How to create a new brand (legally)
Updated: Sep 29, 2020
This post is about the legal issues you need to consider when selecting a new brand name and logo. This is primarily a question of trade mark law.
There are three main things to consider:
Does it meet the criteria for a trade mark?
Has anyone else registered it as a trade mark first?
Will it pose any problems for me in the future?
Trade marks must be distinctive and not generic descriptions of the products sold. As post-modern as a hat brand called HAT may be - you are very unlikely to be able to register HAT for hats or any similar products.
The trade mark you select must be new - if you select one which is already taken (e.g. PRADA) or a confusingly similar mark (e.g. PRADO), you will likely find that either the trade mark owner or the trade mark office will object to your attempt to register the trade mark.
If the earlier trade mark is in the same industry, it will be easier for them to successfully stop a registration but if the brand is particularly famous e.g. FACEBOOK or COCA COLA, they will likely be able to stop the same or a similar mark from being registered even for very different types of goods.
This means that it can be hard to select an appropriate name for a budding fashion business. A common solution in the fashion industry is to name the business after the founder e.g. KATE SPADE, ELIZABETH EMANUEL, KAREN MILLEN. This can simply defer the problem.
As each of the designers listed above discovered, when it came to sell their business, they could no longer trade under their name as they had sold the trade mark along with the business. This may be a risk you're willing to take in return for selling your business but it's important you understand the longer term risks from the beginning.
To find out more contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - firstname.lastname@example.org
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