Trademark Clearance And Brand Development Decisions

Trademark availability and clearance checks are a vital part of the brand development process. Mona Asgari explains show to build a strong IP foundation for brand development from identifying IP assets to trademark clearance searching.

We recently discussed the importance of tracking and recording decisions relating to new brand development. Two key steps in the brand development process are identifying and protecting the related intellectual property (IP). This ensures a strong registered IP foundation for brand development, protection and enforcement.

Identifying the IP

Strong, reliable IP protection consists of several layers, covering various forms of IP.

Thinking beyond your main brand name is key. A trademark registration for your 'house mark' will protect you, but you should also consider logos, shapes, packaging, slogans and other distinguishing elements or combinations.

Think, for example, of a new car brand. The brand itself will need a trademark, but what about the logo on the car itself? What if you wish to license car repairs, finance, insurance or even merchandise if the brand attracts a loyal following? Does the website include any other logos, possibly registrable straplines, or could the cars themselves enjoy registered design rights?

You should also consider how to future-proof protection while avoiding 'bad faith' provisions, which exist in the UK, EU and several other key markets. Where could the brand be in five years' time? Another part of this consideration is whether any particular element(s) of the brand could change, or if it is a core and unmovable element of the brand's identity. This will determine what is searched for and what is protected under the trademark application's specification of goods and services.

Coupled with this is exploring, at least at high-level, whether your intended use is blocked in markets outside of your own. This knowledge is crucial before deciding on launching in several regional or internal markets.

Trademark clearance searching

Before finalising and launching your brand, conducting a trademark clearance (or availability) search is a critical and invaluable next step of brand development. Such formal searches can reveal if your house brand or other trademarks are available for use and/or registration in your chosen markets, identifying potential conflicts before further time and money is invested into building, protecting and launching the brand. The key take-home from such searches is to find out: Can you be injuncted? Should you avoid a trademark in certain jurisdiction(s), before attracting adverse publicity or (most importantly) being sued? These can be in-depth or high-level views, depending on the importance of a given country to your business.

TIP: Don't wait until your brand or product is final to check trademark availability. It is important to involve legal advisers as early as possible to ensure you have time to carry out searches and manage any obstacles those trademark searches identify. You may need to adapt your brand if the clearance search identifies an issue with your chosen name, logo or packaging design. By consulting with legal and IP teams before you finalise brands for launch, you can avoid the extra cost and delay of a rebrand or redesign.

Trademark clearance searches can also be valuable to assess whether it is indeed financially necessary to obtain a registration. It may be the search results indicate it might be possible, but the commercial value of doing so would be limited, and common law use may suffice for enforcement purposes for now. Trademark clearance searches, particularly in foreign jurisdictions, can also highlight if a trademark may have unintended meanings or associations. This can be a not-too-uncommon surprise for brands.

Once a trademark clearance search has been carried out, you can make an informed and risk-mitigated decision as to whether to launch, or if any steps or modifications are required to mitigate or avoid conflict