Top Tips for Trademarking a Drinks Brand

After 17 years as a lawyer, Rishi Malliwal of SGM Law now counts the likes of Monica Berg, Alex Kratena and award-winning distilleries as his clients. So for the benefit of any of you drinks professionals out there looking to start your own brand, we asked for his advice.

‘The first thing to do is get a trademark specialist to do some searches and check that nobody else is already using that brand name. People often have the intention of doing some basic Googling themselves, but because they’re running so fast they don’t get those foundation steps right. If you then find someone using the same brand, that just sets your business back or you end up spending a load of legal fees.

'I had an example of this recently. The company started a new gin brand, and brought out more and more products with a theme to their branding which goes up in sequential numbers. When they got to a certain number there was someone with the same brand, using the same number. There might not have been a relation to the original brand name, so you need an expert who can think more laterally.’

‘The word ‘Nike’ is protected, so is the swoosh, and so is the way that the name and swoosh appear together. There are a lot of different combinations and components when it comes to protecting a brand so you need to make sure each part is protectable.

We do a lot of work with Monica Berg and Alex Kratena. When they opened their bar [Tayer + Elementary] we made sure that those two names were protected, and we’ve also advised them on partnerships and collaborations. They’ve even protected their names, as just attaching their name to something can convince someone to buy it - so for other brands to use their names, they need their permission. Brands sometimes stray away from the main product too -  for example you could end up selling clothes with your brand that started out in the drinks space -  so it gets attached to different products: you need to be mindful of that.’

‘When there are two or three partners in a business, they need to have agreements between themselves to set out what each of them is bringing to the party (money, experience, etc). People chat about it over a drink and they maybe think it’s all clear and understood, when it isn’t. Going through that process means everyone knows what’s expected of them individually and it’s good to have that understanding up front. People don’t want to have those conversations, but the reality is that if you don’t you’re going to spend a lot of time fighting.’

‘When you think of Take That, Gary Barlow got most of the dosh because he wrote the songs and the agreement they had was that he got a large majority of the money. If you do that in your business, and one person tries to take ownership of the intellectual property, it causes problems. It’s better for it to be equal so that everything that everyone is creating is owned by the company -  no one individual person has the lion’s share, everyone is doing what they are an expert in.

With any good idea, it goes through some changes: one person may have a great idea for a brand, but someone else might shape it into the final product. It’s rare that an idea stays static, and the evolution process sees contribution from all sides of the business. Another strong reason for equality is if you are looking to get investment: investors are investing in the brand, and they won’t like it if you’re company doesn’t actually own the brand.

• What even is a trademark? It’s effectively a badge of origin that distinguishes a brand from one company to any other, safeguarding the owner from any intellectual property being replicated.
• How much do trademarks cost? Online companies register trademarks for around £99. You won’t get any advice, they just process it for you. It’s the cheapest way to do it but be careful, as if you register your brand for the wrong thing, you don’t get the protection you think you’re going to get. For a company like SGM Law, it’s about £1,000 for legal fees from start to finish.
• How long does the process take? It takes about three to six months to get a trademark registered. The exception is if you’re trying to get it registered and someone objects to it - the cost then increases and it may then involve a negotiation process.
• What happens if your brand goes outside the UK? Unfortunately, the trademark system is country specific. That means you only have protection in the UK. So what you’d need to do is apply for the protection using local systems. There’s an exception in the EU, in that there’s only one application which means you are covered in all associated countries. The one slight problem with the EU system is that, although it’s cost effective, if you have an objection in just one country, the whole system stops you getting your trademark.

This article was updated from one that was originally published in imbibe live magazine on March 13, 2020