Rebranding your business can involve a major overhaul of all aspects of your business’s branding or a simple change to your logo design, to create a more modern brand image. The need to rebrand can arise organically as a result of the growth and changing direction of the business or it can be a necessity, forced upon your business by a competitor who is threatening to take action against you for infringement or ‘passing off’.
In this article, our intellectual property solicitors explore the various forms of protection available to brand owners considering a rebrand, along with the intellectual property risks that may arise during the rebranding process.
Contents:
- What are the intellectual property risks associated with a rebrand?
- Can I reuse my existing trade marks after a rebrand?
- Do I need to conduct a trade mark search before I go through a rebranding exercise?
- How do I register trade marks to protect the new brand?
- What are the other forms of protection available for my new brand?
- Post rebrand considerations
- Summary
What are the intellectual property risks associated with a rebrand?
When undertaking a rebrand there are certain steps that you should take in order to limit the risks involved and ensure that you do not have to go through the same process again in the near future. If you don’t carry out research before you launch your brand you could find yourself fighting an opposition case at the intellectual property office when you try to register your trade mark. You may even face infringement proceedings in the courts once you have started to use your new trade mark in business.
The rebranding process requires careful thought and planning and consultation with a number of different team members and advisors. Many businesses instruct their legal advisors to conduct a regular IP audit, which involves a full assessment of their brand portfolio and IP protection and reporting on any action that may be necessary at that time.
One thing to consider is whether the IP rights in your new brand can be protected by registration. Such rights can include trade marks in brand names, logos and other unique brand identifiers such as slogans, packaging design and even colour schemes, shapes, sounds or smells, that are associated with your goods and services. Registered design protection could also be available to protect the appearance of your products, for example, the pattern, unique shape and surface decoration of a range of bags or furniture.
You will also need to decide who will be the official owner of any IP rights that are created in the new brand. Usually, this is the company itself, if you are trading through a limited liability company. Some situations are more complicated and there may be various stakeholders who claim a share of the rights.
Can I reuse my existing trade marks after a rebrand?
If you make substantial changes to the name, logo, or other key brand assets, you may need to file new trade mark applications to register the new marks. Otherwise, you may not be able to enforce your old registered rights in order to protect the new branding, if it differs in more than minor aspects. This would leave a gap in your IP protection, making it difficult to enforce your rights against third parties and competitors that try to copy your brand.
If you intend to introduce your new brand gradually and to keep using your old brand in tandem for a period of time, you should also make sure that your current trade mark registrations remain in force. If these are over five years old and you stop using them for any significant period of time, they will become vulnerable to revocation by third parties on grounds of non-use.
Examples of more than minimal changes to your branding that would result in new registrations being required could include the following:
- Different coloured versions of the same logo, provided that the colours are featured in the same proportions and ratios;
- The same word mark followed by sequential numbers, such as CASTLE 1, CASTLE 2, CASTLE 3, CASTLE 4…
- The same house mark followed by non-distinctive, descriptive words, or geographical names such as WEREWOLF tea, WEREWOLF coffee, WEREWOLF TOAST…, or TATANIA LONDON, TATNIA NEW YORK, TATANIA CASSABLANCA…
- Minor differences in punctuation or hyphenation, such as WHITE CLOUD and WHITECLOUD or WHITE CLOUD and WHITE-CLOUD;
- A series of cartoon characters that are the same except for slightly different gestures or facial expressions….E.t.c.
If your logo has changed organically over the years, even though each particular change may be minor, there may come a point when the logo no longer resembles the registered version closely enough to fall under its protection. This is why periodical reviews of your IP portfolio are so useful as they may raise issues that you had not previously considered.
Do I need to conduct a trade mark search before I go through a rebranding exercise?
Unless you are changing only minor aspects of your branding, it is always recommended that you conduct trade mark searches before deciding on your new brand. Although not mandatory, this is probably the most important step that you can take as it can help you to avoid further expense down the line.
