Tag Archives: Brands and Trademarks

Eight points to consider before you name your product or service

Brand Name – 8 Points To Consider Before You Name Your Product Or Service

Eight points to consider before you name your product or serviceAlthough household name brands invariably have distinctive visual identities – for example, Coca-Cola’s bottle shape, and Nike’s swoosh – the primary sign through which any brand is identified is its name.

It is worth thinking about your name carefully given that it is what you will be using to answer the phone, and to promote and advertise your business. It’s also what your customers will use to recommend your product or service.

This quote, from Oscar Wilde’s The Importance of Being Earnest, demonstrates just how much faith can be placed in a name alone.

“It had always been a girlish dream of mine to love someone whose name was Ernest. There is something in that name that seems to inspire absolute confidence.”

Undoubtedly, a name can evoke certain reactions and emotional responses. It can give customers an idea or feeling about your business from the outset, before they have even experienced working with you. Therefore, choosing a name for your brand is an important task that should not be taken lightly. Here are 8 points to bear in mind:

1. Choose an appropriate name

The name you decide to brand your company under should be well thought-out in order to ensure you pick the name that suits what your product or service is trying to do. When choosing a name, think: what is unique about the brand I am trying to create? Who is my target audience? How do I want to make people feel?

2. Find a name that people will easily associate with your product or service

The big household names that have built such solid reputations have generally based their brand on something they believe suits that which they are trying to create.

Talking about Google’s name, co-founder Page stated in Business Week, “We spent a lot of time on the name … because we figured that it would be important for people to be able to remember it” Google’s search engine was originally called BackRub, but the company decided the name was unsuitable, and Google was then settled on. The name originated as a play on the word ‘googol’, a mathematical term for the number 1.0 × 10100, to reflect the search engine’s ability to sort through a seemingly infinite amount of information on the web.

‘Apple’ is similarly not just a name given to the tech-giant without any forethought. Apple is currently the world’s most valued brand, and is known for its sleek designs and good-quality products and the very name of the company helps to create this image. In Jobs’ biography, written by Walter Isaacson, he explained that he was coming back from an apple orchard when he thought the name sounded ‘fun, spirited, and non-intimidating’. Steve Wozniak, Apple’s co-founder, in his book iWoz: Computer Geek to Cult Icon explained that “We both tried to come up with technical-sounding names, but we couldn’t think of any good ones. Apple was so much better, better than any other name we could think of”. And like the name itself, the company and the brand became much more innovative and forward-thinking than previous technical companies.

3. Make sure your name translates into other markets

Not only should a name accurately reflect your business, but it must also be something that works in different countries as well. There are many examples of company owners who have not realised that their chosen name in one country might have a completely different meaning in the next. For example, Chevrolet launched its Chevy Nova car in Spain under the same name, which translates as ‘Does not go’. American Airlines advertised the luxurious aspect of flying business class to its Mexican customers by focusing on the leather seats, using the slogan ‘Fly in Leather’, which translates as ‘Vuelo en Cuero’ in Spanish. The Spanish dictionary neglected to inform American Airlines that the phrase ‘en cuero’ is a slang term for ‘in the nude’. Unsurprisingly, there was little demand for mile-high naturism among Mexico’s business flyers. The beer-maker Coors discovered that its slogan, ‘Turn it loose’, translated into Spanish as ‘Suffer from diarrhoea’.

4. Get legal title to your brand by registering  your trademark

The name does much more than carry the goodwill of the brand.  Some people equate trademarks with goodwill, but they’re not the same thing.  Goodwill is a term used by accountants to refer to the customer base a business develops.

Trademarks can protect goodwill, but they do far more than that.  The reason you need a trademark isn’t to protect your goodwill, which is protected anyway, but because a trademark is a tool to capture the economic potential in your business.  When you register a trademark you get legal title to your name so you are better placed to control use of the name by third parties. You can then monetise the business by granting licences, and extend the brand to other goods and services if you are successful.

5. Be aware of the value an appropriate trademark  creates

As the business develops and expands, so its name will increase in value, and evoke a reaction in its target consumer which then enables the brand to charge a premium for its product or service. For example, people are willing to pay significantly more for an item of clothing made by Louis Vuitton than they would pay for a similar-looking item made by an unknown designer. The value of one item of clothing over the other is purely down to the name and so the brand is what adds that extra value.

6. Bear in mind that the name could be a most valuable asset, but only if you choose well

Also, when a company is being sold it is the brand, as well as the goodwill associated with the name, that the purchaser is buying into. Therefore, it is important to begin any project by realising that the name you choose for it is potentially one of the most valuable assets the business will generate if it succeeds. It should be treated as such and appropriately protected.

7. If the name you like is not legally available find another

A name must be protected. Given that the value of a brand lies in its name, it’s no good to just focus on coming up with a catchy, memorable name if this name is not protected.  If, once you have conceived a name and have gone on to have designs and branding produced, someone claims you are infringing on their trademark, nobody is going to care that the name is ‘just perfect’ for you. For a name to really be perfect for your business, it must be legally available, and hence be suitable from both a marketing and a legal perspective.

8. Do your research before your start using a name

Apple v. Apple Corps – Although Jobs decided that Apple was the most suitable name for his company and that it would work well from a marketing perspective, the name has proved less suitable from a legal perspective. Apple Inc was locked into legal disputes from 1978 to 2006 over the name with Apple Corps, the record company owned by the Beatles.

