Legal Tips

Protecting Your Brand

One of the main legal ways of protecting a brand is by trade mark registration. But not everything you might think of using as a brand is registerable as a trade mark.

Registering a trade mark means going through the formal procedures which result in your trade mark being officially recorded as belonging to your business. Registration gives you the exclusive right to use that mark and to sue someone else who uses that same mark or something similar to it on the same products or similar products.

But ultimately, trade mark registration is a public legally protected version of what your branding efforts are all about – recognition and exclusivity. You want a brand which is recognized, and exclusively linked with your product. Legal protection – including through registration, helps you achieve that.

Legal Points

There are legal points to be considered at two different stages in the brand management process. The first stage is in the process of creation of a new brand, the second is the management of existing brands, especially during company transformations. From a legal point of view, there are two main questions to ask when a new brand is being created and defined

• Can you use it safely?
• Can you protect it?

These questions are, or should be, central to any brand development. Yet it is surprising how often they seem to get overlooked, especially in the rush of enthusiasm for some new concept.

“Can you use” can be rephrased as “are we going to step on anyone else’s toes with this new brand, angle, packaging line, strategy?” This question in itself can rise in two rather different ways – the branding task when you are truly attempting to create a unique, distinctive brand to do what brands are supposed to do, i.e. make your product stand out and create a clear position in the market the somewhat different issue when your aim is in fact to latch on to someone else’s success. Naturally, from a legal point of view, the second objective is the more risky.

Brand Vision

When selecting a new brand for you, the key word is vision. What is your vision for the brand? Flagship brand or subsidiary category? Wide product range or specific? Local, national, regional or global? And what is the brand anyway – is it a word? Is it a shape? Is it a colour, a smell, a sound, a picture or a combination of one or more of these things? Will you use it always in one particular version or in many variations?

The more clearly that you communicate your future vision for the brand to your legal advisors, the better job we can do for you in answering that first key question – can you use it?

The marketplace and the Trade Marks Register are full of other people’s attempts to obtain exclusivity in all kinds of brands and aspects of brands. Because of this, one job that has to be done as part of the brand creation and definition process is searching – seeing what else is protected and making sure you’re not too close to it. Because the definition of exclusivity embraces not only identical marks but similar marks and not just the same goods and services but similar ones and because a mark can be registered or at least applied for and yet not be on the market, searching of official records is crucial – and for those of you looking beyond these shores, international searching will be crucial. Incidentally, one useful spin-off of searching the Trade Marks Register will be to give you a handle on what your competitors are doing, or perhaps planning.

Protecting Your Brand Investment

If you’ve done all your checking and you’re as confident as you can be that you’re not going to be sued the first week your product hits the market, the next question has to be –

Can you put yourself in a position to protect that investment that you’re going to put into the brand? Or, what can you do to stop your competitors from ripping off the look, the sound, the smell, the colour, the theme or the language of your branding strategy.

Broadly speaking, you get rights in your brand, that is, the power to use the law to stop someone else from getting too close to it, in two main ways.

One is by using it to such an extent that you can convince a court that the bad guy will cause significant confusion, especially amongst consumers.

Two, by registration under the Trade Marks Act 1953 The common theme though is that if you hang your hat on a brand which is too commonplace, too descriptive, too much like other brands already in the market, a court is much less likely to listen to an argument from your business that someone else should be stopped from using the same kind of words, picture or package.

Much marketing effort goes into identifying branding strategies which will engage your potential customers on an emotional level, gain their sense of identity with the product, gain their loyalty and so on. But all that will be wasted if the brand features that you have hung all that engagement on, do not stand out from the crowd. If your brand is not sufficiently “distinctive” in a trade mark sense, you can’t prevent everyone else going along for the ride.

So my message on legal aspects of creating and defining a new brand are really issues which should concern any marketer. Can you use it? Can you stop other people from using it? It pays to check and get advice before that big launch.

Managing Existing Brands

One particular issue which arises time and time again in brand portfolios where we are dealing with older brands is the issue of ownership. Whose is this brand?

From a marketing point of view, the focus is on connecting the brand with the business in the marketplace. I want to go one step further than that and alert you to the need to make sure that what you are doing, at the sharp end of presenting the product and its proposition to the customer, does not become divorced from the legal background.

Some of the times when this can happen are in nostalgia-based campaigns which hark back to older brands, when somebody comes back with a bright idea from overseas they think they can borrow, when companies form alliances through licenses, distribution agreements or franchises, and when companies break up and companies merge. In the following paragraphs I will discuss an example of the latter.