The internet has radically changed the rules for most industries, be it news, music, PR, retail or any other you may care to think about. That’s not surprising given the rapid pace of technological development the internet has spawned. Society as a whole is being transformed radically, especially in the wake of the Coronavirus.
And yet many industries are plodding along much as they did in the 20th century, that is, if they can get away with carrying on as usual. They are adapting somewhat slowly to the shifts in the world that the digital landscape entails.
Lack of awareness of IP
In the years I’ve been supporting businesses with their trade mark and brand related needs at Azrights, I’ve been struck by the widespread lack of awareness about intellectual property (IP).
In today’s world where most assets of a business are creations of the mind – intangibles – that are governed by intellectual property laws, it is striking that people create businesses without first taking advice on IP laws.
It’s like not bothering to get any legal help when opening a physical shop or taking on an office lease.
The problem is that while everyone understands there are legal implications in the actions they take in their businesses which have real world signs, they’re largely unaware that actions such as choosing a name, or an image, or developing an idea have legal consequences, and therefore that IP is intrinsically relevant to their projects.
The core 3 IP rights of copyright, trade marks and confidentiality are relevant to every single business. Every founder needs a basic grasp of IP in the 21st century.
Even if people are aware of IP, they’re often not aware of the need to take it into account at the right time, which is at the start of projects or new campaigns. This can cause serious problems for some businesses.
People know that tangible property like land requires professional searches and a buying process before developing the land. However, they don’t appreciate that IP such as names or logos or websites are also property so that their ownership needs to be addressed first.
People commonly assume that protection of IP is something you can safely leave till your business has taken off and is wildly successful, or at least until you have something worth protecting. This is possibly how the assumption has arisen in the world of branding that protection comes after branding and visual identity creation, rather than before.
This notion that IP comes last is completely misguided, and inappropriate in the 21st century when the assets of most businesses are largely comprised of intangibles.
The fact that the internet makes business global, and visible means that IP actions we take are out there for all to see, and if we’re infringing on someone else’s rights, it’s likely to be found out in a way which just didn’t happen pre internet, and in the days when there were fewer businesses out there.
Think of IP such as a brand name as you would a plot of land that you are going to develop. While with physical property you might understand how to assess its quality, and suitability for your purposes, with intangibles like names, you may not realise that the same considerations apply as with land, that it’s possible for an experienced trade mark lawyer to conduct searches, and advise on the suitability of a name for the brand you are intending to build.
Whether people choose their brand name themselves or have help from a service provider during branding, one common mistake is to use non-distinctive names that are difficult to protect. The purpose of a name and its role in business is to stand out and protect you against competitor actions that very likely to arise if your business succeeds.
IP is how you protect yourself against various realities of business life, such as copying, and trying to steal market share from those who are successful. When choosing names, people are purely focused on whether their name communicates what it is that the business offers, what services it carries out and the like.
If you want to communicate what the business does then unless you can do it in a very clever way, you would do better to use the tagline for that purpose, rather than the name itself.
Clubcard which I’ve previously highlighted such as in the first episode of the Brand Tuned podcast, is an example of a non-distinctive name. It was developed for Tesco’s loyalty card scheme. The name proved not to be a good container of the value the business generates.
Tesco spent millions promoting the Clubcard name, only to discover it couldn’t be secured as a word trade mark for loyalty card schemes. When a word is deemed insufficiently distinctive to function as a trade mark, it means everyone else can also call their loyalty card schemes Clubcard in this example. Effectively Tesco wasted their marketing budget developing recognition in a generic term that is freely usable by its competitors.
The Tesco example illustrates what happens all too often when brand creation is separated from brand protection.
Agencies that provide naming services tend not to involve lawyers in the project. They create the name, and leave the final stage, that is the trade mark clearance searches and registration for the client to address themselves with their own lawyers. That approach comes fraught with problems – for one thing it relegates a very minor role to the lawyer, who is the most experienced in trade marks and names.
Also, it means that a trade mark lawyer is never consulted on the name because most businesses don’t have a trade mark lawyer on their team, whereas they will have a general business lawyer they will likely turn to for help. Their general commercial lawyers are not experts in names but can search the trade mark registers. However, their lack of experience in trade marks means they won’t be able to advise on the international dimension and on the suitability of the name for the client’s long term plans. They also won’t always be able to identify names that can’t function as a trade mark.
The upshot is that the client does not receive the best advice on one of the most important assets their business will use and build value around. This can have serious consequences for the business in terms of the revenues it generates and its ability to protect itself against competitors.
Branding agencies really should bring the right expertise on board upfront during the branding process. At the very least they should bear a small portion of the legal fees out of their own budgets if they are offering a naming service even if their client doesn’t want to incur the extra cost of legal fees.
Leaving the legal dimension till the end in the way it’s currently done in the industry means it can be too late for lawyers to impact the choice of name and advise on how to make the name more distinctive for the business. Ultimately the client loses out because if the name or other assets are weak or can’t be readily defended or extended to other countries, the client’s business suffers. It will have a limit on its revenues.
A search and opinion on a name is not a big expense, and could easily be absorbed in the budget of the agency itself, because it’s an intrinsic part of identifying a name to ensure it’s fit for purpose. How can you do that if you don’t have any legal input for the agency itself?
This silo approach in branding whereby brand creation and brand protection are separated doesn’t give founders the best outcome from their branding ventures. To choose brand elements like names that stand out should involve people who understand IP, that is lawyers experienced in copyright and trade marks, who “get” branding and know what the creatives are trying to accomplish.