Once the initial dispute was settled by agreeing that Apple could use the name on the basis that it would not expand into the music industry, there were problems on several subsequent occasions when Apple’s business expanded to cover the iTunes store and the iPod product. The dispute caused several losses for Apple, first preventing it from launching a computer with recording software installed on it, and then leading to the Beatles’ music initially not appearing on the iTunes music store.

The dispute has now been resolved between the two companies, with Apple buying the rights to use the name in all industry sectors and allowing Apple Corps a licence to the name. However, this resolution should not be seen as something most businesses could achieve. The process proved extremely costly and time-consuming. Such problems would have forced less well-resourced companies to rebrand. This is why the legal aspect of names should never be lost sight of.

Conclusion

Names are an important way in which the law protects a business against various unfair practices that tend to arise when a business succeeds. many So, make sure the name you have invested so much time and effort in creating and around which you have built your good reputation, is one that can remain exclusively yours.

Protect your business against copying

How To Protect Your Business Against Inevitable Copying?

Protect your business against copyingCopying is so rife in business that if you have a profitable niche or concept, it would be surprising if competitors didn’t sooner or later try to capture some of your market share.

They will borrow freely from other businesses that they believe have identified lucrative market opportunities. If they cross the bounds of acceptable, legitimate competition and engage in unethical practices, how will the law help you?

What is unacceptable copying?

This automatically raises the question what is acceptable and unacceptable copying? What legal protections might a business use in such situations?

For example, Airbnb and Groupon came up with novel business concepts which were quickly copied. An example of how quickly competitors copy a new business idea is apparent when you consider the numerous Airbnb competitors that have sprung up, such as Gogobot, Atraveo and SunnyRentals using similar business models to Airbnb

Whether the business model is copied in the same country or elsewhere, there is nothing that can be done to prevent others copying what is merely a good idea.

Tropicalisation

Indeed, ‘tropicalisation’ is a term which refers to the practice of investing in start-ups which take an established business model and adapt it to an emerging market. Examples include Peixe Urbano a Brazilian clone of Groupon which is arguably even more successful than the original, Weibo the Chinese Twitter-like microblogging platform, RenRen the Chinese version of Facebook, Baidu the Chinese take on Google and Alibaba a Chinese copy of eBay. Alibaba is now one of the most successful online businesses.

Investors are keen on these projects as the business models are proven already, and from an IP perspective there are few legal barriers to this tactic, as the law does not protect bare business models, whether through patents, copyright or otherwise.

That said, a patent can protect the technology which is central to a product, copyright can protect the expression of a concept, for example training and marketing materials, videos, source code and other key materials like your business plan itself.  Trademarks protect your business and product names, and designs protects aesthetic aspects of your products, software or website.

Securing rights over your name is how you protect the underlying business

So, although there is little you can do to prevent a competitor from creating a new business based on your model it would be a mistake to ignore IP rights as mentioned in my blog post Intellectual Property Rights – Why Ignoring Them Could Be Disastrous For UK Business.  Your business name provides an important opportunity to prevent others from taking unfair advantage of your efforts, and trading on the back of your success.

So there are ways in which you can put a stop to some unfair competitive practices by properly protecting your business. When businesses copy others they tend to adopt a similar name in order to attract business towards themselves.

Scrabulous

When Scrabulous set up its online game it wanted to suggest to the market that this was a similar game to Scrabble, so it used a name suggestive of Scrabble. Because trademark law helps you to prevent piggy backing off the success of your brand, Scrabble was able to get Facebook to pull the Scrabulous App off Facebook even though it was extremely popular.

There may be other practices businesses engage in, such as stealing competitive information, taking your staff and using your confidential information, or even stealing your database.   In all such cases you are likely to have an uphill climb during litigation unless you have taken steps to have the right contracts in place and to establish your rights to the maximum extent possible, so that it would be easy to prove your case.

Competition

As Seth Godin says of competition in Purple Cow (Penguin Books, 2003): “Why do birds fly in formation? Because the birds that follow the leader have an easier flight. The leader breaks the wind resistance, and the following birds can fly far more efficiently”.

So if you demonstrate a breakthrough idea, and others can see that it’s a good one, they will copy it. They will benefit from the fact that you’ve shown them the way forward to possibly implement the idea even better than you did.

The way to have strong IP protection in your business is to secure as many of IP rights as you can afford to secure because each IP right protects you in subtly different ways and situations. However, there is a lot more to it than just IP registrations. Often it will involve having the right employment and confidentiality agreements in place too, and having effective terms of business.

If you’re worried about protecting your IP, why not start by taking our 3 minute test.

Internationalisation of IP

International Business & Globalisation Of IP

International Business & Globalisation Of IPNowadays many businesses are global from day one.

Even though you may just operate out of a bedroom in your home, when you sell online, you are potentially doing business in every country worldwide. That’s because the Internet is borderless.

In contrast, IP laws are territorial. This means your rights only cover the country in which you register or otherwise acquire rights.

So, it’s essential for an online business to adopt a strategic approach to their domains and trademarks.

Resources are bound to be limited because when you start a company it’s difficult to know how successful you’ll be. It makes sense to keep costs down and overheads low.

The Name

Names are an important way in which the law protects a business, so make sure you choose a good one. The name is one of the most valuable IP assets your business has if it is successful, and the choice you make impacts upon the value of the business.

