There’s always a rush and a flurry of activity when you get to create a new brand for a client. Considering a brand that will strike the right tone in the marketplace and with the businesses target market can be an exhilarating (and exhausting) experience. In addition to developing a new brand that resonates with your client and with clients of the brand, it is important to ensure that the new brand is sufficiently different enough from established brands so that your client’s only concern after the new brand launch is providing an excellent client experience.
Creating a New Brand – Remember Two Categories
Your client will have legal problems with the new brand in two instances. One, the trade-mark is not permitted by the law to be used. Two, the trade-mark is confusing with a trade-mark already in use.
1. Prohibited Trade-marks
No surnames. (This prohibition usually applies to surnames by themselves, not surnames combined with other words.) Unless you can prove that the surname trade-mark has gained a reputation apart from its use as a surname, then they are best avoided. The Trade-marks Office will usual search through a telephone book for surnames, so that is a good way to assess whether the new trade-mark is also a surname.
No descriptive trade-marks. “Delivery!” to brand “delivery services” will not succeed nor will trade-marks that are boastful in their description (e.g. Excellent Lawn Care”). No trade-marks that deceive with their description. “Kilncraft” for “products not made by a kiln process.” No trade-marks for a kind of person who makes the product being branded. The “Baker” trade-mark to brand “bread” will be rejected. However, if you can prove that this type of trade-mark has gained a reputation in the marketplace, you may be able to overcome the initial prohibition.
Trade-marks Identical to Product/Service
No trade-marks in any language that are the same as products or services to be branded. “Porte” for doors will not succeed.
Protected Geographic Areas
No trade-marks that are a protected geographical indication when the products do not originate from there (e.g.) Champagne, Chablis, Sambuca, Schnapps.
Protected Names, Symbols
No trade-marks that use any names, logos, arms, crests, symbols, flags, of any level of government, any university, or any public authority.
No trade-marks that are either scandalous, obscene, or immoral. It is impossible to predict when the Registrar will make that determination.
2. Confusing Trade-marks
There are a number of ways that your client adopting a trade-mark that is confusing with an established trade-mark could hurt their business. Aside from the various legal actions your client will be required to defend, your client may also have to change signage, domain names, and marketing material, at great expense including the loss of goodwill.
When considering what is confusing, you have to examine the questions from the perspective of the average consumer in a hurry with imperfect recollection. You have to look at all the surrounding circumstances to determine what might increase or decrease the likelihood of confusion. In each instance you should always consider: (i) the distinctiveness of the trade-marks and how well known they have become; (ii) the length of time the trade-marks have been in use; (iii) the nature of the products, services, or business; (iv) the nature of the trade; and (v) the degree of resemblance between the trade-marks in appearance, sound, or in the ideas suggested by them.
Trade-mark Clearance Searches
Trade-mark lawyers are able to obtain and analyze trade-mark clearance searches for new brands. The searches can discover whether there are other trade-marks, trade names, domain names, etc., already in the marketplace who would have superior rights to your client should it later adopt a confusing trade-mark.
Ryan regularly meets with marketing companies to discuss legal topics relevant to marketing companies and their clients and to present his information package. If you would like to take advantage of this free opportunity, you can contact Ryan at any time.