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Protect That Brand!
12 August 2003Simon Gray
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Irish Marketing Journal, August 2003.
Before you launch a new brand on the market, make sure someone else doesn't already own the brand name, writes Simon Gray, a trademark attorney and partner with intellectual property experts Tomkins & Co.
The brand name is the foundation upon which a successful brand image, promotional campaign, and market positioning is built. A strong and unique brand name can make or break a product or company. In many cases however, the excitement of developing and launching of a new brand into a new market place often overshadows possibility that someone else may own the brand name a company wants to use.
Regardless of the inventiveness, design and time that is put into the development of a brand name, if it's the same or closely similar to a name already in use or registered as a trademark, a conflict may arise, often requiring changes to the brand name. This can cost time, money and that all-important market awareness and may even necessitate the removal of products from the marketplace to be re-branded.
To prevent this, an integrate part of every brand strategy should be to carry out a search of relevant trademark registers in every jurisdiction the product is to be sold in. A brand clearance search will highlight if there are any existing trademarks that may conflict with your proposed brand name. Although such searches of registers are never fully comprehensive due to the many brand names never registered as trademarks, it is strongly recommended that you carry them out. In conjunction with your knowledge of your market sector these search results will allow you to adopt your new brand name with minimum risk of infringement - or to choose an alternative before furthering your market launch.
Subsequent to adopting your new mark/logo/design, to maintain the market exclusivity of your brand, you need to prevent others from using your mark. There are two ways to gain protection for a brand name: by using the name and by registering the brand name as a trademark.
Use of a brand name in the marketplace can establish goodwill and reputation, so that the name of a specific product or product range is associated with one company. A company acquires such rights over a number of years of use. This will allow the brand owner to take action at common law against a third party who uses the identical or closely similar brand name for the same or a similar product. This remedy against a third party is dependent on substantial use and the establishment of a reputation and goodwill towards a brand name, which usually takes years to arise. Furthermore, proving a case on these grounds can be very difficult and expensive.
Alternatively, protection can be obtained through registration of the name as a trademark. This is a simpler and more cost effective method of protecting a brand name, as it does not require extensive use to build up rights in a name. It also grants statutory monopoly rights, which are easier to enforce against third parties than at common law. A registered trademark enables a brand owner to prevent parties from using the identical or similar trademark for the identical or similar goods.
There is no global trademark registration system and in most cases a trademark must be registered in each individual country. An Irish brand owner can register their name in Ireland solely or in any individual country worldwide. However there are two notable exceptions where a single registration of a Trademark can cover a number of counties. A Community Trademark (CTM) covers all 15 member states of the European Union and is a simple and cost effective way of protecting a brand throughout the EU. The CTM system will be further enhanced as new countries join the EU from 2004 onwards. The International Registration system allows for protection for a trademark to be extended to any of the more than 50 member states that have signed up to the Madrid Protocol, which covers Europe, Eastern Europe, Asia and the Pacific Regions. The USA is scheduled to join the International Registration system at the end of the year and, although this system is not as simple as the CTM, it is a more cost effective way to protect a brand name than on a country-by-country basis.
Failure to obtain sufficient brand clearance and trademark protection can lead to substantial extra costs and damage to one's reputation and brand image. The clearance and protection of a brand name can help to ensure the smooth launch of a brand, and increase the value of the brand itself.
Checklist for Brand Clearance and Protection:
Brand Name - choose an inventive and distinctive brand, one which is not the same or similar to an existing brand.
Marketplace - decide on the market for products sold under the brand, whether it is for Ireland only or other countries.
Brand Clearance - searches of relevant Trademark Registers, plus investigations within the relevant market sector.
Registration of a Trademark - whether to register on a country-by-country basis, or to avail of the Community Trademark or International Register.
Requirements for filing a Trademark:
Brand Name/Logo to be registered with details of the owner of the brand and the goods or services upon which the brand is used or proposed to be used in the future.
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