Tracking and recording decisions relating to new trademarks and branding is a vital but often overlooked part of the IP management process. In the first article of our new series on brand development, Vanessa Harrow explains why and offers a practical guide on where to start.
Most businesses know how critical trademarks and branding are to market success, but not every company understands the value of recording the brand development process that creates those important assets.
From the moment they wake to the time they sleep, the average consumer interacts with thousands of trademarks, designs and other forms of IP every day. The more efficient and consistent your brand development process, the more able you will be to stand out from your competitors in a crowded market.
Why capture decisions related to trademarks and branding?<
Brand development can be a challenging and time-consuming process for many businesses, with responsibility often dispersed among different product owners, business lines or branding teams. By establishing tools or workflows for making and recording decisions, brand owners can not only streamline the creation and expansion process for launching new brands or expanding existing ones into new markets – they will also be capturing vital knowledge that will help them to avoid conflicts, prove evidence of use and temper enforcement activity in decades to come.
While the process and workflow will vary according to the size and nature of your business, certain common factors come into play for all types of brand developments. These include:
- Budget and KPI setting for product launches/expansions;
- Creating a shortlist of ideas for a new brand name or brand identity;
- Assessing commercial (and cultural) effectiveness against the target market or customer;
- Legally clearing shortlisted names to ensure they are free for use and registration;
- Securing protection (and enforcing) various elements of the IP before launch;
- Organising ownership structures for the IP rights associated with the brand; and
- Monitoring future development and changes to the brand.
Important decisions are taken at every brand development stage, from which Pantone colour to use for a product logo to which markets to enter in the short or long term. Often the reasons for those decisions are not well documented and, as time passes and personnel change, the rationale behind them can be lost. This can present problems and risks for brand owners.
Reasons to record decision-making aroundtrademarks and branding
There are many instances where it is beneficial to have a clear record of the decisions taken during the brand development process. For instance:
Avoidable conflict
Imagine that when you first established your brand name and logo in 2005, a clearance search identified a potential conflict and obstacle that your team had to work around to avoid. Before you could move ahead with the proposed launch, you had to carefully redesign your logo to include elements that differentiated your brand from the earlier rights. You may also have had to sign a co-existence agreement that excluded you from certain branding elements, markets or geographies.
By 2023, however, the teams that created that brand or agreement have all left, and the new marketing team decides it's time for a logo redesign. Unaware of the earlier conflict, they remove all the elements that were so carefully introduced in 2005.
The earlier rights owner, identified in the original search, is not happy about the changes. Not only are they seeking to block the new logo, but they are also considering suing for damages resulting from any potential infringement or breach of contract.
Evidence for disputes
Your brand is over 20 years old, and you decide it's time to expand into China. Unfortunately, a third party has already filed an application for your logo, which is blocking your application. Any use in China would also constitute an infringement of this third-party right.
Unable to resolve the matter amicably, you decide to take it to court. To help win your case, you are asked to provide evidence showing the origin of the brand, including how it was created, developed and grown over the years. All those involved in the original creation of the brand have left the business, and there is no physical evidence to explain why or how the brand was created.
Tempered enforcement
When your brand was first created, the business was advised that it was not particularly distinctive and the market was already very crowded with similar marks. Despite this, the name was cleared for use and the business decided to move ahead as the name resonated well with the target market. The business was made aware that any registration it secured would be quite limited in scope and understood that its ability to enforce the mark against third parties using a similar name would be equally limited.
Five years later, everyone involved in the original brand development has moved on from the business, including the external IP advisers. The IP is now managed by the marketing manager, who has not been warned of the limited scope of rights. After setting up a trademark watching service, the marketing manager starts to see lots of applications for similar brands and begins trying to take enforcement action against those applications.
The best case scenario is that the marketing manager incurs some costs seeking legal advice but ultimately decides not to take any action. In a worst-case scenario, the business could be drawn into a complex legal dispute with a third party, with a potential counter-attack threatened and a high legal bill to try and resolve the issue.
How to capture decisions related to trademarks and branding
As we've covered in this article, tracking and recording your decisions from your brand development process is an important, but often overlooked part of IP management. The good news is that digital tools now exist to take the headache out of the tracking and record-making process. These include Questel's Brand Proposal solution, an innovative and collaborative software tool that not only tracks and documents decisions, but can also improve the workflow and collaboration of the various parties involved.
Whichever approach you choose to use, having a clear process and documenting the decisions will be invaluable for your current and future business, allowing greater commercial, legal and financial certainty and accountability in the journey of your brand.
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.
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