Tag Archives: trade marks

When Does a Start Up Need to Register a Trademark?

Every time you create a product, service, or business, you need a brand identity for it. Without a doubt, the most important element of most brands is the name.

The law protects names through trademarks, not copyright.  

It is not possible to claim copyright in a name, even if the name is one you made up.

Start ups often wonder whether they need to spend the money to register a trademarkSome wonder why it’s not enough to have registered a company or domain name. Yet others have heard of unregistered trademark rights being acquired through use, and wonder why they should not just use the name without bothering with any trademark registrations.

Company and Domain name registrations are insufficient

The short answer to whether company or domain registrations are enough is no. Domain and company names do not give you the necessary rights you need in a name.  The fact that they are available to register does not mean you may use them for any purpose you like. You still need to establish whether anyone has trademark rights in the name you’re intending to use as your brand name. 

Trademark registration is the way to protect a name, and get the necessary rights you need in that nameIt is not a good idea to rely on unregistered trademark rights in the brand name in which you will be building your brand equity.  

What is a good name?

A good name will help you to build brand value and to successfully secure trademark registration in the word. But to pick a name that works involves more than meets the eye at first. 

As well as conveying the desired personality characteristics, sometimes across world markets and in multiple languages, it’s essential that the brand name be legally available and distinctive.

Often a name is the first issue you need to consider before beginning work on designs, websites, and marketing materials.

Should you register the name?

It all depends on how important the name is to you.  If you’ve found a name you are excited about and want to use long term for your business, then you should immediately register it as a trade mark, before you do anything else. That’s the way to establish ownership rights to a name.

If you are not that bothered whether you can use the name long term or not, then don’t worry about trademarking.  Once you’ve established that you are not infringing on anyone else’s rights, just go ahead and use the name.

Conclusion

So, when you’re starting a new business, pick any name based on whether your desired domain name is freely available to register. Don’t spend too much on getting an identity sorted for your business either. The focus should be on finding a suitable niche and positioning for your business and testing it.

You can have more than one niche, but best to move forward one niche at a time.

So, initially focus on getting the business off the ground.  If your business is viable and works, you can rebrand (by which I mean getting a visual identity in line with your brand values) once you’ve found your feet.

At that time, you could even pick a new name, so you can save if you’re willing to choose a temporary brand name to use as well as temporary designs in the early days. 

On the other hand, if you have coined a really inventive name, and like it, or don’t want to have the hassle of a rebranding exercise later, then, of course, you should invest in the name by properly protecting it with a trademark. 

trademarks

Trade Names or Business Names as Trademarks

trademarksQuin & Donnelly was a well-known and successful fashion design partnership in Ireland which was founded more than 30 years ago when the pair were fashion students.

Their collections had been sold for more than 15 years by retailers including Brown Thomas and House of Fraser when a dispute concerning their brand name Quin & Donnelly brought about the death of the brand.  As the Times reported in 2014 Fashion duo’s fight ends in brand death.

The reason for mentioning the case is to emphasise the importance of registering a trade mark to protect the brand value in your name and the brand equity you generate. There are so many ways in which failing to take basic steps concerning trademarks can cause problems for a business and this is just one example. 

The designers had registered their name as a business name (on the register of Business Names, which has now been abolished). However, they had not registered it as a trademark. They only applied to register it as a trademark in 2009.  

However, their Irish manufacturer, Sonole Designs objected claiming rights in the mark, and the ruling, published by the Irish Patents Office in 2014indicates that the duo were refused permission for the exclusive use of the trademark following a dispute between them and the manufacturer of their clothes.

The Patents Office, which rules on trademark conflicts, found that a trademark application by Donnelly and Quin in 2009 made without the knowledge of the clothes’ manufacturer would amount to “passing off” [common law tort used to enforce unregistered trade marks] if it were granted.

Apparently, all goods sold under the Quin and Donnelly brand since 2002 were made by Sonole and the Donegal company had invested significant funds to help to expand the business and generate new customers. By doing so, it had “earned rights” in the business’s good name.

Quinn and Donnelly had worked with this manufacturer for eight years. 

