Today images bombard our senses, vying for our attention as we go about our day to day business, seeping into our subconscious until we cannot remember a time when we did not know a logo or what organisation it represented. Ask any five year old to identify a number of market leading logos and you will be surprised, or frankly horrified, at the depth of their knowledge. Therefore it is no surprise that sometimes a logo which is presented as a “new logo” by a marketing company has in fact already been designed or created before. If the error is identified at an early stage, it is inconvenient but it can be rectified. However it is another matter if the “new logo” is presented to the world and rolled out in a high profile media campaign only to be challenged by the legitimate holder. The financial implications can be considerable, along with the unfavourable PR and disorganised image it presents to would-be customers.
So how can you, as a design agency, ensure that your clients are not lead into a conflict situation? Rosalyn Newsome, trade mark attorney and partner at Intellectual Property specialist Barker Brettell, guides us around the potential pitfalls from the outset.
Accept the brief. Check the concept.
There is in fact a simple staged process which can be undertaken to ensure that the ideas you are pitching are available for your clients to use and register. There can be nothing more embarrassing than selling an idea which does not have any marketplace viability.
For this reason, we highly recommend that top level searches are conducted of the UK and European register for any new logo or brand. This should identify easily and clearly if a direct conflict with an earlier brand or logo exists. There is no point getting a client excited about something it cannot use. This top level search should be standard practice for all design agencies. It is not enough to solely look at the Companies House database, or to check gLTD domain registers as trade marks, company names and domain names are three separate and independent legal rights. Just because you have secured the company name or the .co.uk or .com domain, does not give your client the automatic right to use the brand as a trade mark.
The search facilities on the UK IPO website are easy to navigate for experienced users. Those new to searching need to be mindful of also considering obvious spelling variations and pluralised versions of the marks. Similarly, it is not always safe to discount registrations which are no longer in force as residual goodwill may still be a relevant factor. Providing guidance through some of these potential pitfalls is an area of added value which an Intellectual Property (IP) specialist firm such as Barker Brettell provides.
Win the work. Secure the design.
If the client has bought into the new logo, then fuller and more extensive clearance searches should be conducted. Does the new logo have any particular device element to it? Is there a strong colour scheme or font? These fuller searches should always be conducted by a professional IP firm. The timing of these searches is crucial. They should be conducted before any commitment to the logo or new brand occurs and so prior to the external presentation of the new brand to the outside world. These searches can be turned round quickly (they should take no longer than two weeks subject to the country involved) and providing this allowance is built into the launch timescale, everything should progress smoothly.
By using IP specialists the client will have the confidence to drive in a full scale launch on any number of mediums, both real and virtual, safe in the knowledge that the necessary clearance work has been completed. Investing in the clearance process of any new brand or logo is absolutely vital as is tailoring the clearance process to the local marketplace. The internet means that most brands go global instantly and therefore the translation of a brand should also be considered. There have been numerous well documented branding errors by even the largest of companies; Chevrolet wondered initially why its Nova car model did not meet sales expectations in Spain to match those in other EU countries, but once the company discovered that “nova” translates to “no go” the reason for the sales slump was clear.
Being able to engage in early conversations with clients on the medium and long term geographic plans for the business and ensure that the proposed logo or brand is truly “fit for purpose” will enable your design agency to stand out from the crowd.
Incumbent clients. Adding value.
Unfortunately, start-up companies are prone to neglect full IP clearance searches as understandably the immediate focus is getting the business up and running. However if as a design agency you become known for adding value in your branding proposals through the standard incorporation of top level trade mark clearance checks, to compliment searches of Companies House and gTLD domains, together with considering the translation of the brand, then this is an obviously area of work and thus income generation. Similarly, when working with established companies even a brand refresh should be approached with the same caution, especially if there is a dramatic change of stylisation from the previous look and feel of the brand.
Simple procedures. Best practice.
Once the logo or brand has been cleared, then the necessary steps should be taken to register the logo as belonging to the client. The cost of registration is relatively low when you consider that it provides monopoly rights for an initial 10 year period. More often than not, a company may spend 10 years using and promoting a mark but it neglects to actually protect it via a trade mark registration.
Clearly best practice involves the combination of in-house checks which can be conducted by you before the initial pitch is made, and then professional input from an IP specialist firm once the client has decided on the preferred name.
Initial trade mark checks should be conducted of the UK IPO and OHIM website. We would also recommend looking at the Companies House database and conducting a general internet search to look for relevant web content. It can be useful to check whether or not the .com and .co.uk domain name are available.
After this point, full searches should be conducted which would look for not only identical but similar marks which could be problematic to the availability of the logo or brand.
Stepping through the clearance process in this way, and securing a registration for the brand, is akin to our household insurance policy. Most of us reluctantly pay the annual premium and yet when we need to make a claim, we are relieved that the insurance policy is in place.
Ownership of a trade mark registration is very similar; often the trade mark registration is applied for and then forgotten about in the day to day running of the business. If however it then transpires that a third party is using an identical or similar logo the benefit of having the trade mark registration is enormous. It should result in a swifter and more cost effective resolution of a conflict which could otherwise have easily escalated both in terms of expenditure and time.