How can you choose & protect your brand name?

Naming your business or new product is hard. It’s the kind of thing where the best advice is “get two of your friends, a bottle of wine and brainstorm”. However, it’s also worth thinking about how to have a protectable name. Will you run into trouble with similar names? Will you be able to protect your brand from competitors?

To have a good, strong, protectable brand, follow these simple rules:

Choosing a name #1: To be registered, your trade mark must be “distinctive”

Distinctiveness means you can’t have the same name as someone else. Nor can it look or sound similar. Finally, it can’t be totally descriptive. When you register a trade mark, you pluck it out of the dictionary for others to use in relation to their goods or services. So, you can’t stop, for example, another New Zealand fruit company calling their product “New Zealand Apples”. or “New Zealand Green apples”.

In this way, your trade mark is different than a company name registration. A name with the Companies Office only has to be slightly different. A registered trade mark has to be “distinctive”. Good, strong brands are often made up, like Kodak®, Xerox®, Kit Kat®.

Tip: When starting out, you could use your name and a descriptive word to help customer’s associate your product with the name, e.g. Cadbury® chocolate or Kleenex® tissues.

Choosing a name #2: Search in the areas you will sell into

As with all types of IP, it is important to search before you decide on a name. There are two reasons:

  1. To make sure you’re not infringing on other people’s existing rights
  2. To make sure that you will be able to protect your rights in the market

Searching for NZ trade marks can easily be done at IPONZ, just don’t forget to look for phonetic equivalents and spelling alternatives too.

For international searching, a good place to start is the World Intellectual Property Office. Although there is no worldwide trade mark available, WIPO does have a searchable trademark database which covers a number of brands. More specific searches (per country) can be done on each country’s online databases. WIPO has a full list of these on its website.

If you find a name that is close to yours, it may mean it is time to choose a new name. Other times, similar registrations can be removed due to non-use, or registered in a different class of goods or services. It all depends on whether the mark is being used, how it is being used, and often how big the company is that is using it (you probably don’t want to come up against Coca Cola). Chose your battles wisely – changing a name is simple at the launch of a product, and may be easier than keeping a name that is close to a competitor’s.

Protecting your name #1: Register before you sell

In most countries, you can register your trade mark at any time, before or after use. However, it’s always a good idea to register before using in a particular market to avoid copycats nabbing your rights as soon as they see you sell one gadget. You can usually start by filing locally, and then file overseas trade mark applications as you start to sell products. It is a good idea to protect your business or product name as well as your logo. If you have broader protection for your name, you can change your logo in the future to an updated one and still be under the same registration.

New Zealand is now part of the Madrid Protocol, so you can file into over 90 countries using the IPONZ website at any time after filing your own application. There are some things to watch out for so it’s a good idea to get professional advice before filing internationally.

Tip: Most countries consider your registration invalid (due to non-use) if you don’t sell in a country within a certain time (3 or 5 years is usual). Avoid paying twice by filing close to the time you plan to enter into a market.

Protecting your name #2: Avoid genericism

Ever wondered why small businesses in the news always seem to be getting letters from big businesses about their names or their use of a character on the side of a kindy? This is for the same reason that in TV ads, you’ll hear the line “Band-Aid brand sticking plasters”.

If a brand name is continually used for goods or services that are not related to the company owning the trade mark, or becomes associated in the consumer’s mind with all products in a category (not just those associated with the company) it can lose its value as a “mark of trade” for a particular company. This means that another company can apply to remove its registration and anyone can use the name.

This can be terrible for your company, so vigilance is essential. This is why those letters are written to stop people using famous marks or characters in their (unrelated) own stores. However, always remember that every interaction with customers is an opportunity to build or ruin your brand. Great cease and desist letters are rare, but bad ones can be very bad PR – would you take on someone with 250,000 twitter followers?

In summary

Protecting a brand across multiple markets needs thought and strategy. Do your homework by searching and choosing a strong, distinctive and non descriptive name. Then, consider protecting it in the markets you intend to sell in. Branding can be part of the greatest value of your company, so protecting it early and getting good advice is important.