Four simple steps to avoid costly branding mistakes

Most successful brands include a good trade mark. A trade mark is the sign that you use to tell the world that your goods and services are yours. It could be a name – such as ‘Nike’ or ‘Apple’ – or a logo – such as Nike’s Swoosh or Apple’s apple.

Imagine launching a new product with a national advertising campaign and having a warehouse full of branded merchandise ready to go, only to be met with a lawyer’s letter suggesting that you must withdraw the campaign and destroy the merchandise because you can’t use the trade mark. Or, imagine if the campaign is so successful that competitors suddenly adopt similar trademarks.

Fortunately, there are some simple steps to minimise these risks.

Step 1: Choose an original trade mark

If your proposed trade mark is similar to a mark used by an existing trader offering similar goods or services, or is similar to any famous mark, there is a risk of infringing the existing trader’s rights. It might be best to choose a different mark.

Step 2: Choose a non-descriptive trade mark

Generally speaking, you can’t stop others using words or symbols that they might reasonably want to use in good faith. What can and cannot be used will always depend on context. For example, the word ‘blue’ is not a good trade mark in connection with jeans. It would always be reasonable for other traders to market their products as ‘blue jeans’. On the other hand, our patent attorneys could probably register ‘blue’ as a trade mark if they wanted to, because there is no apparent reason why anyone would want to use the word ‘blue’ in connection with patent attorney services.

Step 3: GoogleTM it

A few quick checks in your favourite search engine at an early stage could save you a lot of money. If you find that others in your industry are already using very similar marks, you don’t need professional advice to know that your proposed mark may well cause you problems.  A few quick searches may also draw your attention to non-legal issues – you wouldn’t be the first person to pick a trade mark with unintended embarrassing connotations!

Step 4: Take professional advice

Steps one to three will minimise your legal costs by avoiding some obvious problems. Your trade mark attorneys will likely recommend they do a formal search to check whether your proposed mark is available to use and register and, if it is available, that you register the mark. Registration gives you far better and cheaper options if competitors subsequently adopt similar marks.

The costs of these actions would likely pale into insignificance compared to other aspects of your investment in the brand and could avoid a potentially crippling legal dispute.

Belinda Wadeson, Principal Patent and Trade Marks Attorney, Wadeson

 

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