It’s essential not only to find out whether your proposed name is available to use in all your intended markets, but also whether the name is legally effective (that is, whether it can function as a trademark).

The principle of territoriality means that if you register a UK trademark you simply get a right to use the mark in the UK.  If someone in another country uses the same name for a similar business you would not be within your rights to use your brand in their country.

The current international trademark system is designed for a very different business environment, one that’s more suited to the pockets of well-resourced, well-funded multinationals that gradually move into new markets. Nevertheless, if you want to be able to protect your business, using the same brand worldwide, then checking the trademark registers is essential. Then you should consider your strategic approach to registering a trademark, in other countries too.

What you don’t want is to have a local business use your brand to block you from selling to their local market by using their trademark rights against you.

International priority protection

Once you have checked out a name, the next step is to file a trademark. The base application would be filed in the country in which you are based. For UK ecommerce businesses this will typically be an EU registration, although some online businesses prefer to just file a UK trademark.

The way international protection of IP works is that it is possible to secure protection in other countries under the international registration system known as the Madrid system.

You get a priority right for up to six months from the date of the base application. This gives you up to six months to extend your trademark protection to other countries.

Although you can then extend protection to any Madrid Protocol country using a single application, the costs can be high as the official fees are significant. We have a calculator on our website which can give you an idea of the official fees.

A fictional case that illustrates the importance of filing trademark applications in other countries as your business begins to expand is outlined below.

Raxisia

This ecommerce site had been selling its products in the United States for more than 8 years without having registered a trademark there. A competitor then set up a bricks and mortar shop in the United States selling similar products and also called itself Raxisia.

The original Raxisia company was alerted to this when publicity surrounding the new shop was spotted by one of its existing customers who emailed to congratulate it on its new venture in California.

Raxisia was lucky that it had customers in the United States. So, it was able to prevent the local shop from trading off its goodwill. Using lawyers they filed a trademark application in the United States and after much correspondence, the other party decided to rebrand. The legal costs were hefty because among other things the lawyers had to contact the numerous customers that the company had in the United States and in California.

The company could have avoided the hefty legal fees if it had registered its mark in the United States as soon as it began selling its products there.

Domains

Once you’ve settled on a name, a related consideration is what domains to register and when to buy further domains. For example, a UK ecommerce business might typically start by registering a co.uk, .com, and .net. These will be relatively inexpensive. But should you register other CCTLDs – Country Code Top Level Domains? If say France is a market to which you will sell, should you also register a ‘.fr’ name, and if China is important to you should you buy a ‘.cn’ name, too?

As your business grows and you get customers in other countries you’ll need to consider whether to buy your name in other country codes.

There are more than 250 country code domain names. It would be expensive to buy your name in all of them. The strategic considerations will differ for every business. Typically, many wait until their business starts to take off before looking at more extensive domain registrations. The key is always to look at where you are doing business or might be doing business soon.

So, the priority should be to register in those markets in which you have customers or in which you think you will be selling in the near future.

Unlike the GTLDs — generic top-level domain names, – .com, .net, .org – where there’s a lot of uniformity, the rules for country codes are different in every country, as are the prices. Sometimes you need a trademark to get a registration. Other times you need a local business registration. And in some cases you may need a local presence or a local address. So, the CCTLDs usually cost more.

Cybersquatting

Some of the considerations with domains is what happens if someone in another country steals your name and registers your domain with the local CCTLD. This is called cybersquatting. What can you do about it?

It may be difficult to block another person from using your name in another country. So the strategy for registering domains needs to bear this in mind, and be combined with your trademark registration strategy.

You will need access to advice as to the remedies available for the individual CCTLDs. Sometimes your rights may depend on whether or not the name you are using is trademarked. It will also depend on the country’s dispute resolution policies. Each country has different dispute policies, and different procedures for granting relief.

For example, in the UK the dispute resolution body that deals with co.uk issues is Nominet. Nominet will typically consider whether you have trademark rights (which does not necessarily entail having a registered trademark), and whether the registration or the use of the domain name is in “bad faith”. That is, whether the person who registered it likely did it in order to resell it to the person who has the name or in order to divert revenue to themselves for economic gain.

The first step in these administrative style dispute procedures is to file a complaint. There is no court involved as it’s an arbitration.  Once you’ve complained, the other party must answer the complaint and the arbiter then decides whether or not the person who you have complained against should be able to keep the domain name or should release the name into your ownership. The decision is purely based on the pleadings. You don’t have a day in court.

For other domains, such as .com the registry designate groups such as the World Intellectual Property Organization or WIPO or the National Arbitration Forum or other groups to decide the dispute.

These arbitration groups have a lot of experience and history in handling domain disputes.

So in conclusion, it’s essential to get advice, and to set a strategy to determine where you register domains.  This will partly be dependent on the rules of the different countries. For example, if a local business registration is needed in order to register, you might decide the risk of cybersquatting is low risk, and perhaps just register a trademark.

Once you’ve taken all the issues on board you will end up with a priority list based on the intrinsic risks.

Temporary name?

As names involve legal complexity and potential costs it makes sense to have a strategy for the early days if you want to keep your expenses down.

One possibility is to choose a temporary, descriptive name that informs the market what your business does.

This can be useful in the early days when nobody knows you exist and could later become your tagline when you are ready to name the business.

