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James & Wells Intellectual Property Experts Assert "Protect The Brand You're Working On"

Wednesday 28 September 2016, 5:03PM

By Beckie Wright

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Ben Cain is an Associate with Intellectual Property Law firm James & Wells, based in Hamilton, specialising in litigation and dispute resolution. He recently published an article on the James & Wells website, on ‘Where there’s business, there’s brands.’ As Ben explained, when someone comes up with a name or a logo for their business, it is quite possible that someone, somewhere is developing a similar name or logo, or may already have done so, as the Register of trade marks continues to grow exponentially, with new marks well exceeding the ones that get removed or expire.

 

As Ben says, “Unaware of this, you or your agency could take your brand all the way to its finished state at much expense - only to be ‘gazumped’ by someone who has already registered the same or a similar brand. That was the case with a person I knew whose agency developed a trademark for a client who then sought to register it in 17 countries where it proposed to do business.  In 16 of them, no problem.  But in the 17th someone had beaten them to the draw.  It was a major market – their number two prospect; denied entry to it, and not prepared to have a different brand in that one country, the client dropped the brand altogether.”

 

This was a salient lesson, but it could have turned out quite differently if the agency (or the client) had taken some simple steps to ensure the proposed brand could be used and registered in all the countries of interest to the client. New Zealand used to be relatively isolated from many markets and brand clashes weren’t such an issue, particularly if you traded in New Zealand and didn’t export.  But we’re a quite different economy now; we export more (and export more branded products) and many countries export here, so you have to be aware of whether a brand is going to clash with another one coming into New Zealand.

 

Ben continues, “The place to start is when your or your agency’s initial brainstorming has surfaced, say, six possible brand names. At that point you should arrange for both an on-line search for identical and similar trade names (what IP lawyers call a “common law” search), as well as a search of the Trade Marks Register for anything identical or similar that has been registered in New Zealand or in the overseas markets that will be important to you.” Ben then advocates a second, more complicated search, looking for any identical or similar goods whose logo might have a similar ‘get up’. Step three involves the branding ‘story’, and at this stage it is prudent to compare your story with what your competitors’ stories look and sound like.

 

As Ben says, “A search programme like this is simply good insurance: the cost of getting a small number of search reports done is small compared with the overall investment injected into a new brand in its fledgling years, even at the lower end of the scale. There’s no downside to doing it.  And there are plenty of salutary examples out there of costly branding oversights:  movie-streaming site Lightbox first wanted to be known as ShowmeTV – till Show TV and its joint venture Show Me objected, and Auckland City Council ran into problems a few years back when Triangle TV opposed their new logo on similarity grounds.”

For agencies this seems a no-brainer: such a set of checks should be built into the service model.

 

For more information about how James & Wells can help, visit the website at http://www.jaws.co.nz .