In the world of brands, change is a defining feature of our time. Even established brands are expected to have the ability to renew themselves and react to changes in order to remain attractive and further increase their value. However, the legal aspects of rebranding should also be considered, Kolster’s Head of Trademarks Joose Kilpimaa points out.
We have recently seen numerous examples of existing brands being renewed or even replaced with a completely new one. Rebranding has affected both long-established and well-known brands on the market and more recent ones. The basis for rebranding is often regular updating of the brand, but societal changes are also increasingly affecting the need to update brands.
Whatever the reasons for the rebranding, the brand owner must also consider the legal aspects associated with switching to a new brand. It is well known that creating and launching a new brand requires considerable investment. In order for a company to ensure that investments and related return expectations remain in their own hands, it is important to take care of the protections associated with a new brand. The following three practical guidelines will help you avoid legal pitfalls and the most common IPR risks when creating a new brand:
The concrete – and legal – form of a brand is a trademark. A registered trademark gives full control over its use and the right to prohibit others from using or registering trademarks that could be confused with it.
The launch of a new brand is typically the moment when parties acting in bad faith try to register the same or similar trademarks for themselves in order to profit from them later on. When the necessary trademark registrations are already in place before the launch, the likelihood of this risk being realised is very low.
The availability of a new trademark in the relevant markets should be verified by carrying out a preliminary search concerning registrability. The preliminary search will indicate whether another party has already registered a similar trademark for itself while also confirming that no other party can prohibit the use of the intended trademark.
A preliminary search carried out in good time provides an opportunity to modify the strategy in the event that earlier trademarks that pose potential risks are found.
Domain names closely related to trademarks should also be registered to the company well in advance of the launch of the new brand. It is a good idea to set aside time for this, as certain domain names may already be reserved, but their purchase can often be negotiated. If the new brand is released before reserving domain names that are important to the company, the purchase price generally rises to be higher than usual.
Once the company has ensured the availability of the trademarks related to the new brand in the relevant markets, it is advisable to file trademark applications as soon as possible. The protection period of registered trademarks starts from the date of application, and in the event of a conflict between two similar trademarks, the earlier application date wins.
Trademark applications must specify the goods and/or services in connection with which the trademark will be used. This is the most critical stage in the preparation of a trademark application, as deficiencies or inaccuracies in the definition of goods or services may exclude ones that are important to the company from protection.
The preparation of new trademark applications is also a good time to check the sufficient coverage of existing trademark registrations.
Trademark applications must cover the relevant markets for the company. It is advisable to think two to three years ahead, and to apply for trademark registration in countries where you can see potential markets during this period. The cost of trademark applications is quite low compared to creating and launching a new brand, so it is not worthwhile to compromise on adequate trademark protection to try and save money.
Over the years, significant amounts of goodwill and recognisability have been attached to the old brand and related trademarks among customers. For this reason, brands that are sidelined during rebranding should be kept in force for a certain period of time. Even if the new brand is made known to customers through various marketing activities, it is worth making sure that the use of the old brand also remains in one’s own hands for at least a defined transition period. In this way, the company ensures that other parties are not able to wrongfully exploit the old brand, either for their own benefit or against the company.
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