Distinction between trademarks and business names

At this point, it is worth considering the distinction between trademarks and business names briefly. 

trademark is a distinctive sign or indicator used by a business to identify its products or services to consumers.  It is a sign informing consumers that goods or services originate from a particular source, so they are able to distinguish it from similar products or services in the market.

business name is the name under which a business trades.  So, if you are a sole trader or have a registered company name you could choose to be known as something else. For many businesses the trading name will be the same as their registered company name and will also act as their trademark. It all depends on how the names are used in practice.

To be able to function as a trademark a name must meet certain criteria, such as to not simply describe the products or services of the business.  If a trade name is used as a designation of origin to inform consumers where a product or service is coming from, then it is being used as a trademark.

This seemed to be the case with the fashion designers in the dispute. However, as happens all too often in practice, the designers were under the impression that their registered business name was sufficient.  They had not realised they needed to register it as a trademark.

In such cases, the best advice is to register the trademark as soon as trading begins. If Quin & Donnelly had done so, they may have had a different dispute with their manufacturer, but not one that would have spelt the death of their successful brand possibly.

App_idea_protect

Legal Ways to Protect Idea For Your App

App_idea_protectBefore you discuss your idea with developers think about legal protection. Whatever the idea, it’s important to develop the habit of being selective about who you reveal your ideas to during the early stages before you’ve explored the possibilities. That’s because confidentiality is the only way to protect a mere idea. 

If you have an idea for an app, chances are the first thing you’ll want to do is to find someone to develop it for you. I’d advise against discussing the idea with any developers at such an early stage.

You’ll likely be keen to take action to get going with your project, so I’d suggest you interview a number of developers to understand whether they would be suitable for your project without actually telling them about the idea itself. 

Have another “idea” to discuss with them rather than your actual one as you find out about their past experience in developing apps, whether they have testimonials or client references, how they charge and so on. Look at their legal agreement, and if they don’t have one, that might mean they are a very early stage business, and not perhaps as skilled as you need them to be. Most established businesses should have terms of business. So, take the opportunity to read through their agreements and proposals. Do you understand everything? Will you get the rights you need?  Are they open to negotiation on important points such as copyright ownership?

The law says Buyer Beware. In other words, it’s up to you to look out and make sure the agreement with the developer protects you. If they have no written agreement, then the law automatically gives them the rights in the App they’ll develop for you. So, you are the one who needs to find a suitable agreement to use with them if you’re going to use a developer who has no existing terms of business to provide you with.

Reserve discussions about your actual project for the few you decide are worth getting quotes from. Like that you avoid the need for NDAs every time you want to talk to someone, and get to keep your idea secret while you’re critically assessing it.  Yet you’re still taking action towards implementing your idea. 

Confidentiality is the very first intellectual property right to bear in mind to protect you which is why it’s so important to keep your actual idea under wraps in these early days.

Contrary to popular belief, it will rarely be relevant to consider patents when it comes to an app. The legal protection of apps is primarily through copyright.  It’s highly unlikely that an app will involve an invention that could be patentable. People often assume that patents are going to be relevant for an app, but that’s not the case.

If app ideas could be patented it would mean that magic cabs who initially had the idea for an Uber-like taxi service would have been able to lock down the idea with a patent, thereby preventing anyone else from developing a similar offering.  That’s what people often wish intellectual property would give them, and when they find out they can’t stop someone else from also developing a similar idea they are disappointed and may even turn their backs on intellectual property. However, IP is extremely important even if it doesn’t provide a monopoly right over an idea.

Every idea will involve different intellectual property considerations. Some will highlight design protection, others will involve patent protection, and yet others will involve copyright. All concepts provide an opportunity to develop a brand.

So, the way to protect an idea for an app is to keep it confidential initially when discussing the idea. Use a good legal agreement with the developer, and make sure you secure copyright from the developer in writing before you commit to engaging their services. Otherwise, you will not own the copyright in the app. You will simply have a right to use it and the developer will be the one who has the rights to exploit it. 

Then once the app is developed there is a range of actions and decisions involved and legal protections which you might obtain. For example, you could register designs of the visual features of your app, or to choose a legally effective, legally available name for the app, which you register as a trade mark. Note that you risk creating a liability for your business rather than an asset if you don’t check out the name properly. Google research is not enough.

