The key to having strong protection in place for your brand starts with the selection of the brand. The more distinctive your brand is, the stronger your exclusivity to that brand will be. The strongest brand name is one that is fanciful or a made-up word. These brands have no meaning other than the brand and there should be no reason for a third party to use the brand name at all unless it is a reference to the brand. Consumers may initially have to be educated as to what these brands relate to, but these marks are the easiest to enforce. An example of this type of mark is PEPSI or Kodak.
The next-best type of mark is one that is made up of a word that has a common meaning, but it is being applied to or used in relation to goods or services unrelated to that meaning. Think APPLE for technology products or SHELL for energy and petrochemical products. These marks can provide a broad scope of protection, especially after they have acquired goodwill through use.
Marketing teams often prefer to use brand names that allude to the nature of the goods for example COPPERTONE (suntan lotion), NETFLIX (streaming service for films), and AIRBNB (Bed and Breakfast overseas accommodation). The attraction of these brands is that they are easier for consumers to remember as they are associated with the goods or services on offer. However, they may have a narrower scope of protection, as there could be circumstances where a third party may be able to use a similar suggestive phrase in relation to their similar or identical services.
Finally, we have descriptive brand names. These offer the weakest protection as they are names that identify one of the characteristics of the products being offered under the brand. As they are descriptive, third parties can use the brand name to describe their own product offering. If a company chooses this kind of brand, then the investment in terms of its promotion and establishment is likely to be significantly higher. Equally the enforcement of a descriptive brand name is more nuanced and often more expensive. Trade mark law is also careful to keep descriptive or generic names free for use by other companies. No one is allowed to trade mark something that other companies would want to use simply to describe their products or services.
Once you have identified the candidate brand names for your business, best practice dictates that you check to see if any of the names you are considering are already in use by someone else or if they have been registered as trade marks by third parties which would mean they are not available for use by you. This is called clearance searching and is best undertaken by a trade mark specialist who can design the correct search criteria in terms of names to search for, goods and services to search in relation to, and territories to search in. They are also best placed to advise you as to the varied risks posed by any trade marks that come back in the searches that may present a problem to your proposed brand name. They are also able to advise you as to what actions, if any, can be taken to reduce or completely remove the risks posed by the search results. This is more complex than simply looking up a term on Google or on an IPO website – successful searching is nuanced and, if done well, should clearly identify risks and help get the branding strategy right at the beginning, which will help avoid issues further down the track.
The process of clearance searching does not just apply to words, but also to stylisations, designs and in the selection of a logo. To provide the best protection, a logo should be original and designed in-house or using an external designer where the copyright of the logo is also assigned to you. You should also discuss with your trade mark specialist the possibility of obtaining registered design protection for the design of your logo in addition to trade mark protection. There is a time limit on applying for a registered design once the design is in use, so it is best practice to discuss this with your specialist advisor before any external use of the logo has been made. This is covered in more detail in the next chapter on protecting your brand.