Unless you already have a good understanding of your market and the gap you will fill in it, it could save precious resources in the early days to avoid the expense of naming, design and branding. You will be much better placed to differentiate your business and brand it once you’ve been in business for a while.

JeSuisCharlie Creator

#JeSuisCharlie Creator: Phrase Cannot Be A Trademark

JeSuisCharlie CreatorConcerns have been raised over attempts to monopolise a phrase made famous in the wake of an international tragedy.

Jaochim Ronson, the creator of the image portraying the words ‘Je Suis Charlie’, has voiced his concerns that commercial interest in the phrase could ruin the sentiment behind it. To Ronson, ‘I am free, I am not afraid’ is the true meaning behind the words, his interpretation of the phrase after first hearing of the Charlie Hebdo attacks in France.

The #JeSuisCharlie hashtag was considered to be one of the most retweeted news-related hashtags of all time, with others taking their own view of what the phrase means to them.

Soon after, reports suggested that there were over 50 separate attempts to register the phrase as a trademark in France alone. These attempts have resulted in Ronson seeking legal advice to ensure the phrase never becomes legally owned.

You can read more on Ronson’s opinions over the attempts to register ‘Je Suis Charlie’ in the BBC blog, #JeSuisCharlie creator: Phrase cannot be a trademark.

Protection of television formats - The Great British Bake Off

Protection Of Television Formats – The Great British Bake Off

Protection of television formats - The Great British Bake OffThe Great British Bake Off isn’t just clever when it comes to cakes. By protecting its IP, it has been able to secure a fortune in licensing.

The other day I met someone who told me that she had been advised that it is not possible “to have copyright in an idea”. As a result, she had given up trying to turn her idea for a programme into reality as she would not be able to secure legal protection over it.

What is protectable

It strikes me that two separate issues are being mixed up here: protection of an idea and protection of a concept that turns into something tangible.

As a general rule ideas cannot be protected other than through the law of confidentiality. So, if a party to whom you wish to disclose an idea is unwilling to sign a confidentiality agreement, (or NDA as it’s often called), there will be little you can do if that party runs off with your idea.

In contrast, once a concept is turned into something tangible like a television programme it is possible to obtain powerful protection for it, in the same way as businesses can.

The intellectual property that affords powerful protection

Protection relies first of all on having a distinctive name. Programmes such as Hotel Insprector are poorly named, as they are too descriptive. It is not possible to have trade mark rights over such names. Even if it had a trade marked name, it would be impossible to stop others putting on separate shows using the concept of an expert visiting and suggesting improvements to failing businesses. So, the Hotel Inspector has led to others running with similar concepts and setting up programmes such as Restaurant Inspector and Business Inspector.

The same goes for business formats such as Air B&B; you can’t stop others copying the concept and setting up competing businesses.  But, if you have a distinctive name, at least you will be memorable and can stop competitors using the same or even similar names.

How the Great British Bake Off is protected

An example of a television programme that has protected its intellectual property is the The Great British Bake Off. The show’s producers, Love Productions, protected their IP and have reaped the rewards through a lucrative licensing deal worth millions of pounds.

This was the subject of a recent Guardian article, Great British Bake Off: when iced buns meet intellectual property.

Interestingly, as soon as the programme was launched in 2010, the company filed its trade mark covering a number of classes. Some of them were poorly chosen, but this is unsurprising given that the company did its own trade marking.

Once they were more confident of the progamme’s future success they appointed representatives to file in 8 classes to protect spin offs and merchandise. For example, the company registered in class 9 to protect computer games and other software, in class 16 for various stationery and paper products and in class 28 for toys.

To support its licensing deals, these registrations would have been internationalised in order to extend protection to other countries such as the USA.

Other intellectual property

As well as the Bake Off brand, the company is likely to be licensing its know-how for creating the show and making it a success. Licensees would be given the benefit of its experience in setting tasks and judging completion of the contestants’ tasks. The licensing deal would be likely to include copyright in the programme’s theme tune and its list of cooking tasks.The more intellectual property rights that can be packaged up together, the stronger the protection for the owners of the licence.

In conclusion, if you want to monetise your successful concepts, be they business formats such as Zumba, or television formats such as the Great British Bake Off, it is essential to put in place the right protections. That way you have the full range intellectual property protection to underpin your licensing deals.

Why did Azrights rebrand

Rebranding: When and why should you consider it?

RebrandingThis summer we rebranded Azrights by changing our logo, tagline and brand colours.

In a separate blog Rebranding: Legal issues you can’t afford to ignore I explained the steps we have taken to protect our new brand.

The reasons for rebranding Azrights go back a few years, and stem from the many books I’ve read since founding the firm. For example, Differentiate or Die says specialisation in a subject is a sufficient differentiator. So, in our case, this means our niche status as intellectual property lawyers differentiates us from other law firms. However, I wanted to also distinguish us from other IP law firms, and from large law firms offering intellectual property services.

What rebranding involves

As for any business undergoing rebranding, we thought about who we are, what we do, how we do it, for whom we do it, and what it is like to deal with us. That helped articulate our point of difference.

As I looked around and read other law firm websites it struck me that many of them were saying very similar things. They were invariably pointing to their distinguished history, emphasizing the benefits of their size (big or small), their lawyers’ city law firm backgrounds, and superior legal skills in virtually every practice area. A common statement was how efficient, and service-oriented they were.