I’ve created a course specifically for anyone developing a new idea, be it for a new business, or a new project within an existing business. There I explain how to protect your copyright position, provide a template and process, and show you how to do trade mark searches. To get all the guidance you need when developing ideas, including on how to choose a name that will protect your market share and revenues go to www.azrightsintl.com and scroll the home page to find my courses listed there.

Formula One Trade Mark Dispute IP Licensing

Formula One Trade Mark Dispute underlines need for Careful IP Licensing

Formula One Trade Mark Dispute IP LicensingThe High Court recently published its judgment in a case involving the Marussia Formula One team. The case related to a claim for trade mark infringement and underlined the importance of businesses ensuring they properly manage their IP rights.

 

The court heard how the claimant had licensed its trade mark to the defendant Formula One team, but that the defendant team had continued to use the trade mark after the licence term had expired. The team was refused permission by Formula One’s governing body to change its name during the course of a season, leaving them with little option but to continue racing and infringe the claimant’s trade mark as a result. Refusing to race would mean forfeiting the team’s entitlement to a substantial amount of money due to it.

 

The court held that the defendant therefore had no real prospect of proving, as it had asserted, that the use of the claimant’s trade mark had occurred with the claimant’s consent. It further held that the defences advanced by the defendant were unlikely to succeed and that the defendant would need to provide £1.75 million by way of security for costs if it wished to proceed to trial.

 

The case shows the importance of considering IP rights at an early stage and ensuring any agreements entered into properly reflect the needs of the parties and protect their interests. In particular, the defendant in this case would have benefitted from ensuring the licence was not timed to expire part way through a season. The facts of the case show the balance of power was strongly weighted in the trade mark owner’s favour, since the licensee was heavily dependent on the owner providing the funds which would allow it to participate in the Formula One season.

 

Many SMEs could potentially benefit by holding their IP in a separate IP company and having the holding company licence that IP to the company through which the business is operated. This has the benefit of protecting a business’ investment in its IP by ring-fencing its intangible assets. This will be particularly important if the main business falls into difficulties and should be considered at an early stage.

 

Marussia Communications Ireland Ltd v Manor Grand Prix Racing Ltd & Anor [2016] EWHC 809 (Ch)

3D Trademarks – No Breaks For Kit-Kat

What will be of the future of 3D trade marks? The latest in Nestlé’s attempts to trademark its iconic four-finger chocolate is at odds with EU Law.

Back in 2012 we reported in our blog Can you trademark a colour? that Cadbury had managed to secure a trademark for its signature purple colour after a lengthy battle with Nestlé. If you have been following the race for confectionary supremacy between Nestlé and Cadbury, you will know that in 2013 Nestlé successfully blocked Cadbury from maintaining its trademark rights in the colour purple ‘pantone 2865c’ for its Dairy Milk chocolate bar.

Cadbury’s application did not meet the criteria of a trademark, namely that ‘predominantly’ purple was not specific enough and lacked objectivity for the purpose of registration. See here.

Nestlé are set to see a similar fate in the latest turn of events.

What does this mean for the future of 3D shape marks?

Yesterday it was reported that the Advocate-General (AG) has advised that the Nestlé’s application for the three-dimensional ‘Kit-Kat’ shape is not compliant with EU law.  Although not an official ruling, it poses a serious threat to the future of three dimensional trademarks.

Life in 3D

Three dimensional trademarks are notoriously difficult to register. Why? Because a registered trademark grants perpetual monopoly rights and, because, the registration of these marks provide an enormous advantage in highly competitive markets where products are homogenous or differ only by a few features.

Having a trademark means that no one else can use the same or similar shape for the same or similar goods. This is generally considered anti-competitive.

To this extent, shape marks play a crucial role in the multi-dimensional aspect of a brand’s distinctive character. A trademark acts as an agent of a commercial strategy, and shapes are one of the foundations to a successful marketing campaign.

In our piece about ‘Coca Cola Bottle Granted Trademark Protection in Japan’ we mentioned the Coca-Cola bottle, which seems to be one of the few shapes on the market which has been able to achieve trademark protection in many different countries. It only takes a few moments to think of that bottle and realise how many international campaigns, advertisements and references are based on this one shape.

To be or not be?

In a recent article by the Guardian, Iain Connor, head of Pinsent Masons’ contentious IP practice, stated that the AG’s “opinion is entirely consistent with the court’s previous refusal to grant trademark protection for Lego bricks and so comes as no surprise.”

