Trade Marks, Part II: What to consider before brand launch.
Before committing to any form of branding, whether it be a logo, a word mark or a strapline, there are several factors that should be worked through to ensure that it is capable of the desired growth and protection. These include:
Making sure that your branding possesses the required characteristics for trade mark registration. For instance, is it distinctive and does it avoid describing the characteristics of the goods and/or services to which it relates?
Identifying your key markets.
Identifying your target markets when you consider your 5-year growth plan. This is relevant when it comes to ensuring that trade mark registrations are not subsequently challenged for non-use.
Identifying any third party trade marks (registered or unregistered) in either your key or target markets which are identical or similar to your branding. If any such marks are identified, you may want to consider amending your brand strategy and/or your branding altogether.
Ensuring that your branding works in all chosen jurisdictions. Sometimes, marks just don’t translate well – a prime example being when Clairol launched its curling iron called the "Mist Stick", in Germany, even though "mist" is German slang for manure.
Identifying the best route(s) to obtain trade mark protection given your budget, presence, growth plans and any problematic third party trade marks.
Identifying how to obtain the best level of protection for your mark given your budget and priorities (i.e., do you want to register your marks in colour, black and white or both, and do you want to consolidate marks where you can?).
Establishing whether there are any local nuances when it comes to trade mark rules and regulations at the national level which may impact your strategy.
Applying for trade mark registrations before brand launch to help secure your markets.
If your company is part of a wider group, considering which entities will use the mark, which entity should own it, and how such arrangements should be documented.
Top Tip
Get an IP professional on board at brand conception to work with your branding team. An IP professional can advise on the registrability of your mark and any associated risks and help you to create and implement the most appropriate trade mark strategy for your business. By getting an IP professional onboard early, they can also help to reduce the risk of trade mark disputes, being excluded from certain markets and, in extreme cases, having to rebrand your products/services post launch, at great expense!
Disclaimer: Re-think Legal is a boutique legal consultancy providing businesses with legal support. The information contained in this blog is simplified and must not be taken as a definitive statement of either the law or practice of any given jurisdiction and does not constitute legal advice.