After much introspection spanning over a number of years, we finally decided how to separate ourselves from the many others that provide similar legal services.

This has been a useful exercise which ultimately makes it easier for customers to decide which law firm to work with.

Clarity

Even before I founded Azrights, communicating clearly was an important imperative. I was struck by how difficult it could be to understand letters from external lawyers when I was an in house lawyer at Reuters. My role involved translating technical legalese into language the business people would understand.

Intellectual property law is particularly complex for outsiders, and so from the day I founded Azrights, I was committed to making IP easy to access. However, I didn’t appreciate that making the law easy could be a sufficient differentiator. Now that we have adopted this brand value, we are going to live and breathe this commitment. It is not just an empty statement.

We have always published a lot of information on our website, blogs, and in my book. And we have always been committed to using plain English.  However, since our rebranding, I have trawled our website and reviewed most of our services pages myself in order to ensure complex issues are explained in simple terms. I will continue to review our pages and emails to improve their readability.

The more we can strip away unnecessary complexity and provide transparent pricing, the closer we will be to our ideal: making access to global IP easy.

A to Z of IP Rights

We also realised that one way in which we differ from other IP law firms is in the work we do.  From the beginning I was keen to provide clients with the A to Z of IP rights services, hence our name. I felt it was undesirable to have so many different professional firms offering aspects of IP services. In theory, clients would go one provider to protect their name or innovation, another for a copyright or contractual issue, and yet another for litigation. However, in such a scenario there is a real risk of important legal issues falling between the cracks, and there being serious gaps in advice for SMEs. The system involving going to several different types of firm only really works for big household name brands. It is especially unsuited to the new digital environment where a more holistic approach to the legal issues is essential.

I was determined to provide a comprehensive service, and went about doing that by finding a network of experts with the necessary skills so we could provide a full range of IP services. To this day we have professionals who we involve when a client needs particular services, such as patents, data protection, complex litigation and so on.  Our own core team on the other hand focus on trademarks, and copyright and advising on internet law and IT issues. I wrote about these topics in my book, Legally Branded.

I also realised that it is the digital nature of our work that holds the clue to our point of difference. Quite a sizeable number of our clients are businesses setting up online. We do a lot of IT, internet and social media related contracts and dispute resolution work as well as IP registrations for them.

Lawyers who understand the digital world

The fact that we are doing the work we do, comes down to how the digital world is becoming centrally relevant to all businesses. Nowadays everyone needs IP law. It is no longer just those businesses operating in the creative sector or who have a portfolio of brands who need to concern themselves with IP.

For example, the risk of encroaching on other people’s rights is far greater nowadays, because a search on the internet may immediately reveal whether a distinctive name or image you are using belongs to someone else. In an overcrowded world of businesses, it is also becomes more important to register trademarks and other IP in order to protect your business against competitors.

Our clients need lawyers with a solid understanding of what it takes to successfully commission a website and software, to do online marketing, pick a name, and avoid infringing on the rights of others in various situations, including when engaging advertising or marketing help.

Given that our team has backgrounds in computer science, and IT, and I worked at Reuters for 5 years, handing IT/IP matters, another point of difference is the specialist nature of our IP skills. We understand the internet, and social media, and can add significant value.

Our logo

Over the years as we tried to understand our USP and communicate our difference through our logo, the logo became quite messy.  The bull and ‘Legally Branded’ tagline were added to explain our focus on trademarks and branding. We added the words ‘Internet, IP, Identity’ to articulate the digital nature of our work and in a bid to explain that as well as IP, we focused on identity matters.
Rebranding

The messy looking logo was detracting from our aim of making IP law clear and simple. So we chose to work with Marianne, a designer who pointed this out to me and emphasised the value that a new logo would bring.

I’m so pleased I listened to her and opted to work with her.

We now have a logo that reflects our brand values and the digital nature of our work, a tagline that distinguishes us from other IP law firms, and a logo and designs that clearly support our ideal of making IP easy.

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It’s taken 8 years to arrive at this clarity, and it will now be a lot easier to grow the business, and to fulfil our goal of making global IP easy to access and buy.

Take a look at our new branding on this website, in our newsletters (enter your email address in the sidebar to sign up), and also on our recently updated site dedicated to Trademark Registration.

Competitors’ Names in Adwords

Adwords Trademark Policy – Using Competitors’ Names In Adwords

Competitors’ Names in Adwords

In a past blog post, we reported an earlier decision regarding trademark infringement, M&S and Interflora. Here we discuss last week’s Court of Appeal decision to retry the dispute between M&S and Interflora, which means further uncertainty about whether you should bid on competitors’ trademarks when using Adwords.

In May 2013, the High Court ruled that M&S had infringed Interflora’s trademark by bidding on the word “Interflora” to trigger results for its own flower delivery service.  M&S appealed the decision.  Last week the Court of Appeal sent the case back to the High Court for retrial.

In making its decision in the case (Interflora v Marks and Spencer), the Court of Appeal said they doubted a significant proportion of consumers would mistakenly believe that M&S was part of Interflora’s network. However, as the court had not analysed all the relevant documents or seen the witnesses give evidence, rather than overrule the original verdict they said the case had to be reheard by the High Court.

Does using a competitors’ name in Adwords mean there’s trademark infringement?