It is not so clear cut, however. The general rules are that you can’t register a 3D mark, even if it has acquired a level of distinctiveness, if:

1. The shape results from the nature of the goods, i.e. you’d have a hard time registering the shape of a banana for bananas;

2. The shape is necessary to obtain a technical function; and

3. The shape adds substantial value to the goods. (What this value is, is inconclusive).

Lego had failed to register its toy bricks because the shape was necessary to connect one brick to another. Philips had failed to register its 3 headed shaver for similar functional reasons. On the other hand, the triangular Toblerone pack enjoys trademark protection which, arguably, makes it easier to package the confectionary in bulk. Is that not a technical function? Chrysler were also able to register the front ‘seven slot’ grill of their Jeep vehicle which, in the author’s opinion, serves the technical function of cooling the engine. The court’s interpretation of these ‘exotic’ trademarks is therefore far from consistent.

To draw the distinction is a conceptually difficult task. For instance, the shape of a chocolate bar with ridged indents is no less necessary to break the fingers off than a Toblerone is good for stacking; a Cola bottle is useful for containing Coca-Cola; and the holes in the front of your car prevent your engine from exploding.

The argument put forward by Cadbury was that without the branding and logo the shape was not distinctive enough to warrant a trademark. However, a street survey revealed that 90% of consumers recognised the chocolate bar (without its packaging) as a ‘Kit-Kat’.

If it is all about packaging, however, then the court offers no less abstract guidance. Last summer, Apple Inc. were able to trademark the layout of their store. The CJEU came to the conclusion that, somehow, the Apple store is equivalent to ‘packaging’. See here at para. 16.

The author’s view is that the ruling (whilst a coincidently accurate metaphor for corporate culture) defies the whole point of specificity and objectivity. Not all Apple stores are the same, and if the design alone is such that it presents the services provided, then does Cadbury’s ‘predominantly’ purple ‘packaging’ or Nestlé’s four-finger chocolate bar not present ‘Dairy Milk’ and ‘Kit-Kat’ in much the same way?

The ‘certain’ circumstances for registration 3D trademarks are not so certain after all.

Trademarks unchained

Shape marks are construed narrowly because of the commercial power which they yield. However, to what extent does a company have to sacrifice its distinctiveness for the good of its competitors?

Modern advertising and marketing practices now incorporate far more than your standard bill-board and infomercial. Companies are awakening to the fact that the most powerful advertiser is the consumer himself. The one who is inadvertently a brand ambassador carrying ‘lifestyle’ products for the world to see.

The shape of a product is therefore more important than ever before. It helps preserve the individuality of the product and uniqueness of its brand and it creates something completely different from the myriad of the commonplace. Sooner or later, a reform of trademark law will need to take into consideration this new function of trademarks.

 

Trade Mark Infringement – What’s Skype Got To Do With It?

What will your trade mark be?A recent General Court of the EU decision in the Sky v. Skype body of cases that has spanned the last decade, will not be the final straw for Microsoft.  According to the BBC Microsoft who owns Skype, after acquiring it in 2013, has announced its intention to appeal the decision. This may be seen as a bold and sensible move since Microsoft is in the process of expanding the brand to replace their Lync product.

What this decision means

This decision prevents Skype from registering for trademark protection, it does not prevent Microsoft from using the Skype brand. Some pundits have suggested that Microsoft may pay a fee to licence the name. At this time, Microsoft has not confirmed that they will be pursuing this route.

It is important to note that this limitation on registration has a jurisdictional limitation. Both companies, which operate globally, will only be bound by court decisions in the European Union. For example, this means that Microsoft’s registration of Skype in the United States will continue to protect them from trademark infringement there.

The Court issued a press release stating that its reasoning for not permitting the registration is that there is a likelihood of confusion between the figurative word and sign for Skype and the word mark for Sky.

Other cases

This is not the first match-up between Sky and Microsoft. In early 2014, Microsoft was forced to rebrand following the decision that their SkyDrive cloud storage product created a likelihood of confusion with Sky’s mark. The SkyDrive was later renamed OneDrive in order to comply. In its decision, the Court reasoned that the identical portion of the marks coupled with the allusion to the sky and air transmission and similar nature of the products offered made it likely that consumers would be confused.

