AJPark

Choose a strong brand name

Unless your brand name is distinctive, it won't qualify for registration as a trade mark and it will be harder to stop your competitors from adopting something similar.
 
Great examples of distinctive brand names are KODAK and ROLEX.  The uniqueness of these words means that they attract a strong degree of protection. Alternatively, words that have no association with the product to which they relate can also make strong brand names. Think APPLE for computers or BILLABONG for surf and street wear.
 
Of course, the marketing department may have different ideas. Conveying a message to a customer is much easier (they say) if the brand name describes the product or its qualities, attributes, functions or characteristics.  This means that words like ‘pure’ are popular in brand names. But a descriptive brand name can be more difficult to protect as a trade mark, and it's more likely that your competitors will want to adopt something similar for their brand.
 
That is not to say that descriptive trade marks will never qualify for trade mark registration, but it does make the other steps to developing a strong brand all the more important.

Ensure availablility

Adopting someone else's brand is never going to be a good marketing move, and it's never much fun receiving letters from someone else's lawyer. Re-branding exercises can be expensive, and will mean that valuable time and resources aren't being spent where they should be in the lead up to the brand launch.
 
A search should involve both a search of the New Zealand trade marks register and a marketplace search. A search of the trade marks register will let you know if anyone else has applied for, or registered, a trade mark that is the same or similar to yours.  A marketplace search involves a general internet search and searches of relevant trade databases and directories to see whether anyone else is using your brand.

Register as a trade mark

A trade mark registration makes enforcing your rights much easier. It puts a fence around your brand name, or logo, and acts as a deterrent to others thinking of adopting a similar mark. It also gives you a strong basis to take action if a competitor adopts a brand that is the same as, or similar, to yours for the same, or a similar, product.
 
A trade mark registration in New Zealand will only give you trade mark rights in this country. If you are planning to launch your brand outside New Zealand then you should consider trade mark protection in those countries as well.

Correct and consistent usage

Develop guidelines for the use of your trade mark for all staff, especially your marketing department. Give others notice of your trade mark rights by using the ® or TM symbols. And use your brand name with a generic description for your product, not as a generic description for your product.

Police and enforce your rights

You are the trade mark owner so you are responsible for enforcing your rights. Be proactive. If a competitor is using a brand that is the same or similar to yours, talk to your lawyer.

Creating a strong brand from the outset means it will become one of your most valuable business assets. 

An edited version of this article was published in Apparel, March 2009.