HM Insights

What's in a name? The importance of trade marks in the housing sector

The use of your name is important. It is the first thing you do when you introduce yourself; it's how you identify who you are and what you stand for; it's your reputation.

Likewise for any business, organisation or public body, the names, slogans, symbols and logos you use mark you out from your competitors and distinguish the goods or services you provide from others in the relevant market.

"A rose by any other word would smell as sweet"

A Trade mark can be a sign, symbol, logo or words. It is sometimes referred to as a word mark, a figurative mark, a figurative mark with letters, a 3D mark (the actual product/packaging), colours per se and even sounds.

Not to get too Shakespearean or romantic about it, but taking steps to protect your name, identifying marks and associated branding is of increasing importance in today's image conscious society. Protecting how the market identifies you with your services can also encapsulate how the market intrinsically associates your organisation with values such as trust, reliability and quality.

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This goodwill and reputation increases your brand value, not only in terms of financial value but is what customers, residents, tenants, and suppliers cherish … after all, home is where the heart is.

Why are trademarks important in the housing sector?

Protecting your rights in your brand is a valuable commercial asset and goes to the heart of your business activities. There is a strong emotional connection between the customer and the product and services provided by the housing sector. You are providing someone with a home, a lifestyle and a community. Clever branding and having the appropriate protection in place, can tap into the key market and give you a competitive edge. 

Registration of a company name or domain names does not, in and of itself, prevent anyone else from using the same or similar names or marks associated with that name.

In the absence of registered rights in the trade mark, your ability to prevent someone else from using a similar or identical names, logos or marks will be based on common law rights to prevent passing off, which will very much depend on your ability to establish reputation and goodwill in the trade mark in connection with the goods and services you provide, and also determines the extent to which you will be able to enforce those rights as a common law. Passing off actions are complex and difficult to pursue due to the high evidential burden on the pursuer to establish goodwill, misrepresentation and damages arising as a result of the misrepresentation.

Additionally, if you operate with a strong local reputation, another organisation may be able to establish themselves in a different area of the country using your brand. As trademarks are territorial in nature, if you cannot establish your reputation in the geographical market you may be powerless to stop the new business using your brand name.

Possibly the most important reason for registration of a trade mark is the powerful remedies against unauthorised use or infringement. The holder of a trade mark registration may obtain very powerful remedies such as interdict, delivery up of infringing articles and damages against unauthorised use of the trade mark.

Nine main benefits of trademark registration

  1. Exclusive rights -: Trademark registration is the granting of an exclusive, registered right to a particular form of words, symbols and designs, colours, or combinations of these, that distinguish your goods and/or services from those of all others. It provides a right of protection in that trade mark throughout a particular territory regardless of reputation, making it a faster, more efficient, cost-effective way to prevent a competitor from using that trademark (rather than relying on common law rights or an action of passing off.)
  2. Preventive – Trade mark registries permit relatively quick and straightforward searching capabilities so others can identify trade mark registrations and act as a deterrent to others using marks that are similar or identical to yours in relation to goods and services like yours.
  3. Avoiding unwanted changes – without a trade mark registration there is a risk that someone challenges your rights at common law, which outlined above can be difficult to establish. Having invested good time and money into your brand and associated goodwill and reputation, it can be a difficult and extremely costly task to rebuild a renamed brand because someone else has a registered the identical or confusingly similar trade mark.
  4. Value - Trade mark registration is a tangible record of an intangible asset, which can be valued separately from the business and attractive to investors. Goodwill is more difficult to separate and quantify from the business itself. The only way in which to acquire a common law trade mark is to acquire the business as a going concern, where by contrast trade mark registration can be transferred, licenced or mortgaged like any other business asset.
  5. Licensing - A registered trade mark can be licensed and if recorded on the trade mark register, gives the licensee rights to raise legal proceedings in the event of infringement.
  6. Security - A registered trade mark can be used as security to secure loan facilities much the same way as immovable property can be bonded.
  7. Litigation - A trade mark registration is prima facie evidence of validity of the registration and the rights conveyed by registration. In legal proceedings relating to a registered trade mark the fact that a person is registered as the proprietor of the trade mark is evidence of the validity of the original registration of the trade mark, unless the contrary is proved.
  8. ® or R symbol – Only once the trade marks is registered can the symbol ® or “R” or word “Registered” be used in connection with the products and services specified, otherwise it is an offence weighty sanctions.
  9. Territorial nature and growth - A registered mark can be used as a basis to obtain registration in some foreign territories, facilitating protection of the brand worldwide as the business develops and grows.

How can we help?

If you would like to discuss this, or any other related matter, please get in touch with a member of our team.