As Sky is a litigious company, and they have gone to great lengths to protect their brand, there are numerous case examples of where they have either filed a complaint or+ alleged infringement of their trademark. One such examples is of the Livescribe dispute that was filed in 2012. In order to avoid litigation, Livescribe, maker of the Sky Wifi pen, opted to rebrand in the UK.

Licensing – Don’t Risk Losing Your Trademark

Licensing – Don’t Risk Losing Your Trademark

If your business has reached the stage where you are looking to expand abroad or diversify into different markets, licensing your brand could be the ideal way of achieving this.

With licensing, it doesn’t matter if you haven’t the staff or the money to fund your expansion. You license your brand to a third party that already has the staff and resources available within the target market in which you wish to expand.

The positives are many: it can be a lucrative move and can generate additional revenue for your business; it can increase your brand awareness; and it can help create new products for your brand without running the risk of failure on your part.

Licensing

Licensing Without Controls

However, licensing has its downsides, too, which can be exacerbated if you don’t manage your licensing effectively. One of the biggest concerns to be aware of is loss of control. So, whilst licensing can boost your brand’s strength, it could equally damage your brand’s reputation.

This is the risk you run if a third party is licensed to use your brand without any restrictions. It’s not just your brand’s reputation that could be damaged; in some cases, a lack of monitoring on how a third party is using your brand name could result in you losing the rights over the name.

Eva’s Bridal Shop

Take the case of Eva’s Bridal Shop in Chicago . In 1966, Eva Sweis opened a bridal shop under the brand name, Eva’s Bridal. The brand built a reputation for providing top quality goods and services. Eva obtained trademark rights in that name.

The trademark was used for generations; friends and family were allowed to set up bridal shops under the Eva’s Bridal label. But in 2007, Eva’s Bridal attempted to take legal action against a former licensee for trademark infringement as he was using the trademark after the license had expired. On the surface, this appeared a fairly simple case of infringement.

However, the original licence agreement exerted no control over the way the trademark was used, and the court ruled that this therefore eliminated Eva Bridal’s trademark rights in that name.

This is because licences over a trademark granted without any regulations or restrictions, are considered to be abandoning the trademark, no matter how long you may have previously had the rights over it.

Therefore, it is vital to ensure when you license a trademark to a third party, it is  not just an agreement stipulating how much you are licensing a trademark for, but also to ensure you have control over the way the trademark is used.

Trademark as a Symbol of Trust

Trademarks are there primarily to indicate to the public the origin of goods, and to protect them from confusion. It enables the public to rely on a brand as a signifier of quality, or standard, and is a symbol of trust.

Therefore, if you are planning on licensing your business, be sure to introduce quality controls, and limit the distributor’s rights to sub-license the trademark.

How to License Effectively

The first consideration when approaching a licence agreement is to describe what is being licensed, and to take account of the extent of your trademark portfolio. What specific products or services are covered and in which geographical areas? Who will be responsible for filing further trademarks, and who will bear the cost of these?

As a general rule, it’s important for you, the licensor, to retain responsibility for the trademark registration. The licence will be for a specific period of time and may impose a number of conditions. In return, the licensee agrees to pay you royalties and is willing to do so because you have something that’s popular.

Licensing can be an invaluable tool to some business owners wishing to expand their brand, so, it is essential to make sure that licensing helps rather than hinders your business.

If you have had any experiences of licensing which you would be willing to share, I’d love it if you left a comment below.

What Businesses Can Learn About Branding from ‘The Importance of Being Earnest’

The importance of being Earnest - Oscar WildeClassic pieces of literature are often classics for a reason, and whilst some of them may have been written hundreds of years ago, the wisdom they can impart is extremely relevant even now. So with this in mind, what can we learn from Wilde’s famous ‘The Importance of Being Earnest’? And specifically what branding lessons can we learn?

The Importance of the First Impression

‘Something tells me that we are going to be great friends. I like you already more than I can say. My first impressions of people are never wrong’

We may have left the Victorian times behind, but first impressions still carry a lot of weight in our modern day society. For example, in a first meeting, often a person’s handshake, the way they dress, and the manner in which they speak all add up to inform our initial opinion of them. And often these first impressions can be extremely difficult to change.

