3 steps to maximising your brand's potential

An idea for a new brand can be a great starting point for a new venture - but there’s lots to do before those seeds grow into a successful and recognised brand. To help you, here are our top tips for discovering, protecting and commercialising your brand.

Discovering it: clear the path

Whether you come up with a new brand identity on your own or seek help from marketing professionals, the discovery of your new brand can be an exciting moment. But there are a few legal pitfalls to avoid at this early stage. You need to make sure that your new brand:

• will not infringe any third party’s existing trade mark or similar rights; and
• is a distinctive and enforceable registered trade mark in its own right.

Trade mark registers are cluttered with earlier trade marks, some of which may be identical or similar to your brand and which may or may not still be in use. In some cases deals can be done with the owners of earlier rights which allow everyone to get on with their businesses without worrying about customer confusion or brand dilution. In other cases you might have to return to the drawing board. A little bit of investigative and legal work at this early stage can avoid expensive disputes and rebrands later! You also need to make sure that the brand you have in mind is itself capable of being registered as a trade mark. Then will you be on a strong footing to enforce your rights and commercialise the brand.

Protecting it: stake out your ground (and hold it!)

Brand protection requires two things: strategy and action. While you do accrue some rights in your brand just by using it (known in the UK as passing off rights), your brand is best protected by registering trade marks. You will need to decide what to register in order to give you the best protection possible while avoiding disputes with other trade mark owners or the trade mark office: the brand name alone; the name in a stylised font; a logo; the appearance of a product or packaging; or several of these? If you intend to operate a website, you will also need to think about any internet domains that you should register, either to use yourself, or to prevent others from using in a way which might harm your brand. With more than 1,000 new top level domains expected to be rolled out, getting your domain name strategy right has never been trickier. Just having your trade marks and domains registered isn’t the end of the story. You will need to constantly monitor:

• trade mark registers for later trade mark applications which might conflict with or dilute your brand; and
• the marketplace for other businesses whose activities infringe your trade marks.

Where you feel your rights may be threatened, you need to take action to enforce them. In some cases a little legal correspondence does the job. In other cases litigation may be unavoidable. The key is to pick your fights and try to remember that spending time and money enforcing your brand is an investment in the future strength of your brand.

Putting it to work: maximise potential

"Use it or lose it" is a standard maxim in trade mark law. If you don’t put your trade marks to use in relation to the goods and services for which you have registered them, you run the risk of your registrations being revoked. You can use the brand yourself or authorise others to use your trade marks. You may wish to operate your business under a franchise model, allowing others to trade under the brand, or you may simply want to allow third parties to produce licensed merchandise which falls outside your core business and expertise. Both scenarios allow you to put your brand to work, generating revenue for you through the activities of third parties.

Your franchisees or licensees will want to know that the brand they are buying into doesn’t infringe anyone else’s rights and that you have a brand enforcement strategy and action plan in place (see steps 1 and 2 above). The licence or franchise agreement should set out who is going to be responsible for brand enforcement issues. 

Negotiating the licence or franchise agreement is also your chance to impose brand guidelines and quality control provisions to ensure that your brand’s reputation goes from strength to strength.