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
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
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
bearblades.co.uk. 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.
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.
Does the brand name infringe the common law rights of third
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
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
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
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