Trademark Registration
Dilanchian Lawyers & Consultants
The University Centre, 210 Clarence Street
Sydney NSW 2000 Australia
Tel (02) 9269 0229
Fax (02) 9269 0775
Email noricd@dilanchian.com.au
Web www.dilanchian.com.au

Generate a legally strong brand in three steps

How can you create a legally strong brand name? What can a brand manager do to improve the selection of trade marks from a legal perspective? What legal principles should you keep in mind when you brainstorm for a business or company name, domain name or brand name. This post answers these questions.

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Each year we draft, craft and file numerous trademark applications for our clients. We specialise in this work. It is clear to us that the best trade mark registrations come from pushing together three areas of knowledge - creativity in law, management (mostly marketing), and design. We often brainstorm names with clients to develop what works best in legal terms. This post sets out three steps we follow in this work.
Will law protect your brand?

The steps are important because after a name or logo is selected, for a number of reasons it is often too late, in the corporate or business decision-making cycle, for advisers to suggest improvements informed by legal considerations.

People hate to reject names and logos into which they have already invested time, money and emotional energy. So often we end up with a compromise result, ie adding value to a non-perfect brand. This happens when clients come to us too late. Fixing a legally challenged brand is harder than getting it right in the first place.

The legal test for a brand comes when it is the subject of a legal disputes or litigation. For example, infringers and those who get too close to your brand don't always want to give up easily. To fight them and win early it helps to have a legally strong brand, rather than a legally compromised brand.
Three steps to generate a legally strong brand

To benefit from legal know-how here are three steps we recommend you follow.

First, seek distinctive brands not descriptive brands.

Managers love descriptive marks. They mean something, they describe at least one feature of the product or service. Being descriptive may work in the marketing arena, but it's bad in a court of law and makes trade mark registration impossible, difficult or problematic.

One aspect of the law's view is that descriptive marks are obvious. They are said to very rarely meet the legal requirement under trade mark law of being "distinctive". Simply stated, trade mark law's view is nobody should be granted a statutory law monopoly over a descriptive word when it describes a feature of a product or service, eg "Sharp Blade" for knives. In contrast, "Furi" is registered in Australia in a logo form.

Trade mark and name protection law in Australia and other nations grants limited or no monopoly rights to descriptive marks, names and brand. There are exceptions in certain circumstances.

In the High Court of Australia case, Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513 sets out the classic test for whether a mark can be legally said to be adaptation to distinguish it from others:

"The interests of strangers and of the public are thus bound up with the whole question, ...it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives ... will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it." [our emphasis]

Arising from the above, among the best known and most remunerative trade marks are those which are completely meaningless, such as Google or Kodak, as they are distinctive of their owner's products or services. In the legal arena it also helps that they are short words and not a jumble of words, logo and tagline. Keeping it simple and focused makes legal sense.

Second, consider how the brand will be used.

Is it to be used online (eg in a domain name) or off-line (eg on packaging, brochures or letterheads)? Where will it be marketed, eg in a supermarket, on a website, on television? Will it appear often in digital media or in billboards, "street furniture" ads, newspapers, magazines, radio, or television?

The questions about use seek to see ahead into practical questions affecting use, all of which can have legal implication (eg to set the description of goods and services in a trade mark application). The use of the mark should also be considered to shape its nature and design. This leads to the third step.

Third, consider the sound and look of the brand.

With words their sound and pronunciation is important, especially on radio but increasingly on the web as well. Will people be able to pronounce it? Will they spell it correctly for internet search engines or direct domain name searches? Is the name too long?

As for look, consider visual features such as package size, shape and style and brand colour, typeface, layout and the possibilities for animation in digital media.

Why the three steps matter

Organisations have to live a long time with their brands, so make them legally good brands. In Australia a good trade mark registration provides a high quality exclusive or monopoly right for 10 years to use the trade mark for the goods or services for which it is registered. Renewals are for further 10 year periods. A similar deal is available in countries worldwide.

To separate or bring together your strategy, keep in mind brand architecture when you select a brand. For this, carefully consider exactly what you are branding, eg an organisation, product, or product feature. Perhaps you should brand these separately?

Branding decisions can be complex. So we'll end with a simplification, though it's a long sentence.

A good brand in general terms involves matching:
- who your organisation is, with
- what are your organisation's offerings (products or services), with
- signs your organisation wishes to use as brands to represent it or its offerings, eg: domain names; logos; names or design.

Call for a conversation when you need to generate a legally strong brand name.

Dilanchian Lawyers & Consultants

The University Centre, 210 Clarence Street
Sydney NSW 2000 Australia
Tel (02) 9269 0229
Fax (02) 9269 0775
Email noricd@dilanchian.com.au
Web www.dilanchian.com.au

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