You can conduct your own preliminary searches of the UK Trade Mark Register to understand whether there are any identical marks that are registered and a ‘Google’ search to see if there are any businesses that are already using the same or a similar brand but may not have registered it as a trade mark yet. Such businesses could have prior rights to their unregistered trade marks which the owners could rely on to oppose your registration application if they were to discover it, or even to bring a ‘passing off’ action in the courts to prevent you from using your mark.
The preliminary searches alone do not guarantee that you won’t inadvertently infringe a trade mark. Ideally, you should conduct a comprehensive search that can be done by a specialist IP lawyers for a set fee. The searches can reveal potential risks from marks that do not appear similar at first glance or that cover different goods and services but enjoy wider protection based on their reputation.
How do I register trade marks to protect the new brand?
In the UK, trade marks are registered at the Intellectual Property Office (UK IPO). An application can be filed online or in the post and one registration is required per mark, unless you are filing for a ‘series’ of up to six, highly similar trade marks in the same application.
Trade marks are registered for specific goods and services and you will need to choose which ‘Classes’ of goods and services are required to cover your business’s core product lines and services as well as any additional goods and services that you have a genuine intention to expand into in the future. The cost of an application depends on the number of Classes that you include. The number of Classes and specific items that you list within each Class can also have an impact on whether you receive opposition from the owners of similar trade marks that are already registered for identical or similar items. If you are in doubt as to what to include, an IP lawyer will be able to advise you and provide a draft of your application including the specific goods and services in a form that complies with the current version of the international “NICE” Classification system. This can save cost and time in the long run as you will be less likely to receive objections to the wording or content of your application from the Examiner.
The entire process of registering a trade mark usually takes around six months if all goes smoothly and can take much longer if your application is opposed or you receive objections from the Examiner. So you should apply to register your new trade marks as early as possible in your rebranding project.
If you are also changing the corporate name of your registered company, you will need to remember to update this at Companies House as well as updating the ownership information for all existing patents, trade marks and other registered IP rights that are registered in the name of the company.
Legal agreements such as licences and distributorship agreements often refer to specific trade marks and will need to be updated to reflect any changes in those marks as a result of a rebranding exercise. This could necessitate a re-negotiation of the terms of the license as a whole, if the licensee will be required to incur expenditure in updating assets such as literature, marketing text and packaging.
Other agreements such as franchise and supplier agreements, or marketing deals that may involve the old brand may need to be updated. Internal IP Policies and brand usage Policies will also need updating and members of staff educated in how to properly use the new trade marks.
Failing to take these measures could result in improper use of the new brand by third parties such as licensees or even the business’s own staff members, having knock-on consequences for the business in terms of brand validity and enforcement. A registered trade mark could be cancelled on grounds of non-use if the registration is over five years’ old and the mark is no longer being used in the form in which it is registered. Incorrect use could also render the new brand unenforceable against a third party or result in the business being in breach of a coexistence agreement or legally binding undertakings that it has entered into concerning how it will use its new brand.
What are the other forms of protection available for my new brand?
It is worthwhile adding that other forms of IPO protection can also be used to protect your new brand, in combination with or instead of registered trade mark protection.
Copyright arises naturally in original works such as works of art, written text, sounds and video recordings and graphic designs. You do not need to register your copyright but should make a note of when it was created and by whom and keep a time-stamped, sealed version in a safe and secure location, which could include electronic storage. It is a good idea to display a copyright notice on any original work to show everyone that it is your own IP and should not be copied or exploited commercially without your permission. The usual wording for a copyright notice is “the copyright symbol, ©, the name of the owner, the year of first publication and any additional statement of rights that you want to include, e.g. © JOHN SMITH, 2024, Reproduction is only permitted for personal and educational use. Commercial copying, hiring or lending is prohibited”.
