Tuesday, 8th May, 2018

Developing strong brands – Balance the catchy name with the legally enforceable trade mark

Protecting intellectual property rights through registration is an important element of any business strategy. New Zealanders have traditionally favoured a non-regulated approach—#8 wire, Kiwi ingenuity and innovative thinking drive our cultural identity. But the value of a robust intellectual property portfolio hasn’t always been on the radar for New Zealand businesses. People are generally aware that if you invent something, it’s a good idea to get a patent. Fewer people know the potential asset that a strong brand (or in legal terms, registered trade marks) can be, or the costs involved if your brand isn’t legally strong.

In intellectual property practice, we frequently see businesses spend tens of thousands of dollars on the development of a new name or brand without considering whether the brand is free to use. They assume the designer, or marketing professional they’ve engaged is creating the brand from scratch. Or that any new brand has been cleared for use. Don’t! Beware!

Graphic designers, marketing professionals and other brand creators do wonderful jobs and are expert at creating new brands. But remember, there is more to this picture. What makes an easily marketable brand doesn’t always make a legally protectable trade mark. Just because an idea has been independently created doesn’t mean there isn’t someone else with prior legal rights.

You see it reasonably often where the new, small New Zealand company has come up with a wonderful new name. They paid someone to create the name, open their doors, and successfully navigate the turbulent early days of a new business. Then they get a letter from a lawyer;

X company owns New Zealand trade mark registration 123456. Your company name infringes that trade mark registration. Re-brand, or else!

It seems unfair.

But keep in mind, X has a legal right. And if they don’t actively enforce that right, they can lose it.

Every company spends time and money creating brands. If you sell your business, your name and reputation are a large portion of what the purchaser of the company is paying for.

So take the time early on to make sure your brand(s) is a strong one. It’s a lot cheaper to make sure your exciting new name isn’t already owned by someone else than it is to re-brand once you’ve ordered stock, invested in marketing, and then received a letter from a lawyer pointing out that someone else already owns the brand you have chosen.

Also be aware that registered trade mark rights extend beyond the exact name or logo that appears on the trade mark register. So getting legal advice from an intellectual property professional is a good idea.

Ideally, for every new brand, you would consult your intellectual property advisor on whether that brand is legally protectable, undertake searching to check if someone else has prior rights, and then register your brand as a trade mark. Prioritising your intellectual property early on in the creation of a new brand can save you time and money in the future.

Why not find 5-10 names you like, approach an intellectual property professional, and see if they will spend a few hours with you brainstorming and doing preliminary checks to see which of your preferred names are free to use. You will end up have a stronger brand. This is usually done on a preference basis. Assuming your first choice is taken, we go on to the second one, or the third one until we find one that is free for your exclusive use and registration.

Tips:

  1. The strongest brands are inventive—they don’t describe in any way the goods or services they are used on. A strong brand is something that consumers will associate with you, and only you. Think of brands like APPLE, YAHOO, ZESPRI or ENZA.
  2. Distinctive brands are cheaper to market—you don’t have to spend as much time educating the public on your brand because your inventive and distinctive name will stick in people’s minds.
  3. Trust your intellectual property advisor. If they say your proposed brand name is descriptive (legally speaking), they’re not trying to kill your dreams but rather save you money and heartache down the track.

How can I ensure my brand is both marketable and legal?