Creating a brand or a company name is a complex process that requires creativity and legal awareness. Severine Mas, founder of the London-based Intellectual Property (IP) law firm MAS LEGAL, provides some insight into the successful creation of a brand name.
A brand name is one of the most valuable assets of a business. According to the World Economic Forum, a company’s brand image represents 40% of the company’s value. Creating a brand name involves hard work, investment, time and energy. A company’s future often depends on choosing the right name.
Step 1. Adding a distinctive feature to your brand
The legal context in which brands are created has changed considerably due to the Internet. Registrability of trademarks requires an understanding of which signs are eligible for trademark protection.
The trend for new companies is to create entire business models based on generic domain names and, ultimately, generic trademark names. However, generic trademarks cannot be registered, because they lack “distinctive character”.
What constitutes distinctiveness can be difficult to identify for a non-specialist. This is a tricky legal area which requires the advice of a trademark lawyer. Below are examples of generic trademarks which have been successfully registered.
Step 2. Understanding what is a trademark
Trademarks are intellectual property rights granted by an IP office in a country or geographic area, e.g. the European Union. Trademarks can take various forms which can be represented graphically:
- a 2D or 3D representation of a product
- outer soles for shoes
- a colour for the outer sole of a shoe
- a slogan
- a product packaging.
Step 3. Researching the availability of your brand
Trademarks can conflict with other prior rights when the signs are identical or similar, also where products or services marketed are identical, or considered similar in Case Law. This legal issue is named “freedom of exploitation”.
Prior IP rights to take into account when assessing the brand’s freedom of exploitation are categorised into a broad range :
- Registered trademarks
- Copyright (book titles, book extract, drawings, paintings, designs, etc.)Registered designs
- Registered designs
- 3D designs
- Unregistered brands or Common Law trademarks
- Domain names (when in use).
A trademark prior search should always check a broad range of IP rights, including all of the above.
Step 4. Registering your domain names
Registering a domain name portfolio including key country code domains will greatly facilitate brand protection. Ultimately this could help reduce legal costs such as domain name recovery.
We recommend that you don’t let the website designer register the domain name(s) of the company. This could result in being locked into pricey maintenance contracts and ultimately, losing the domain names. We have seen this in real-life cases.
Step 5. Registering your company name as a trademark
Even if the law protects your company name, it will be easier to defend against a copycat if it is registered as a trademark. This is particularly useful if you have agents abroad, after the termination of their contracts. We have had experience of legal issues involving websites created by a former agent abroad, using the company name.
Step 6. Registering your trademarks in your name (or company name)
Do not let your franchisee or agent register your trademarks (especially abroad) as he may register them in his own name. This legal problem frequently occurs. Even if this is a case where the trademark incurs cancellation, if you register the trademarks yourself, you will simply avoid this and save money on legal costs and proceedings.
Step 7. Monitoring your online reputation
Using specialised online tools to monitor your reputation will help you protect your brand image, monitor your distribution channels and track counterfeiters. Protecting your trademarks will help prevent your trademark falling into the public domain if everyone is using it in connection with a product (for example “Kleenex” for paper tissues, “Ipod” for MP3 players). In addition, if you tolerate the use of an identical or similar trademark for over five years, you will not be able to act against that trademark in future.
We would also suggest creating “official” pages on social networks such as Facebook and Twitter, for your company brands and product names.