Clients need to understand the pros and cons of using a particular name before adopting it. At its most basic, if a name is incapable of being owned or would be very difficult to defend, you would be building your business on weak foundations to use it.
I firmly believe that an inter-disciplinary approach to brand creation is essential when a new brand is being designed for small businesses because they will be largely unaware of the significance of IP.
In many ways, IP is all about the inner workings of a business. Discussing the details of IP, can be the equivalent of trying to interest a car driver in how their car engine works. They just want to drive the car they don’t want to learn about the engine.
Agencies providing naming services would be doing their clients a huge favour to find a way to involve lawyers in the branding process. There is a lot more value that the right lawyer can add to the branding project than trade mark availability searches. They can advise on names, and also on how to create other distinctive brand assets for the business to consistently use. For example, colour tends to be emphasised a lot, but it’s not easily protectable. Perhaps the business would do well to develop other assets and focus more on consistently using those on social media and the like, rather than this emphasis they place on colour.
It presents a serious risk to the client if the agency hasn’t at the least had a lawyer conduct searches on the final name the client adopts. It’s like giving someone a dodgy car to drive and telling them to check with their own mechanics that the engine is in good working order.
As clients are unaware of the significance of IP they might well assume the name is good to go, and that the agency is being over cautious in counselling them to consult lawyers. Many of them can and do simply start using the name without consulting a lawyer, so if the agency hasn’t conducted trade mark searches on the name then it really is a defective name they’re potentially giving the client to use.
Company, domain and google checks are simply not enough. There are a host of reasons why a name would not show up in these checks. For example, it might be a product name that’s sold offline. Or someone may have registered the name while they get ready to launch their new business. So, it’s fraught with risk for agencies to offer naming services without doing what’s known as an identical trade mark search on the name themselves before handing it over to their client.
Otherwise they could be laying themselves open to litigation, and it’s not doing the best for the client. By all means further searching and registration can be left to the client, but handing over a name that hasn’t had the most basic trade mark clearance checks is untenable, even if the agency warns the client that they should have their own legal checks to protect the name.
So, I strongly advise agencies to get some identical legal searching in place for names they select for clients and to pay for the checks out of their own budgets. It doesn’t need to be a large expense, but it’s essential to have done these checks before warning the client to run their own checks.
One option is for creatives to learn to do their own trade mark searches, which involves also learning how to find the right trade mark classifications in which to search. I have an online course that teaches all that. It’s an introduction to IP. So, if agencies dealt with their own searches, that could be a way for them to hand over a name more safely to their clients, and they wouldn’t then need to bear the cost of legal searching out of their own budgets unless it was a particularly complex search in which case they could then take advice on an ad hoc basis.
Skillset of Creatives Does not extend to IP
What clients of branding agencies don’t realise is that even if designers or creatives regularly choose names, they are not experienced in IP and trade mark law. It’s not their skillset. IP and trade marks are complex.
Designers and creatives who create intellectual property for their clients don’t know what is involved to protect the brand, while trade mark lawyers don’t get involved in brand creation and wouldn’t know what’s involved to create a brand anyway.
The two worlds are completely separate. There is a huge gulf between them.
The fact that the two disciplines are so far apart is going to be increasingly untenable as we move further into the 21st century.
I reckon agencies will increasingly see the need to combine both skillsets so that their clients can end up with a stand out brand, using an ownable name and other distinctive assets. The brand name is, after all, a hugely important choice and using the right lawyer on their team means they get a lot more than just trade mark register searching.
The fact that brand creation is a design led activity is a hangover from the 20th century. When the assets of businesses are largely comprised of IP, they will soon realise that brand creation needs to be an IP led activity.
Combining Both Disciplines
As a business owner and trade mark solicitor dealing with all things brand related, I became keenly interested in marketing and branding a number of years ago.
Even before I began writing my first book Legally Branded in 2011, I was reading a lot of business books on marketing, branding, sales, websites, digital marketing, content marketing, customer service, and more. I’m a real bookaholic, buying more books than I ever have time to read. Sometimes I’ll read a book I bought a few years back and all in all I get through a lot of books. I also attend courses and masterminds to develop my skills, and generally think a lot about branding, and marketing.
The main benefit from all this learning is that I’ve improved my own skills in running my business, and I’m now writing my third book, which is all about branding.
While in the past I used to refer my clients to branding agencies if they needed a name, now, having witnessed the numerous problems businesses have around their names, whether they choose the name themselves or get help from a service provider, I have decided to offer a naming service ourselves.
I can do this because I’ve developed this unusual combination of skills that brings brand creation and brand protection together. Being able to advise small businesses in an inter-disciplinary way is more affordable for the client.
Our Brand Tuned product enables us to provide essential advice on IP upfront. The fact that we are supporting the client to choose the right name, and to protect it before the visual identity work is undertaken means we can do everything in the right order ensuring clients can build their business on solid foundations and don’t miss out on owning valuable IP rights.
We address the visual identity part of branding by either bringing in the client’s own chosen designer or a partner design agency.
I’m also speaking to agencies to see whether a version of the Brand Tuned product might suit them to offer to their clients when they’re quoting for a branding project. Like that those clients who want it, can benefit from IP expertise during the branding process.
I do hope founders and branding agencies alike will listen to the Brand Tuned podcast where I bring together, business, branding and IP.
Sign up to the series of webinars I’m currently running for businesses as they pivot or fine tune their business, and learn more about how to identify a suitable name for your business