Earlier this year, I attended The Brand Forum in Sydney and had the privilege of listening to how some of the best marketing brains in the world devised campaigns to build on the legacy of well-established brands, and also build new super brands. The forum featured representatives from Airbnb, The Procter and Gamble Company, T2, The Walt Disney Company, The Lego Group, Bang & Olufsen and R.M. Williams, to name a few. Each of these brands are marketed with strong and inspiring messages about what the company stands for and why they are loved by their customers.
Whilst marketing campaigns are vital to building successful brands, it is also important to lay down the best possible legal foundation to protect and enforce them. It is helpful to think about this foundation at brand inception, and not neglect it until a few weeks before launching to the market. Here are some important steps you can take when developing new brands, and throughout the life of existing brands:
- Search before you use
When deciding on a brand or trade mark, do thorough searches to make sure that your trade mark is clear to use and that it won’t infringe the trade mark rights of another party. You do not want to spend a lot of money on a marketing campaign only to receive a cease and desist letter because the trade mark you have developed infringes the rights of another trader.
- Include target countries
If you plan to expand overseas, include target countries in your searches. It can be frustrating (and expensive) to discover a similar trade mark being used by another trader in one target country, especially when you have already gone to market and secured trade mark rights in other countries.
- Plan and align your trade mark filing strategy with your marketing strategy
This is an important step that should be implemented both domestically and overseas. For example, you may consider applying for an international registration under the Madrid Protocol, which designates your key countries of interest. In order to do this, you need an application and/or registration in Australia on which to base your international application. Also, it is recommended that you prioritise filing in first-to-file countries of interest, such as China and Japan. This will prevent someone else jumping ahead of you in the trade mark application-queue with a similar trade mark covering similar goods and/or services, which would prevent you securing registration.
- Use the ™ symbol
In Australia, use the ™ symbol to refer to your trade mark while a trade mark application is pending. You can also use this symbol if you don’t intend to register the mark, but rather use your trade mark at common law. Only use the ® (registered symbol) when your trade mark is registered.
- Trade mark watches
Put trade mark watches in place and receive alerts when similar trade marks are accepted for registration so that you can consider whether to oppose them. Opposition periods are limited (two months in Australia), so it is important to move fast if you choose to take action.
- Avoid using trade marks as generic names
Don’t let your trade mark become a generic name for certain goods and services. In Australia, trade marks that become common descriptors may be removed from the Register. Furthermore, it becomes difficult to enforce a trade mark if it becomes a generic name. Use your trade mark as an actual trade mark, and correct others if they use it as a generic name. For example, include the term of the art or product descriptor to refer to your goods and the trade mark to refer to the brand, such as XEROX photocopier, GRANOLA cereal and HOOVER vacuum cleaner.
- Register a notice with customs
Once your trade mark is registered, it is recommended that you register a notice with customs in Australia and in other countries to prevent counterfeit goods entering the market.
- Use your trade marks
Use the trade marks you have registered, or potentially lose them to cancellation for non-use.
Building strong and successful brands requires powerful and emotive marketing campaigns. It also requires good legal planning, securing of trade mark rights, and enforcing these rights to protect the goodwill of your brand.