Trade Marks and Copyright – Points to Remember When Using Branding Consultants.

This article was included in our Winter 2009/10 edition of Inside IP.

Rebranding can bring with it great benefits but it is also fraught with risk.  Outside consultants provide specialist help with rebranding; coming up with new names, memorable strap lines, catchy tunes and striking logos.  The temptation, though, with employing outside consultants, is to think that they fulfil functions they don’t.   Don’t forget your trade mark searches and don’t forget about copyright.  Here’s why.

Trade Mark Searches

Never forget that adopting a new mark brings with it the risk of infringing somebody else’s rights.   Before a new mark is adopted, searches should be conducted to see if that is likely.  Others may have powerful rights in marks identical or similar to your one, either because they are using them (which you might know about) or because they have registered them (which you might not know about).  Searching massively reduces the risk that your new launch is followed by threatened or actual legal action resulting in you having to cease use of your new mark with all the resulting cost, loss of goodwill and bad publicity.

Searching should be done by a professional – usually a trade mark attorney or other lawyer.  Branding consultants are not lawyers.   As a rule, they do not conduct trade mark searches when coming up with new marks for you.

There are many different types of searches that can be done.   Some are fairly superficial, just looking for real knockout rights which you might infringe, whereas others are more in depth.  If, therefore, your branding consultants do say that they have undertaken searches, or employed lawyers to do so, be sure to find out exactly what sort of searches they have undertaken and to obtain copies of the advice.    Also, bear in mind that the advice is probably being given to the branding consultants and not to you.    If the branding consultants are going to get advice from lawyers, ask that they engage the lawyers to advise you and make sure that you are seen as the lawyers’ client for these purposes.  This means that the lawyers are responsible to you for their advice, and liable to you should that advice be wrong, rather than only being liable to the branding consultant.

Don’t leave your searches too late.   You should involve lawyers to undertake the searching process right at the very beginning of your work on developing a new mark.    You do not want to go through the process of choosing a new mark, perhaps after analysing a number of possibilities, only to then find that adopting it is legally risky and you have no plan B.   Had you involved lawyers at the beginning, they might have told you much earlier on that that particular mark was not one you should pursue.

Copyright

Much of what your branding consultants devise for you will be protected by the laws on copyright.   This will be the case where they have devised any form of logo or picture, written anything, other than a very short piece of text, composed a tune and possibly even where they have devised a layout for documents or webpages.

Whilst, clearly, anything designed for you by the consultants is something that you are entitled to exploit, unless you do something about it the ownership of the copyright in that work will remain in the hands of the consultants.  This could present you with unnecessary problems in the future.  The laws on copyright will give you the power to take action against someone who copies your logo or tune or other work but only if you own the copyright.  Imagine a scenario where you have had a lovely new logo designed, have been proudly using it for five or six years and then find it to be being copied by a competitor.  You threaten to sue them for copyright infringement but find that you do not own the copyright and, worse still, you cannot locate the original consultant who does so you can’t get an assignment.   Much better to have got an assignment of the copyright when the logo was devised, in the first place, and, remember, assignments of copyright must be in writing.

And Finally,

Don’t forget to protect your new brand or logo through registration as a trade mark.   Get this process underway before your launch so that you don’t have to deal with the problems that can be caused by someone else applying to register your mark before you.  The same goes for domain name registration.   Make sure you have registered the domain names you want to use before your launch so that no one else does so.  If they do, at the very least, you may be forced to part with money unnecessarily in order to buy the domain and it is possible that you will not be able to recover the domain name at all.

Kate Széll 25 Jun 2009

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