Design rights are also valuable IP assets that can be used to protect the appearance of your products and packaging. For example, you may need to update your packaging to reflect your new rebranded logo or colour scheme. Unregistered design rights arise naturally and last for three years from the date of first use/publication. Registering your design will extend its protection to five years’ from the date that you publicised it and can be extended for subsequent five year periods up to a maximum of up to twenty-five years. The design must be novel and individual, which means it must differ in more than immaterial aspects from any other designs and must not simply be dictated by the product’s technical function. A design registration can be particularly useful where it has not been possible to register the design as a trade mark because it is not distinctive enough or where you need short term protection for seasonal items such as fashion products or many variants of a product design, that can be registered quickly and relatively cheaply. You do not need to provide continuous use of the design in order to keep the registration valid and you can exploit it as any other registered IP right through licensing, assignment or use as security for a loan or mortgage.
Post rebrand considerations
Once you have protection for your new brand, you should give some thought as to what action you will need to take in order to maintain that protection and enforce your IP rights. Registered trade marks need to be renewed every ten years in the UK and registered designs every five years, including the payment of renewal fees. Trade marks need to be used continuously in order to maintain goodwill in the brand. Once a trade mark has been registered for more than five years’, it will become vulnerable to attack from third parties on grounds of non-use if you have not yet traded under the mark or have ceased to trade under it for a period of five years’ or longer. You should keep dated evidence of when you first started to trade under the mark and examples of how it has been used and for which goods and services. If you change your product line or start to offer new or additional services under your trade mark, you should be aware that these may not be protected by your mark as registered and you may need to file new registration applications to cover additional items as your business develops and grows.
Having registered IP rights, on their own, will not automatically enforce those rights against third parties. As the registered owner, you will need to take positive action to stop third parties from the unauthorised use or copying of your brand. This can involve putting measures in place to secure compliance and proper use by any licensees, franchisees and other authorised users of your IP rights by way of legal Agreements and IP Use Policies.
Monitoring is a fundamental aspect of IP rights enforcement and takes several forms:
- Regular monitoring of your IP portfolio helps to identify any gaps in IP registration and protection, any actions you may need to take to keep your existing registrations in force and any unnecessary expenditure that you are wasting in maintaining registrations for brands that are no longer in use;
- Monitoring of competitors and the market is important to discover whether any third parties have commenced trading under identical or confusingly similar trade marks or have begun to offer products using a design that is too similar to yours. You can take early action to try to stop such use, by writing to the businesses concerned to draw their attention to your prior IP rights and asking them to cease and desist all use of the conflicting mark or design. If you do not do this early on, the other business may be too invested in the brand to simply stop using it and you may have to file an infringement and/or passing off action in the court in order to obtain an injunction against further use and/or claim damages or an account of profits from the unauthorised user. If you do nothing, your registered rights may be diluted and you may suffer loss as a result of customer confusion and a diversion of trade to the other business. You could even find that your brand becomes genericised and unenforceable, if many other businesses start to use it or a confusingly similar version.
- Monitoring of the trade mark Registers to check for applications to register identical or confusingly similar marks by other businesses is also highly advisable. This is usually achieved by setting up a “watch service” via an IP lawyer, who will receive a regular email containing lists of similar trade mark applications and then analyse and filter these so as to inform you of any that may be of particular concern. You can then discuss whether you want to file any opposition actions at the Registry and/or send “cease and desist letters” warning the applicants that you may take legal action if they were to commence use of their intended mark within the same or a similar industry.
Summary
Rebranding is a necessary and common exercise that many businesses have to go through during the lifetime of a product range. It can be a pre-planned, relatively stress-free process, if you invest at the outset in preliminary searches and checks and seek legal advice wherever there is any potential risk. Even a seemingly simple modification of your logo or design can result in disproportionate cost and damage to your business if you are not conscientious and decide to skimp on the formalities. Saving short-term cost and time could be a pyrrhic victory if your rebranding results in infringement action and damages or an account of profits being claimed against you or even a further rebranding exercise becoming necessary when you receive a “cease and desist” letter informing you of a competitor’s prior trade mark rights.
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