, re-branding or developing a sub-brand, think about where you want to grow your business. Draw up a list of key markets you intend to target immediately, those to be accessed in the next 12-24 months and your long-term expansion plans. If you have an existing property portfolio, this exercise can still be useful to ensure your existing IP protection matches your current operations.
There are several ways to achieve protection, whether via national applications or systems which cover multiple territories via one application. Working with an IP specialist can help you understand the best strategy to implement your protection and ensure you’re able to take advantage of systems to secure your rights but spread the cost of doing so.
A registration gives you the ability to prevent others using your brand (or something close to it) in relation to the goods and services covered by the registration, in the territories where they are registered. Design registrations can also be an important tool in preventing others using your design (or something very close to it).
Consider the following: What is your core business offering? What do you intend to offer consumers in the next 5 years? Will you integrate Metaverse experiences, Wellness offerings, dine-at-home events, your own line of spa products, home furnishings or kitchen essentials? Will you offer data services to other sectors of the hospitality industry or do you intend to develop a new tech tool to improve the customer journey?
These are all important questions that should be addressed before filing for TM protection. You can’t add extra goods or services into an application after it’s been filed, so be aware that anything you’ve missed would need to go into a new application, which will increase the cost. Auditing your business even if you’ve been trading for a long time can be a useful exercise to ensure your IP protection is futureproofed and fits the business goals. It’s also important to ensure the right assets are protected: the priority is your brand name, but logos and graphics also play an important role and can be protected independently. An IP lawyer or trade mark attorney can help you decide what needs to be covered.
Prior to any new TM applications, clearance checks are important to ensure the name or logo you want to use is (1) available in all relevant territories and (2) can be used in relation to the relevant goods and services. TM searches enable you to assess the risk associated with use of those brand assets, and determine the likelihood of being challenged by a third party. Clearance checks need to be done in your territories of interest and for the goods/services for which you need protection. The same exercise can be done for any new products you have designed, for example new bottles or jars for spa products.
Why do you need to identify and understand the risk? In short, someone with an earlier registration for the same or a similar mark could sue for trade mark infringement if your brand is confusingly similar to theirs. In a worst case scenario, they might be able to get an injunction to remove your products from the market or an order to rebrand your services. This might also involve you having to pay their costs and damages.
Checking the availability of a domain name is also important, but is entirely unrelated to trade mark and design clearance. Just because a domain is available doesn’t always mean there is no risk of trade mark infringement.
Once you’re happy with the search results, it’s time to file the applications. Act quickly as your rights run from the filing date of any application. The time it takes to get your mark or design registered depends on the target countries and whether anyone opposes your application. Having a good relationship with an IP lawyer will help smooth the process out, as they can deal with any issues on your behalf, explain what the communications from the local offices mean and advise you on how to respond.
Sep 22 2023
Sep 22 2023