Look at Your Market, Think Carefully About Your Brand Name

It is estimated that there are at least 4.5 billion social media users across the globe at the moment, with that number only set to grow and most of us will have heard of Facebook, WhatsApp and Instagram. It is therefore no surprise that Facebook’s rebranding to ‘Meta’ has been a hot topic recently and there may be many organisations which, like Meta, may be considering a similar re-branding exercise.

The reasons behind any company’s decision or need to rebrand can be wide-ranging. For Washington Football Team, the issue was reputational; concerned because the franchise’s controversial Native American imagery is seen as offensive to those communities.

From a business development, societal and reputational perspective, rebranding can be necessary from time to time. On the other hand, Facebook’s transition to Meta is meant to reflect its growth into the ‘metaverse’ away from just social media platforms.

What is consistent in any branding or rebranding exercise is the importance of appropriate due diligence when undertaking a rebranding exercise. So, what should you, as a business, consider when embarking on a (re)branding journey?

Distinctiveness

It is crucial that no one else is using the trade mark you intend to use. Appropriate due diligence should be carried out to ensure that your trade mark is unique. The trade mark must be sufficiently distinguishable from other trade marks that are currently registered (or being used) for identical or similar goods or services. A trade mark should not cause confusion with an already existing one.

A Global Reach

Particularly pertinent if your company is trading in multiple countries/territories, your trade mark should be able to be used in all markets you intend to operate in at the moment and, importantly, in the future. By nature, trademarks are territorial, meaning that a trade mark only applies to the country/territory in which it is registered. In the early stages of a business’s operation, the lifeblood of its customer base is likely to be where it is based. However, in an ever-expanding global market, the importance of registering and maintaining trade marks in other jurisdictions is vital on several fronts.

You should check registrations and use in the countries/territories you sell in and intend to sell in.

Unlike Facebook/Meta you should ensure that the trade mark is not inappropriate in other languages. Just because a trade mark is effective in the English speaking world does not mean this will be the case in all corners of the globe. Given the global reach of Meta’s platforms, the translation of Meta (meaning ‘Dead’ in Hebrew) caused some internal embarrassment as well as a plethora of Twitter hilarity, led by Aldi’s social media team as standard. While Meta may not be offensive per se to the Jewish community, it is essential to ensure that your brand means what you think it does in countries that you operate in. For Pocari Sweat, a Japanese sports drink, the brand name may be engaging for customers (both actual and potential) in Asia and the Middle East but may put off customers in English-speaking countries!

Strategy

It is important that you have a comprehensive trade mark strategy in place. You should consider not only the countries in which you are currently operating but also those countries where you are likely to operate in the future. When it comes to business expansion, you should ensure that your IP protection is properly robust and that your competitive advantage is maintained.

Awareness

One key reason for a robust trademark strategy is to guard against ‘trade mark trolls’. This involves entities who will deliberately target companies by either registering identical or similar trade marks to that particular company in a country or territory in which it is not currently operating to prevent its use of its brand.

The best way to protect and maintain your brand names is through proactive measures. This includes conducting periodical market and trade mark  searches to identify, among other things, the countries where trademark protection might be required and should be considered as your business grows.

How can we help?

Our dedicated Intellectual Property team can assist you with identifying, commercialising and protecting your business’ Intellectual Property.

If you have any questions in relation to (re)branding please get in touch with our expert Intellectual Property team.

This article was co-written by Edward Ferguson, Solicitor. 

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