Business Law & Compliance

Legal view: Dos and don’ts of rebranding

4 min read

23 July 2014

Any business considering a rebranding initiative (or for that matter, an initial branding) should make sure that they follow some basic legal steps.

Here are a few pointers:

Understand the difference between copyright and trademarks

The first point to make is that a brand will usually be covered by more than one intellectual property right. For example, copyright is likely to apply to graphic elements of the branding, while the word or name itself can be protected as a trademark. The logo, however, may be protected by both trademark and copyright. 

Remember that copyright allows the owner to prevent content theft, but does not necessarily prevent someone else from using confusingly similar branding. To avoid confusion in the marketplace, businesses may be able to secure registered trademarks which grant rights to prevent others from using similar branding, design or get-up.

Agree with designers/brand consultancy who owns the copyright

Many businesses will use external graphic designers, brand consultancies and other experts as part of the rebranding process, so it is critical to ensure that all intellectual property created by external designers or contractors is owned by the business which is commissioning the work. 

If this is not specifically agreed, in writing, then copyright will be owned by the consultant or designer, not the business who is paying for the work. 

The business will have a licence to use the copyright but only for the specific purposes intended at the time. This could be problematic if the business plans to expand the branding into other areas. 

Apply for a registered trademark and check for earlier marks

Most businesses, especially SMEs, are overly reliant on company names and domain names in order to protect a brand. Unfortunately neither will grant exclusivity to a business for a given brand. 

A registered trademark, on the other hand, will grant its owner brand exclusivity for specific goods and services. Trademarks are country-specific, although there is a European trademark which covers all 28 countries of the EU. 

Registered trademarks have other advantages, for instance you can prevent people from registration of domain names which seek to infringe on your trademark. You should also make sure to check whether there are any earlier registered trademarks or brands in use which are confusingly similar to your proposed new branding. The owners of the earlier marks may be able to prevent you from using your new brand and it is nearly always much cheaper to change a brand before it has launched. 

Include copyright notices

As discussed above, some elements of a brand are protected by copyright. Copyright cannot be registered but it is useful to include a copyright notice © on key materials incorporating your branding, especially websites.

If you are a business which trades principally through your website then your website terms of use should also contain clauses asserting proprietary rights in relation to intellectual property.

Move quickly if you discover infringement

Finally, while it is sensible to take steps to protect your brand, there may be occasions where it needs to be enforced. Sometimes a polite letter or email sent early enough can prevent a more expensive legal process but in some cases you may need to send a more formal cease and desist letter. 

The most important advice where infringement is discovered is to act quickly, as branding disputes become more complicated and expensive the longer they are left unresolved.

Guy Wilmot is a Partner in the Corporate and Commercial Team at Russell-Cooke LLP.