Much like when meeting people, a lot of how we judge a business is based on our initial impressions. One of the main reasons to create a brand in the first place is to establish a business that customers trust, and often that first impression can be integral to whether you manage to build and maintain a loyal customer base. Remember the news about Apple treating its workers in China inhumanely? Apple’s brand was surprisingly unaffected by these reports because it already had an established strong brand with a loyal customer base. If this had been our first experience of the company we may well have written the company off from the very start.

The importance of the first impression has in fact only increased with the Internet, where people’s attention spans have decreased to the point where a mere few seconds is probably all you get in order for someone to decide whether or not to use your products or services.

A brand’s name, logo, website design, and first telephone interaction can all influence the opinion a potential customer forms about it- get these elements right and this could act as a stepping stone to creating a loyal customer, or get it wrong and the potential customer will go elsewhere.

The Importance of a Name

‘My ideal has always been to love someone of the name of Ernest. There is something in that name that inspires absolute confidence.’

Often the very first encounter a potential customer will have with your business is with your company’s name, as this is where a brand both begins and ends.

Wilde does use the theme of the name ‘Ernest’ to mock the superficial way in which people in Victorian times formed their decision whether to marry someone –  but we can still learn a lot from Gwendolen and Cecily’s desire to place so much faith in a name.

A name does indeed carry certain connotations, and is far from being just a randomly arranged set of letters. Names have meanings and can evoke certain reactions and responses.

A name represents a business’s image and reflects what a business will be like. Is your company fun and innovative or more traditional? FCUK might be a good name for the clothing line aimed at a younger crowd, but would you ever consider calling an insurance company something like this?

A lot of the big well-known companies have put a lot of thought into their names- Google based its name on a mathematical term, whilst Amazon chose its name due to its association with the South American river, whose size they wanted to mimic in their desire to offer the largest selection of books in the world.

Get the name right and you could put yourself on the road to building a stand out brand- get it wrong and you might unwittingly be losing customers. (To find out how to protect names see this blog post: Is a trademark necessary for your business?)

What makes brand names particularly tricky is that quite apart from fulfilling this marketing function, the name has to be legally available, and suitable for the business plans of an organisation.  For example, if you’re intending to license the brand and extend it into other categories so as to offer merchandise, the name has to be distinctive enough to be available to register as a trademark in the various categories and geographic markets in which the brand will be sold.

The Importance of Being Authentic

 ‘I hope you have not been leading a double life, pretending to be wicked and being really good all the time. That would be hypocrisy.’

One of the most important aspects of building a stand out brand is the need for authenticity. Even if a company makes an excellent first impression, and has a perfect name, if it is inauthentic in its actions the positive first impression will quickly go sour and the perfect name will suddenly be filled with bad connotations.

In order to really ensure a brand builds a loyal fan base it has to be consistent and authentic in its actions. If a business sells itself as being ethical, but then it is discovered to be testing its products on animals, this would be bound to lose it some followers. Something similar actually happened to the Body Shop after it was bought by L’Oreal a few years ago.

A brand is about delivering on a specific promise- it is something a business is known for doing. As the above quote shows, it is hypocritical to pretend to promise one thing and do another in reality. Therefore if your company makes a promise and promotes itself as being one way, make sure all the company’s actions, whether online or offline, are consistent. That means if your company prides itself on quality- make sure everything down to the paper you send letters on, all reflect this quality.

Conclusion

A surprising amount can be learnt from Wilde’s comedy. So take these branding lessons and remember to always make that first encounter count.  Never dismiss the importance of a name, and finally, never forget the importance of being earnest.

One of the services we provide is branding consultancy, so if you are setting up a new brand why not have a preliminary no obligation discussion with us to find out how to go about it correctly?   Send us an enquiry to fix up a time to speak or buy a copy of Legally Branded which will tell you all you need to know about creating a stand out brand that is legally protected.

This post was co-authored by Chloe Smith

Can You Trademark A Colour? Cadbury Secures The Rights To The Colour Purple

Last month Cadbury managed to secure a trademark for its signature purple colour after a lengthy battle with Nestle. The outcome means that Cadbury now has the exclusive rights to use its own distinctive colour on its confectionary items.

