Brands Bulletin - November 2009

Welcome to this month's Ashfords’ Brands Bulletin.

This month we are addressing a couple of legal risks to consider when launching a new brand, or carrying out a rebranding exercise.

Branding and Rebranding – Legal risks to consider

Whether you are launching a new product or service under a new brand name or image, or you are rebranding an existing product or service, there are various legal issues that you ought to think about.  Two key issues are:

1. Carrying out clearance/freedom-to-use searches.

When you adopt a new brand name, logo, get-up or memorable advertising slogan, there is always the risk that someone else may own earlier, existing legal rights (for example, a registered trade mark) which may prevent you from using it.

Therefore, before selecting a new brand name, logo, get-up or slogan, we strongly recommend you carry out clearance searches (otherwise known as 'freedom to use' searches) to reduce the risk of you choosing something that someone else has the right to prevent you using.

Ideally, clearance searches should be carried out as early as possible in the branding/rebranding process and preferably before you select one of several new possible brand names, logos, get-ups or advertising slogans for the product/service in question.  The longer you leave it before you carry out clearance searches, the greater the risk that you will waste time and money developing a new brand name, logo, get-up or slogan before you realise that another business can prevent you using it.

If you don't carry out clearance searches and you start using a new brand name, logo, get-up or slogan, which you later learn someone else can prevent you using, the cost of rebranding and changing all of your promotional materials could be very substantial.  Also, it may result in a major loss of customer goodwill and provide your competitors with an advantage.  This is on top of any damages that you might end up having to pay to the person that owns the earlier legal right.

In summary, we recommend that you involve lawyers (preferably Ashfords!) as early as possible in the branding/rebranding process, so that they can carry out the necessary clearance searches for you.

2. Registration

Once you think you have decided on a new brand name, logo, get-up or advertising slogan that you want to use, we recommend that (where possible) you register it as soon as possible as a trade mark.

You should look to file an application to register a trade mark before you adopt your new brand name, logo, get-up or advertising slogan and certainly before you start using it in the public domain.  It would be a disaster if you were to find out that, due to your failure to apply to register a trade mark, someone else had stepped in and "hijacked" your brand.  Whilst it may still later be possible to recover your brand, the cost of doing this will not be insignificant and, until you have done so, there will be uncertainty for you.  In addition, you ought to think about registering key domain names for your new brand name or advertising slogan.  Again, it would be a disaster if, just before launch, you realised that someone else owned a key domain name address that you wanted to use.

Ashfords are able to assist clients with registering their new brand names, logos, get-ups and advertising slogans as trade marks and domain names.  Details of the process and our pricing structure can be provided on request.

Should you wish to receive further editions of the Ashfords' Brands Bulletin, please email  g.williams@ashfords.co.uk    

Ashfords LLP is regulated by the Solicitors Regulation Authority. The information in this note is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.