Imagine, if you will (close your eyes if it helps), a situation in which you’ve come up with the perfect brand name. You’re over the moon about it and you instantly start investing huge resources publicising and developing the brand. Things are going swimmingly until one day you receive a letter from a company you’ve never heard of claiming that you’re infringing their trade mark – shock horror, it turns out they have an earlier registration for an identical brand name and, although they’re not quite in the same business as you (which is why you’ve never heard of them), what they’re doing is pretty similar and they have solid grounds for a claim…
Has the dream turned into a nightmare?
Ok let’s rewind, forget about the letter and let’s go back to things going swimmingly – that’s better. In fact, things are going so swimmingly that you’ve had investors approach you asking for equity in your businesses. Great, this could give you the necessary cash injection to take your brand to the next level…. but wait, the investors have just started their due diligence and their first question was about your ownership of the brand – they’ve asked for details of your registrations and you’ve realised that you never actually got around to protecting the brand with a trade mark. Not to worry you think, I’ll just crack on with this now and I’ll have a TM in no time! You send some instructions to a friendly IP lawyer but the reply isn’t what you were expecting. The lawyer says that your brand name has a high chance of refusal because it isn’t sufficiently “distinctive”. He advises you to think about protecting a specific logo rather than the word (although he explains that the logo offers far narrower protection) and he suggests, if you really need the word, that you should wait until your brand has become so well known that it has “acquired distinctiveness”. This might be years away and, without the investment, maybe even longer?
I think we’re going back into the nightmare.
So what do you do? How can you avoid these all-too-common pitfalls and what should you think about when choosing the perfect brand name?
Well, the simple answer is to get legal advice before you commit to the brand. This advice will include a search of the relevant trade mark registries which should flag any potentially conflicting trade marks. This will allow you to adapt your brand accordingly or proceed with the application and find out if the owner of the earlier mark is willing to oppose or if terms of co-existence can be agreed – all well before you’re too committed to the brand.
Earlier legal advice should also involve an assessment of the brand’s registrability on what are known as “relative grounds”. Basically trade mark examiners will refuse trade mark applications which are descriptive of the goods and services which they are seeking to cover or are otherwise generic or lacking in distinctiveness. This can often mean that a brand name which is brilliant from a marketing perspective is unworkable from a legal perspective. Finding the right balance can therefore be something of an art form.
But fear not, Briffa are here to help and if you would like to talk to one of our dreamy solicitors about registering a new brand name, please call 020 7288 6003 or email [email protected]