Travel businesses and trade marks

What is a trade mark?

A trade mark is a sign (such as a word, phrase or logo) that helps consumers identify the origin of a product or service. A registered trade mark allows its owner to make use of that trade mark to the exclusion of third parties.

An airline logo, the name of a travel agency or even the distinctive shape of an object – all of these can function as trade marks.  

The attractive force of a travel business for consumers often lies with the company or individual’s reputation and the trade marks they use to identify their services or products. 
The travel industry is unfortunately rife with scammers who want to take advantage of travel businesses’ trade marks and swindle consumers out of substantial sums of money - it is therefore important for businesses to consider an effective trade mark filing, management and enforcement strategy for the protection of their brand and consumers. 

Importance of a registered trade mark

A registered trade mark:

• allows you to gain exclusive rights for a mark (e.g. a logo or a brand name) in relation to certain products and services;
  
• provides proof of legal ownership of a brand;
  
• puts third parties on notice of the rights you have in that trade mark;
  
• provides a strong basis for enforcement of your trade mark rights against others;
  
• is fairly inexpensive (depending on the jurisdictions you register in) compared to the cost of being engaged in litigation and rebranding procedures;
  
• gives investors and shareholders confidence; 
  
• holds value – they can be useful when it comes to licensing arrangements and the sale of a business and an air tight trade mark portfolio is something purchases and investors look for when carrying out due diligence exercises.  

Relevant travel trade mark classification

You apply for trade marks according to the relevant class and corresponding goods and services under that class. 

For travel businesses class 39 (generally covering travel and transport services) and class 43 (temporary accommodation, and the provision of food and drink) tend to be the most relevant. Other classes can though be important, for example class 41 (generally covering entertainment and education services or even class 12 (generally, vehicles).

Typically, filing in more classes increases the cost, but the core classes for your business should be included. 

In some jurisdictions filing for a mark for goods and services you do not intend on using it for can raise issues concerning bad faith and further, in most jurisdictions, once a certain number of years has passed a trade mark registration can be revoked for the goods and services the relevant mark is not used for.  

Which territories should I file my trade mark in? 

Registered trade marks are territorial rights and so the jurisdictions for registered protection need to be considered. 

Due to the cross-border nature of many travel businesses (e.g. a travel agency based in Europe but providing excursions and travel planning services in South America, or a Middle Eastern airline providing flights and other services in various jurisdictions around the world) you may find that you will need to file in more than one jurisdiction for the effective protection of your brand. 

Generally, you should file in the countries of core interest to your business, e.g. where you are based and where you provide and advertise your products and services.

Should I do anything before filing a trade mark? 

Before a trade mark is applied for (and ideally before it is even used), it is important that clearance searches are conducted to assess if there are any potential third parties with prior rights for that mark or a similar mark for identical/similar goods or services, or if there are any major players using a similar mark even if they do not operate in the same space. 

For example, if a cruise ship operator were to apply for (for want of a fictitious example) the mark ‘Cruisetopia’ in Portugal, but there was an earlier registered trade mark for “Cruzetopia” for a similar cruise ship service in Portugal/the EU this could present an issue.

Conclusion

Travel businesses ought to have a strategy in place to protect their trade marks. 

The power of a registered trade mark should not be underestimated as it provides monopoly rights for use of that mark to the exclusion of others. 

Particularly with more travel businesses now moving online and travel in full swing post the Covid-19 pandemic, the importance of protecting consumers from counterfeiters, copycats and those who might cause brand confusion trade mark protection cannot be ignored. 

The time for travel businesses to act is now.

Where possible, IP specialists should be involved at the early stages of trade mark protection strategy planning.