Bidding on a competitor’s trademark does not in itself constitute a trademark infringement. The issue is whether the ad as a whole suggests a connection with a trademark owner. Would the so-called “reasonably well-informed and reasonably attentive Internet user” be confused into believing that the ad emanates from the trademark proprietor?

In the High Court decision in the M&S case in May 2013, the court thought that a significant proportion of consumers who searched for ‘Interflora’, and then clicked on M&S’s ads, believed that M&S’s flower delivery service was part of the Interflora network.

The decision of the Court of Appeal underlines the difficulty of determining whether or not bidding on a competitor’s keyword infringes their trademark. The answer depends on the facts of each case. Relevant factors are what the ad says, what page it leads to and the relationship between the parties.

Also crucial in practical terms is whether the trademark owner whose keywords you are bidding on has the resources to sue you.

The key message is that it is not risk free. Litigation is possible and may deter some people from bidding on competitors’ keywords.

Google’s policy on trademarks as keywords

Google’s policy is to allow bidding on trademark names, which means more revenue for Google. This is helped by the fact that the standard advice of online marketing experts is to bid on your own name in case someone else does.

Bidding on a competitor’s name, even without featuring their name in your ad, means your name will appear every time your competitor’s name is searched. (Note that stating your competitor’s name in an ad is disallowed by Google due to trademark infringement implications). What M&S did was to pay Google so they could use ‘Interflora’ as a keyword. M&S’s advertisements for its own flower delivery service then appeared on the search engine results page when consumers searched for Interflora’s services using the word ‘Interflora’.

But bidding on competitors’ terms is expensive because such ads don’t perform well under Google’s Adwords criteria. Unless you have your competitor’s name on your landing page (which M&S did not, and which is generally unwise due to the risk of trademark infringement), Google will penalise you for irrelevancy.  So your cost per click will be high, and it could have a negative account-wide impact on your Adwords campaigns too.

Nevertheless, the risk if a competitor gets there first is that their ads may have built up credibility with Google. As Adwords specialists Periscopix puts it in their blog post Should You Bid On Your Competitors’ Brand Terms?: ‘If they’ve had a clear run without any competition they’ll probably have racked up a good Click Through Rate and your bids will need to be higher to beat them’.

This seems to be saying that even if you subsequently bid on your own name, and even though your competitor’s website may not be as relevant as yours for your own brand name, the competitor’s ad may appear above yours.   

Although possibly a theoretical point, the issue has practical relevance for companies in industries such as the hospitality sector, as their hotel rooms or restaurant tables are sold through other sites as well as their own.

Industries that should definitely bid on their own names

For businesses in the hospitality sector, or similar, an additional reason to bid on their names is to reduce the risk of others’ ads performing better than their own.

Say you are a hotel or restaurant that has arrangements with sites such as booking.com and toptable.com. These sites will be bidding on your name. While it is generally unacceptable to include in the ad text someone else’s trademark, these sites will be within Google’s acceptable use policy to do so because they are your resellers.

So, a sizeable number of customers who are likely to book your venue will book through these sites, rather than coming directly to you. That means less profit for you, as you will have to pay referral fees to get those same customers who might otherwise have booked directly through your site.

As a general rule, bidding on your own name should ensure you appear at the top of Google above these other sites, because your website will be all about your company. It will carry more weight with Google than a third party site with a name like booking.com. This leads to an important point about the name you call your business.

Disadvantage of using keyword rich names

A word of warning about using keyword rich domain names or descriptive names: in trademark law it is difficult to stop competitors using similar names. There may be some limited search engine visibility benefits of using keyword rich descriptive names, as we explained in our blog post, choosing names that say what your business does on the tin.  However, this is no longer a good approach for your online business. It has disadvantages on many levels. Our advice is that no business starting out now should opt for a descriptive name, regardless of any search engine advantages. There are other ways to increase your visibility on search engines. So, talk to a trademark lawyer before settling on a name for your business. You will be glad you did.

Conclusion

As stated above, bidding on a competitor’s keyword may or may not infringe on its trademark depending on the specific facts. It certainly makes sense discussing any proposed competitor keyword bidding with your Adwords account manager before authorising them to do so. Also, you should ask trademark lawyers who understand the case law surrounding Adwords to consider your proposed ads before you go ahead with them.

You can find more information on our website about Trademarks, Online Branding and Trademark Infringement.

Rebranding

Rebranding: Legal issues you can’t afford to ignore


Rebranding
How to protect your brand when you rebrand

Our recent brand refresh has involved a new logo, tagline and completely new brand colours.

As we had to get new website designs, social media profiles, letterheads, brochure, business cards, newsletter design and more, it might be interesting to explain how we went about protecting our new brand.

Having first hand experience of what our clients go through when they rebrand, it is important to add that anyone who is tempted to pick a name without doing proper due diligence should think long and hard about what would be involved if they had to rebrand. It is not sensible to shrug off the risks, and assume rebranding is something effortless. It involves changing everything. If you have to do it at short notice, then the time, cost and disruption could cause business failure.

So, don’t take a risk over your name. It is not a sensible business risk to take, and is more like  gambling..

For us the work involved in a rebrand was made easier as our name ‘Azrights’ was not changing, and we had already registered it as a trademark back in 2005.

Contract with the designer

The starting point for protecting our new logo was the contract with our designer.  When we commissioned the work we read the designer’s terms thoroughly and negotiated a number of changes to ensure we would own all the rights to our new logo, and designs.

