Branding or re-branding? Then look before you leap

Recently we came across a business owner who went to a lot of expense re-branding his business.  Unfortunately after his new brand was in place he found that he couldn’t protect it through trademark registration.Ironically, he could have registered various elements of his old brand including his company name. 

Here are two significant steps he could have taken to avoid this unnecessary expense and inconvenience:

1. Understand the Restrictions on Registration

There are comprehensive laws governing trademark registration and as a result, not every application is successful.  Perhaps the most common reason for a trademark to be declined is that the proposed mark is too descriptive. 

Descriptive Phrases

For a mark to be eligible for registration it must be distinctive.  Therefore, generally speaking, words, phrases or images that are descriptive of the type of business they relate to will be, at least initially, declined. 

How descriptive is too descriptive?  Generally speaking, if a person hearing the proposed words or phrase would consider them to describe, indicate or allude to the nature or other attribute of the goods or services to which they relate, then they are “descriptive” and consequently not distinctive enough for registration.

For example, a company or trading name like “Laundry Services” or “Computer Assistance” would be unlikely to be accepted if used in relation to businesses offering laundry or computer assistance services. 

However there are many marks that appear to be descriptive but are not because they relate to goods or services quite different from that which they appear to describe.  So, by way of example, Rocket Fuel is descriptive of rocket fuel, however when used in relation to hot barbeque sauce is not descriptive and is registerable.

For every clear example there are many more borderline cases.  If you are unsure whether your proposed mark is registerable obtain professional advice ahead of undertaking a branding exercise or overhaul.  Alternatively you could embark on the registration process and defer branding or re-branding until after your proposed mark has been registered.

2. Check the Trademarks Register

The second step you should take to avoid disappointment is to check the Trademarks register ahead of branding or re-branding.  You don’t want to go to the expense of developing a brand only to find out later that someone else is already trading under it.

The Intellectual Property Office of New Zealand (IPONZ) has its own website which holds a searchable trademarks register.  Use the link www.iponz.govt.nz and Search under the Trademarks (or TM) option.  If you feel that you require further assistance, obtain professional advice.

Conclusion

Changing your brand can be an expensive exercise.  If you think it will improve your business then of course you should do it, but you should also take some steps to ensure that it is going to be worth your while. Avoid disappointment after developing your new brand by taking proactive steps beforehand to ensure you can protect it.  Look before you leap, and you’ll get maximum value out of your re-branding exercise.