Australia: Name of the game - selecting a new brand name

Last Updated: 27 November 2014
Article by Jonathan Feder, Caroline Judd and Simon Casinader

SELECTING A NEW brand name is one of the first important challenges that a new business faces when starting out. A strong, catchy and memorable brand name is the foundation from which a business grows and it will be the touchstone for consumers as they develop a relationship with the business. As a result, if you choose the right brand name from the start, you have taken a first positive step for your business. Choosing the wrong brand name can lead to (expensive) difficulties down the track.

Sometimes these difficulties might be tricky to pinpoint ahead of time. Canberra business Zarabumba was forced to rebrand after receiving a letter of demand from Spanish fashion powerhouse Zara. Other recent high profile disputes discussed below also highlight that appropriate searches must be done before launching a new brand to safeguard the business against a forced rebrand in the future.

Champagne Jayne and Bear Blades - A timely reminder!

Rachel "Champagne Jayne" Powell's passion for Champagne has helped her to become an award-winning wine expert, broadcaster, journalist and presenter. However, Ms Powell's "Champagne Jayne" brand has put her at loggerheads with the trade organisation established to manage the common interests of the growers and the Champagne Houses behind the drink she loves so much.

The Comité Interprofessionnel du Vin de Champagne (Comité Champagne) represents the parties involved in the production, distribution and promotion of Champagne. One of its mandates is to prevent the misuse of the Champagne name, and it currently has its sights set on Ms Powell.

The Comité Champagne has challenged Ms Powell's right to operate under the name "Champagne Jayne" on two fronts in Australia. The first is by opposing her trade mark application for "Champagne Jayne" which covers a variety of entertainment services and the second is by filing a proceeding in the Federal Court of Australia alleging that Ms Powell has engaged in misleading or deceptive conduct. Both of these matters are currently awaiting hearings with the Federal Court proceeding listed for trial in mid-December 2014. Although Ms Powell may ultimately be successful in defending either or both of these proceedings, there is no doubt that they will have been costly distractions for her business.

A similar story has surfaced recently in relation to UK-based knife manufacturer Bear Blades which received a letter of demand from Bear Grylls Ventures, the company associated with TV adventurer Bear Grylls. In the letter, Bear Grylls Ventures requested that Bear Blades change its name to remove the reference to ''bear'', withdraw its trade mark application for its Bear Blades logo and cancel the registration of domain name In order to avoid the inconvenience of engaging in a protracted dispute with Bear Grylls Ventures, it appears as if Bear Blades might change its name and comply with the requests.

There are ways to check whether the brand name you have selected is likely to encounter any issues.

  1. Does the brand name infringe any registered trade marks?

A trade mark is a badge of origin that is used to distinguish the goods and services of one trader from those of another. If a trade mark has been registered in Australia, it appears on the Australian Trade Marks Register and gives the owner a monopoly over the mark (or a similar mark) in relation to the registered goods or services (or similar or closely related goods or services). If the name you have chosen is too similar to a pending or registered trade mark, and covers the same or similar goods or services, you might infringe this earlier registered mark if you decide to use your name. If you intend to trade outside of Australia, you need to ensure that your trade mark does not infringe in each country in which you intend to trade. Trade marks are territorial and what is OK in one country, might be infringing in another.

  1. Does the brand name infringe the common law rights of third parties?

If the name that you have selected is the same or similar to a name that a third party has established a significant reputation in in Australia, even if the third party does not hold a pending or registered trade mark, the use of that name may expose your business to allegations of misleading or deceptive conduct in contravention of the Australian Consumer Law or the tort of passing off.

A Court can order a business to pay a sum of money in damages (and costs) and order that business to rebrand if a third party can establish any of the legal claims above.

If you want to start your business off on the right foot, perform your due diligence on your brand name before you launch and invest in your business' growth rather than defending legal proceedings.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

K&L Gates has been awarded a 2012 EOWA Employer of Choice for Women citation acknowledging our commitment to workplace diversity.

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