Once we were happy with the contract terms we engaged the designer. Her role was to deal with the overall strategy and creation of the new logo.  Our own separate web business implemented the new designs and created our new websites, letterheads and brochure etc.

For anyone who is outsourcing such work, it would be important to agree IP and other details upfront before engaging the company.

Old and new logo

Our previous logo had been created shortly after Azrights was formed. Back then we differed from other law firms simply because we were an IP law firm. However, we had not focused on differentiating ourselves from other IP firms.

In a future post I will explain the rationale behind our rebrand. Here I want to highlight the steps we have taken to protect the new brand and explain the reasons.

Our chosen logo back in 2006 comprised this old fashioned typescript because it denoted Intellectual Property (IP), creativity and copyright.

az

 

This is the new logo

as 

Having secured copyright ownership in the new logo under our agreement with the designer, we carefully kept a copy of that contract on file in order to have proof of our copyright ownership.

We then went on to register the logo both as a trademark and design.

The benefit of registering the logo as a design is to have better recourse if others copy it. It provides more powerful protection of the distinctive look of the logo.

The benefit of design registration

Consider Coca Cola’s distinctive iconic bottle shape. Had they not protected the initial design with registrations Coca Cola would not be in the position they are in today of owning the bottle design. Without design protection the bottle could and would have been copied by numerous other drinks companies, and nobody would uniquely associate the bottle shape with Coca Cola.

We are hardly in Coca Cola’s league. However, the principles for any brand are similar. If you have something distinctive, protect it so it can remain distinctive and unique to you.

To draw an analogy between business and war, in business it is fair to assume others will copy you. Intellectual property rights provide the way to tackle copying and to deter competitors from encroaching on your rights. They are the equivalent of the weapons with which you would arm yourself for war.

IP rights help you to fend off copying of your distinctive names, logos and inventions. Whether you choose to do so or not by taking legal action is a separate matter. Often, simply registering your rights is enough to deter others from copying.

Good preparation for business

In business securing whatever IP rights you can secure over important brand elements like your name and logo is advisable.

When preparing for war you would probably take a range of weapons with you, such as guns, knives and hand grenades in case a knife was more suitable than a gun for a particular situation. IP rights are similar in that copyright, design registration, and trade marks each give you different possibilities to object to copying. They complement each other.

If anyone were to copy our new logo the copyright in the logo may not be enough basis to stop the copying. The other party might try to claim they came up with a similar logo independently without copying our logo. Proving that they copied our logo might be an insurmountable, expensive hurdle.

Design registration makes it easier to stop copying

In contrast, our design registration puts us in a very strong position. The mere fact that the logos are the same would be enough to put the other party in the wrong, even if they argued that they did not copy our logo.

We have our trade mark too. In some situations the trade mark may not help us tackle copying. For example, if the logo was copied on a website that was not selling anything, we could not use our trade mark to complain about the copying.  We could, however, use our design registration to do so.

Having all rights in the logo

Having copyright, design, and trademark protection over the logo puts us in a stronger position to tackle whatever happens in future.

If you have branded your business why not take our test to find out what gaps there are in your business’ IP – Protect your IP?

Startups

Start up

It can be difficult when you start up to know how to spend your resources. Keeping a tight rein on expenses is essential in the early days, but it’s equally important not to neglect important issues like intellectual property (IP). IP is relevant in a number of different ways, one of these being the name you call your business.

StartupsThe brand name is the primary way in which consumers will identify your business, and is the ‘sign’ that customers use to distinguish your goods and services from those of competitors. Contrary to popular belief you are not free to choose whatever name you like, even if the name is one that is available to register as a domain or company. Your use of such registered names must still conform to trademark laws. Finding a name that is available to use for all your business purposes is not easy – especially if you trade internationally.

When starting up you may wonder what to deal with yourself, and what to outsource. What do you postpone and what do you deal with immediately? How do you go about creating a brand, and when should you invest in branding?

A brand is relevant to every size of business

Some business owners think brands are only relevant to the big household names. However, anyone who aspires to greatness should consider what a brand actually is and what’s involved in creating one.

A business becomes a brand once it is known for delivering on a specific promise. This attracts customers who positively want to do business with it rather than with the competition. The brand also attracts employees, suppliers and, ultimately, investors. So, your brand is what draws people to use your business instead of that of your competitors.

An important point to note is that the good associations customers have with a brand are, for the most part, transferred to its name. Just as individuals are identified by their name, so we identify a business primarily by its name.

Names involve legal complexity

A name is one of the first things you need when you start up in business. However, names involve a lot of legal complexity and potential costs. So it makes sense to have a strategy for the early days if you want to keep your expenses down.

Names are an important way in which the law protects a business, so it is worth taking time to settle on one, and to choose a legally effective name. This must involve a lawyer experienced in trademarks. The name is one of the most valuable IP assets your business generates if it is successful. The very choice impacts the value of the business. Pay proper attention to naming even if you think whoever eventually buys your business will not use the same branding.

Unless you already have a good understanding of your market and the gap you will fill in it, it could save precious resources at start up stage to avoid the expense of naming, design and branding. You will be much better placed to differentiate your business and brand it once you’ve been in business for a while.

Descriptive names

As a start up you might want to use a descriptive name to avoid the expense of trade mark searches and registration, and the risk of infringing on someone else’s rights.  A descriptive name informs the market of what your business does, and this can be useful in the early days when nobody knows you exist.