Cadbury is not the first company to seek a trademark in a colour. Their court victory closely follows Christian Louboutin’s successful trademark of the distinctive red it uses on the soles of its shoes, Heinz has a trademark in the turquoise colour used on its baked bean tins, and Orange has a trademark in, you guessed it, orange.  

Should a business be able to own a colour?

Some people are sceptical about whether companies should have the ability to own a particular colour, believing the idea to be ridiculous. However the idea is not as ridiculous as it might seem. Firstly, despite Cadbury’s successful trademark registration, it by no means ‘owns’ the colour purple. Rather it owns that particular creamy purple that is associated with Dairy Milk (Pantone 2685C) and even this only covers milk chocolate products and within this category, chocolate bars and tablets, chocolate for eating, and drinking chocolate.

Secondly, a company’s right to trademark a particular colour boils down to one very important factor- brand recognition. The whole purpose of a trademark is to protect the identifying signs that can help customers determine the origin of a particular good or service. A name and logo are obvious identifiers, but colours and even shapes can also become a unique distinguishing factor for a brand.

What can colour add to your brand?

In the case of Cadbury, the colour purple used on its packaging was hugely indicative of the company itself. Take for example one of its most successful adverts.

The advert is very simple, featuring a Gorilla beating the drums to Phil Collins’s ‘In The Air Tonight’. Despite the fact that the product itself does not get featured till the very end of the advert, the ad displays the trademarked purple as a backdrop in the studio set.

This use of the colour perfectly demonstrates, not only how Cadbury was trying to tie the colour to its product in the minds of its customers, but also how it was able to immediately evoke its own brand in people’s minds simply through the use of colour.  Through this it was able to create an advert that was unusual as it lacked any obvious attempts to sell a particular product, only subtle visual symbols, but that still drove customers to buy its product due to the lingering feeling of happiness the ad created which was associated with the Cadbury brand.

The use of colour and visual identities can really be a great communicator of a brand’s values and messages that speak without any need for words.

The importance of visual identity

Think about when you go to do your weekly shop at the supermarket as an example. What are you drawn by when you pick up your purchases? The visual image of a product often plays a really important factor in driving a customer to buy something.

As Brand Republic states, ‘[visual] brand identity is more than a corporate label, it is a neurological mnemonic that influences what we think and how we behave’ It cites how some people show a preference for Coca-Cola purely on packaging alone, when in a blind taste test these same people might find the taste of Pepsi to be preferable. Therefore colour, when put into context, can be powerful in its ability to draw customers to one particular product over another. (If you want to explore this topic in more detail the book Visual Hammer by Laura Ries (Kindle, 2012) is a useful read for understanding the interaction between visual and verbal communication.)

How well-known are these brands’ colours?

See for yourself if you can identify some of these trademarked colours. (Answers listed at the end of the article)

Can you tell which department store uses this green?

 

 

 

 

Which luxury brand uses this blue?

 

 

 

 

Or on whose home-supplies would you find this yellow?

 

 

 

 

How can you secure an unusual trademark?

However, trademarking a colour is by no means a simple procedure. Whilst it is relatively easy to secure a trademark in a name or logo, more unusual trademarks, such as colours, shape or music can be difficult to secure as you need to prove that the element in question is synonymous with your brand in the mind of your customers.

Although a brand is much more than purely a logo, colour or even a name- these are the identifiers that can carry certain associations in customers’ minds.

We will be writing in a future blog post about the difficulties of obtaining unusual trademarks, and how Coca Cola managed to trademark its iconic bottle.  In the meantime our 7 Mistakes Book gives some tips to help inform you how to make the most of intellectual property assets.  Even if you get just one idea from it, it could prove invaluable, so why not downloaded it here.

Answers: Green= Harrods; Blue= Tiffany; Yellow= Post-it

Image of the Legally Branded book

IP Solicitor Reveals How Small Businesses are Wasting Money on Branding by Failing to Take Account of Legal Principles – Legally Branded September 11 Book Launch

Legally Branded is a new title by Shireen Smith of Azrights Solicitors, which fills a gap in the market by providing accessible, and easy to understand explanations about intellectual property law and brand law for business owners.

Azrights Solicitors is pleased to announce that pre-publication copies of Legally Branded, are available for review. The general release is on September 11th, with the book currently available for pre-order on AmazonContinue reading