B is for Brand

Originally, a brand was a mark burnt into the hide of an animal – or even a slave – to identify its owner. Now it’s come to mean a sign applied to goods to show who made or supplied them – although practitioners of the dark arts of marketing understand the concept to mean a great deal more than just that.

In a recent English case, L’Oréal SA v Bellure NV, a brand was defined as “[A] collection of intangible values as perceived by a consumer which are attributed to a name, symbol or design used to identify a product or group of products or services”.

The law doesn’t protect brands in the marketer’s sense, but – as it often does it provides a patchwork of rights that give protection to some aspects of brands. Signs – names, symbols and designs, and sometimes a lot more – that indicate who makes goods or performs services are known to lawyers as trade marks, and trade marks enjoy a lot of legal protection – perhaps, some might say, too much.

Whether trade marks and brands are the same thing or not, to a lawyer the trade mark is the important aspect of the brand that can be protected by law. Trade marks are best protected by registration, although the ancient law of passing off will protect elements of your business’s identity if someone uses something similar to it. Passing off covers more than just registrable trade marks, too, extending to the appearance of articles like the Henry vacuum cleaner and unauthorised celebrity endorsements. But passing off litigation is prohibitively expensive, so unless you’ve got bottomless pockets it’s better to invest modestly in registering trade marks.

The biggest brands in the world – Coca Cola, IBM, Microsoft, Google, and the like – are protected by vast portfolios of trade mark registrations. The Coca Cola brand involves more than one identifier: there’s the name, of course, but there’s also the distinctive curly script and the soubriquet “Coke”, as well as the shape of the bottle, the colour of the can and slogans (“It’s the Real Thing” – I seem to be dating myself here).

It goes much further, too – in The Coca Cola Company’s case there’s also the recipe, plus a whole raft of nebulous values that consumers attach to the brand and which make them keep buying it (or, in a minority of cases, perhaps, not), tied up with notions of quality, cultural references, sponsorship, corporate social responsibility and much else. Other brands might involve the appearance of the goods, or parts of them – cars sell largely on their shape, of course – and even the way they work (the door of a Lamborghini Murciélago) or sound (the engine beat of a Harley-Davidson motor bike). These days there might be several trade marks protecting just those features, too. And all those trade marks will be registered all over the world.

You don’t necessarily need to pay for that much trade mark protection, but you certainly ought to be thinking carefully about what aspects of your brand can be protected in this way. It might just be the name of your business, or perhaps its products, but there might be a lot more too. What would happen to your business if a competitor started using a similar name?

And what if you found that someone could stop you using the name you’ve established in the marketplace? The flip-side of trade mark protection is, well, that someone else might have it. There are countless examples of people setting up businesses, investing significantly in them, only to find that the brand they needed wasn’t free for them to use. As well as getting your trade marks registered,  make sure you check that no-one got there first – whether by registering them, or just by using them. Don’t imagine that having a company name or domain name will be much help – trade marks are much stronger. Your lawyer will be able to get a search carried out, which you should do as soon as you have an idea for a brand, but beware – it’s common these days for brand owners to grab trade mark registrations for all the goods and services they can, not just those for which they are actually using the trade mark. That might deplete the stock of trade marks available to a new entrant, perhaps even foreclose the market – and the last thing a start-up business needs is a trade mark spat with a multinational behemoth.

Even if your chosen name or logo is available to use, it might not be easy to protect. Trade marks must be distinctive of the source of the goods or services – so if they are descriptive, they aren’t going to work and will be hard to register, if they can be registered at all. WINDOWS works well as a trade mark now, but when it was newly-minted it referred rather too closely to the way the program worked. A marketing person’s first instinct might well be to coin a product name that tells customers something about the product – but that could make it impossible to protect.

So don’t assume that your neat-looking idea for a brand is your guarantee of success: there’s a lot of homework to do, it will take time (perhaps more than you want), and it can mean that you end up with a commercial identity very different from the one you initially had in mind. But at east it will be your identity!

Peter Groves is the author of the Dictionary of Intellectual Property (rrp. £70) published on February 28, 2011 by Edward Elgar Publishing.

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