Founded more than 115 years ago, law firm Adams & Adams has established itself as a trusted brand in the African legal landscape. While the firm is proud of its heritage, it remains committed to evolving as an enterprise, recognising the need to be forward-thinking and cultivating a brand that continues to resonate with its clients and stakeholders.
To reflect this position, Adams & Adams has embarked on a rebranding process, introducing a new slogan, 'Realise African Enterprise', and updating its logo, colours and other visual branding material.
As a prominent player in the intellectual property (IP), commercial, real estate and dispute resolution arenas, Adams & Adams has assisted multiple clients when they establish businesses, adopt a brand, or change a brand. The firm has also provided advice, including feasibility and risk assessment, and a clear strategy when it comes to refreshing clients' brand identity.
Now as the firm unveils its new branding, it finds itself in its clients' shoes and there is no better time to share its experience and the considerations to be taken into account when an enterprise takes this significant step.
Prioritising public perception
Rebranding can be daunting as members of the public do not always
respond positively to change. The recent rebranding of Twitter to
X, for example, came under scrutiny by the media and public.
Despite the backlash, Elon Musk's commitment to X seemed to
override public opinion.
Nevertheless, brand owners need to be pragmatic and strategic to ensure that the refreshed brand identity will be well perceived by the public. It should not convey a negative message or have a negative connotation in the country of interest, or in any of the languages spoken in the country of interest. More importantly, it should not copy or adopt a third party's brand and, in effect, infringe a third party's existing rights.
A brand is a trade mark
Choosing a new brand is not a simple exercise. Brands are trade
marks, which serve as a badge of origin for the product or service
and distinguish it from those of competitors. It is crucial to bear
in mind that trade marks should be registrable and, more
specifically, available for use.
At the time of rebranding, it is important to identify which elements of the rebranding material constitute the brand or a trade mark. Descriptive words or visual elements used in isolation or words or elements reasonably required for use or commonly used in the trade, are not regarded as a brand or trade mark. Examples of this are the words 'shop', 'bank', and 'store'.
Performing a clearance exercise
After finalising the new branding material, it is advisable to
conduct a clearance search. This specifically focuses on
registrability (whether the proposed brand is capable of
functioning as a trade mark and has no negative meaning or
connotation) and availability (whether any third party holds
earlier rights, which may act as obstacles to the use and
registration of the proposed brand). This is often referred to as a
'clearance exercise'. The clearance exercise is extremely
important, as it will indicate if there is a risk of infringement
on a third party's existing rights. The failure to conduct a
clearance exercise could have dire implications for an enterprise,
such as being forced to change the branding, which can be costly
from a reputational and a financial perspective.
Registering the brand
If the clearance exercise fails to reveal any obstacles from a
registrability and availability point of view, it is advisable to
file trade mark applications for the newly adopted brand and to use
the " symbol in relation to the brand. This symbol notifies
the public that the brand is a trade mark and acts as a deterrent
to potential infringers.
In the case of an amendment to an existing brand that has already been registered as a trade mark, the change to the brand can simply be recorded on the Register of Trade Marks, provided that it does not affect the identity of the brand.
In the South African context, trade mark registrations give brand owners statutory rights. This provides the brand owner with a monopoly to use that brand in relation to the product or service and to prevent competitors from using the same or a similar brand with the same or similar products.
A common misconception is that the registration of an entity name grants the directors or members of the entity statutory trade mark rights, which is not the case. The Companies' Register and the Register of Trade Marks are administered separately, and ideally, a company or enterprise should apply for and register a trade mark, which affords the proprietor statutory rights.
A brand owner should also consider registering the brand as a domain name to prevent 'cybersquatting', which takes place when a third party registers a brand as a domain name as a form of extortion to steal business or to attract online users to an unrelated site.
What about trade marks in other regions?
Trade mark protection is territorial and should an enterprise have
global interests, a clearance exercise will have to be conducted in
each territory of interest. Local clearance searches are also
valuable as they typically include a local perspective on the
registrability of the brand, as well as the consideration of the
existence of negative connotations in the specific local context or
language. It will also be necessary to file trade mark applications
in each country.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.