If your business is currently rebranding, chances are you want to communicate a fresh message to consumers.
While this may be one key to a successful rebranding exercise, the legal side of this transitioning process is equally as important and can avoid embarrassing mistakes. Manufacture of goods may need to be halted, products recalled, advertising campaigns cancelled, so yes, you got it – considerable complications!
Having worked as a branding lawyer for 25 years, I see clients go through the rebranding process all the time and the same mistakes repeat themselves.
Here, we try and help you avoid learning the hard way.
Do you need to do trade mark searches?
Trade mark searching is an important first step in any trade mark relaunch so that you can avoid adopting brands that infringe the trade mark rights of other businesses.
A business may have invested considerable time and resources into creating a fantastic and competitive new business brand, but without having undergone those checks, it may well be all for nothing.
Second, timing is key! There is a tendency for the legal considerations of a rebrand to fall far down the list of priorities. The earlier that searches are done, the quicker your business can clear the path to a successful transition in the market.
Here is my top ten list of legal considerations to give you a solid start for your rebrand.
Check your New Name
The first thing you need to do before anything else is to ensure the new name your business has selected is actually available.
This is the golden rule of trade mark law. If someone else has the same or similar mark, you might not be able to use it. In fact, even if that someone else has not registered their trade mark, they may still have rights to it and prevent you from registering your brand.
One of the biggest misconceptions among my clients is that if their new brand name is spelled slightly differently, or is attached to a different looking logo, they will be off the hook.
However, the real test under the law is: will consumers be confused, and will they wrongfully believe the two brands are somehow connected?
Generally, these are questions for lawyers to consider, and so it is always recommended you enlist the help of a trade mark specialist to conduct the appropriate marketplace searches.
Can you get the Domain Name?
From a legal perspective, any successful rebranding exercise will require you to secure all the foundations of your new brand, including the availability of a domain name that directly contains your business’s new name.
It won’t be of much use to you if you can acquire the trade mark registration for a name but the domain name is being used by someone else. It is important for positioning your business in the market that the goodwill and reputation is secured consistently across multiple platforms.
When clients come to me in the early stages of their business, one of the first things we do is to cross-check domain name databases. The use of a domain name that is different to your trade mark name or your business name is less effective for marketing than having a consistent name.
Consider the Rebranding Potential on Social Media
As we discussed above, a rebrand never just stops with trade mark registration. We always consider other forums in which businesses should ensure that they can secure their name.
Social media names such as Instagram handles and Facebook page names, as well as business names, are always important considerations with my clients. The availability of your new name across all these various platforms can determine the reach of the rebrand and how effectively you can convert viewers to customers.
Just bear in mind, business names and domain name registrations grant you no ownership rights in the name itself but are merely there for administrative or marketing purposes.
Beware of Descriptiveness
It may seem obvious, but when rebranding under a new name, you are looking to have exclusive rights over that name. If you pick something too descriptive, it will generally not be accepted as a trade mark.
For example,one mistake I have seen clients make is believing a slight misspelling of a descriptive word is their own new word, but the law still treats obvious misspellings the same.
Another problem is when businesses try to rebrand with a word in a foreign language that has an obvious meaning to the relevant English-speaking populations.
For example, the word BELLA, meaning ‘beautiful’, would be difficult to register as a name for cosmetics. However, this may not always be the case. In one matter, the Australian High Court decided the words ‘ORO’ and ‘CINQUE STELLE’ could be trade marked for coffee, despite meaning ‘gold’ and ‘five stars’ in Italian!
Think Global!
It is common to see clients pick a new name that is available for use in Australia, only to be knocked-back when they try to expand to the overseas market because someone else is using it in another region.
For example, in 2006 the Australian brand Tsubi rebranded as Ksubi after US shoe company Tsubo sued them for trade mark infringement.
Even if your business has no current intentions to expand overseas, don’t cut yourself off early! Keep in mind the availability of your new names and branding in other countries will impact how easily you can move into those markets later.
With my clients, I always advise they keep watch of their long-term goals, no matter how far away, and that they do the groundwork now to save themselves the headache later.
Don’t get lost in Translation
When deciding a new name, it may be your top priority to come up with something snazzy and sharp. However, it is extremely important that you don’t pick something that may have a less than savory meaning!
You may have seen the rebranding of Cheer Cheese due to racist connotations of its original name.
n addition to public perceptions, there are policy and laws that vary across countries. For instance, New Zealand actually prevents registration of marks likely to offend the Māori population. In comparison, the US trade marks office is banned from preventing registration of immoral or scandalous trade marks due to the right to free speech being protected under their constitution.
I always advise my clients to consider whether a new name or logo is offensive in other cultures, and further, whether it may meet policy resistance in other countries.
Make sure your Logo is Copy-Right and not Copy-Wrong
As a drawing, logos have their own set of rules around copyright law.
The main thing I advise my clients is on the necessity of ensuring they own the logo created, and not the person who has designed the logo. If a business has a designer create a logo for them, and they go ahead and trade mark that logo without first making sure the designer doesn’t retain ownership, the business may be opening themselves up to copyright infringement issues.
Another thing to be wary of is whether the logo the graphic designer creates for your business is original. One red flag is if they are unable to show the general evolution or iteration of how the logo was designed or formed. You must ensure the logo is completely original, and not copied from somewhere else, otherwise you may find yourself in a legal knot.
Get Creative with your Branding
Something many of my clients are surprised to learn is that colours, shapes and other aspects of packaging can actually registered as trade marks. In fact, these methods of communicating your brand can be registered from the very outset as part of your new positioning and messaging.
Did you know Tiffany’s famous blue box is registered, as is the red wax tip on a banana? Cadbury also currently holds a registered trade mark for their iconic purple colour Pantone 26558C in Australia, in respect of a block of chocolate and tablet of chocolate as well as various other products.
Remember to Tie up Loose Ends
Keep in mind you will have residual goodwill and reputation in your old names and logos as and even after your rebrand.
The last thing you want is that old branding being taken by other businesses hoping to profit off your name and reputation. At the same time, the most important rule of trade marks is—if you don’t use it you’ll loose it.
We advise our clients on various strategies and methods they can use to protect their old branding and ensure the process of transition does not leave their hard-earned goodwill vulnerable to the market.
Don’t throw the Goodwill Baby out with the Bathwater!
Your business may have relationships and agreements with third parties which could be affected by a potential loss of reputation or goodwill in rebranding.
Therefore, it is important that before rebranding procedures occur, you have communicated and informed all relevant parties. This includes employees, as well as some third parties that would require additional communication on your rebrand strategy, such as distributors or licensees.
A failure to do so may damage the relationships your business has invested in, and may even constitute a breach of contract.
Conclusion
"The great branding pioneer Walter Landor said, “Products are made in the factory, but brands are created in the mind.”
This might be true, but in the current litigious climate, brands must also be secured by a trade mark specialist"
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