A brand with a new look 

A brand typically has its look reviewed every few years. Does it still convey the right message? Or does it need to be modernised? Some brands re-invent themselves entirely (perhaps the Formula 1 logo is a good example) which might cause a stir amongst its audience, others do it subtly, by updating its font and, as it seems to be the trend, going down the minimalist design route. Either way, if the brand stretches across different territories in the world, there is a legal team somewhere tasked with a trade mark ‘filing program’. 

Availability searches

Notably if the new look of the brand contains new visual elements those are worth searching across all of the relevant markets and their trade mark registers. This ensures they are free to use, by foreseeing and managing any legal or commercial risks that may be associated with the new elements. If the new look retains all its original assets with only a slight difference, a search might not be needed in those territories where the brand is already sold or registered as a trade mark (as the rights over the brand are already established).

Often a fresh look is accompanied by a new marketing campaign that either re-uses existing brand communication, or comes up with new material like a new slogan to embrace the new look with. A brand new slogan would require two considerations: (1) can it be used by the business commercially given what is already used by other traders, and (2) can it be register by the business as a trade mark. The first point is determined by conducting the earlier mentioned trade mark availability search. Each country would need its own search.

The second question consideration touches on the idea that promotional slogans can, and often tend to be, descriptive of the goods they refer to. If the slogan is not distinctive in that it is a statement too generic to function as a trade mark e.g. a statement that should be free for all traders in the field to use, then a trade mark application for it would likely be refused. For example, compare ‘Drink Coffee with Your Fellow’ and ‘Coffee Away Fellows’ as slogans for a coffee shop. The latter has a good shot as a trade mark registration because it does not have an obvious and descriptive meaning, while the former lacks sufficient distinctiveness. 

A slogan worth registering

Once established is that there are no obstacles by others, whether it is worth registering the slogan as a trade mark even if it is distinctive, depends on how-long the slogan is intended to be used on market for. If its use is only limited to a campaign that will most likely last between 3-6 months, even where only up to 12 months, a TM registration may not be justifiable. A trade mark application process, depending on the country, can range from 4 months to 2 years (and in certain territories it can take even longer). So if the slogan is used on short period of time, there is a good chance that by the time the trade mark matures to registration, it will no longer be of interest to the business. In some territories proof of use is also required – in the US, proof of current use of the mark has to be submitted if the application is to proceed to registration. 

On the flip side, a key argument for filing a TM application for a mark that will not stay too long on the market is the magnitude of the campaign and the need to minimize the risk of someone else registering or starting to use the mark before the campaign is to be launched – to avoid that case scenario it would be sensible to register the mark. If preparations for the launch of the campaign need to be confidential, perhaps useful can be an application in a ‘submarine’ country where the trade mark filing will not be published for others to see, at least until the mark is officially published (for others to oppose). This would preserve the rights over the mark in any other given country of interest for launch (yet only for the following six months). 

Notably if a slogan is descriptive it could be interpreted as a claim concerning the features of a product: ‘it has all-natural ingredients’; ‘helps for better digestions’; ‘it is organically sourced’. All of these claims would need to be backed-up by the actual ingredients (if relating to foods) in order to meet regulatory standards for the particular type of goods. Territories like the US may require that if a term is descriptive (even where it accurately represents the nature of the goods) it also needs to be unambiguously descriptive e.g. it is the ordinary, grammatically conventional way of making the statement. Then in a market like China, if the slogan, or any other mark, is to appear on the packaging of goods, it must be registered as a TM or it must be so obviously descriptive so not to merit a registration.

Local language versions

If a new campaign concerns more than only English speaking territories, the business may use a localised version of their chosen new slogan, or sub-brand. This is an important consideration because to maintain a TM registration valid, the registration needs to be for the mark as used on the market, in the language in which it is used. 

A local language version of a given mark merits its own separate (from the English version) availability search. Arguably, for EU territories the protection granted to a mark could extend to its local language translation, a stemming benefit of having an EU harmonized trade mark system. This principle is however down to interpretation and judged on a case-by-case basis. So having a valid TM registration rather than a broadly interpreted principle to rely on would be a safer and, for further down-the-line, less costly option. 

It is also important to be clear how the mark will be used in the local market, on TV commercial, on social media or even on the packaging of the product, as the latter is costly to re-brand so more consideration must be afforded to risks to take as to use and registration of the mark. 

Key Takeaways

The key takeaways are not to skip trade mark availability searches before committing to launch, and to consider carefully what needs to be filed and where based on the magnitude of the campaign or re-brand, looking at: (i) longevity of the mark on the market; (ii) form of use (a local language version), and (iii) what will the mark be used on (promotional materials vs on packaging).