For example, if you will be providing digital marketing services, and call your business ‘digital marketing worldwide’ you would not need legal checks, expensive designs and more. You could get going and after you’ve been in business for a while choose a proper name. That’s the time to spend on branding. The name you pick must not be a description of your services, although you could always continue to use your descriptive name – ‘digital marketing worldwide’ in our example – as your tagline.

In the meantime, bear in mind how to what is involved to create a real brand.

Everything you do creates a brand

Every brand has its own distinct ‘identity’ and ‘promise’. It’s due to this promise that we know to expect something completely different if we buy a Rolex watch rather than a Swatch.

Everything you do, or don’t do, such as your marketing communications, employees, packaging, website, videos, photographs, premises and logo impacts the impression your brand makes. So you will need proper branding as soon as the business concept is proven.

Many other factors are also involved, including the products or services you sell, the way you respond to telephone enquiries and deal with your customers and the way customers are left feeling as a result of doing business with you.

Other things that contribute to the overall impression include:

  • whether you are a virtual business or based in an office
  • the way you engage on social media platforms
  • whether or not you blog – and if you do, what you write about
  • your writing style, newsletters and emails
  • your terms of the legal agreement with your customers.
  • your physical appearance and that of your staff.

The trust that your business gradually establishes in return for delivering a particular result or outcome is how your business becomes a brand.

You will be known for delivering a particular quality or outcome due to your reliability in the past. Customers will know what to expect if they use your product or service and there’s little risk of an unpleasant surprise. By contrast buying a product or service from a business that has not yet acquired brand status is risky, because it represents something untried and untested.

Conclusion

To get the clarity you need to brand your business takes time. Initially, work out what your unique value proposition is, and try to identify your core customers so you know why they are using your products or services. Then focus on satisfying their needs and get feedback on how they perceive the business.

When you are ready to pick a name, and brand your business be sure to include in your team a designer, a trademark lawyer, and a marketing expert.

Naming your start-up

Naming your start-up: tips for lasting success

Naming your start-upThe notion that the main consideration when choosing a new brand name is its availability as a .com domain is widespread. What is less well known is that you may not be free to use your chosen domain name if the name would infringe on someone else’s trademark rights.

Countless start-ups regularly trip up because they do not realise they need a legal opinion to assess whether the name is free to use. So, there is no point paying substantial sums buying domains as one early stage business owner I met did a while ago. He had paid £10,000 for a .com domain only to be challenged by the owner of a similar trademark when he began using it for his new business. The disruption and financial consequences were an irritating distraction for him. It was completely avoidable. Had he consulted a trademark lawyer before choosing a name he could have avoided this set back. However, many business owners are reluctant to pay for a professional opinion, regarding this as an unnecessary expense. Ironically, this particular business owner, then went out and bought another domain name, again without having any checks, and only turned to us to register it for him. He was lucky that this time there were no problems with the name.

As this is a topic of interest to me, I was amazed when I came across a recent blog post from the CEO and co-founder of “Skilljar” which focused purely on whether the .com was available when choosing a name. In that case the business was changing its name, and surely this is one time when you really don’t want to get it wrong. The disruption of changing names 3 times would be so distracting and wasteful for the business.

Based on her experience of not being able to purchase the .com to the name she was using – Everpath – Sandi Lin decided to abandon use of the name, Everpath (even though her company held every other domain variation, including the important .net) and set off in search of a new name for which the .com domain would be available.

Using the crowdsourcing platform, Squadhelp, she searched for available domain names, and settled on the name “Skilljar”. She was convinced the crowdsourcing site would minimise the time involved searching for a new name. Based on over 800 submissions, she was inspired to pick a new name. Using ‘skill’ and ‘master’ as roots to search for names on Sedo, a domain name auction site, for ‘Buy now’ listings she then found several names that were available to buy within a maximum price limit of $5,000. She also checked for social network availability and searched Google for similar results. So it was that “Skilljar” was born.

What she omitted to do was to check whether the name Skilljar was too similar to a trademarked name in the USA and other parts of the world.

The correct way to choose a name is to do some Google research, check that the desired domain is available, and then get a legal opinion on the name. If the results are favourable, then register a domain as well as a trademark. Trademarks are the way to stake your claim to a name. Even though it is not necessary to register a name to use it, registration gives you far better rights over a name, and puts you in a stronger position if someone else starts using the same name (which they are more likely to do if you haven’t put them on notice of your rights over the name by registering it as a trademark).

So, while Lin is advocating crowdsourcing as a quick and relatively cheap approach which took her only 8 hours and cost the comparatively modest sum of $2,195, it is important that others looking to find a new name appreciate that this expense would be completely wasted if someone else had trademark rights over the name.

As a trademark lawyer I find her decision to rebrand questionable and surprising, particularly as at no point did Lin even consider the trademark implications of her proposed name. She was willing to forfeit all brand confidence to date, and choose a new name, and did not first think to check that the new name would be available for her to use.

Whilst arguably an inconvenience to have to first find out whether someone else has trademark rights over a name, start-ups are in danger of spending thousands of pounds more on enforced rebranding, and on domain names that they are not free to use.

So, don’t just focus on a brand name’s web-friendly characteristics. Avoid a lawsuit for trade mark infringement, and make sure you are using a name you can own.