How to Choose and Register a New Brand Name

What You Should Consider When Deciding on a New Brand Name for Registration

Choosing a new brand name is a business-critical decision with legal consequences that extend far beyond marketing. While creative appeal may attract customers, legal viability must be the foundation of any new brand identity.

In the United Kingdom, trade mark law protects distinctive signs used in commerce in order to prevent confusion in the marketplace.

Failure to approach brand creation with legal scrutiny can result in trade mark infringement, wasted marketing spend, and, in some cases, complete rebranding exercises.

Here we outline the core legal principles, strategic considerations and practical steps businesses must take when selecting and registering a new brand name in the UK.

The legal function of a brand name

A brand name serves as the trade mark, which is a legal indicator of trade origin.

Under Section 1(1) of the UK Trade Marks Act 1994 (‘the Act’) a trade mark must be capable of being represented on the register and of distinguishing goods or services of one commercial undertaking from another.

This legal function goes beyond aesthetics. A registered trade mark is a property right, enforceable against third parties, capable of licensing for royalties and a valuable business asset.

Common forms of trade marks include defined words (‘RUNWAY’), invented terms (‘ZYNTRA’), stylised logos, slogans, shapes, colours or any combinations of these elements.

A mark must not merely describe the goods or services; it must act as a ‘badge of origin’.

Consumers need to recognise it as a product or service emanating from a seller’s business.

This is the driver for repeat custom.

Inventive vs descriptive: a foundational tension

Most companies have legal and marketing departments. Points of contention often lie between them.

The marketers will think up new brand names but they do not always get what they want because legal advisers will usually have the final say. In business, the head has to rule the heart.

Marketers often like names that convey function or features.

If the chosen name strays too far over the edge, such as ‘LEEKPROOF’ for a leak-proof lid, this can fail from a legal perspective.

Names that directly describe the product or its characteristics fall foul of Section 3 of the Act and are often also be said to be devoid of distinctive character.

This means that a brand name of this type cannot be registered. In the absence of a registration there is no ability to stop a competitor using the same name for their own similar product.

Strong marks are invented words or phrases. They say nothing about the goods or services yet stick in the memory.

They can sometimes be harder to get off the ground at first because the consumer will have no idea what the mark represents unless it is seen in association with the product or service.

But later, with consumer recollection, an invented mark can become synonymous with its product or service.

Fanciful or invented brand names can also succeed because they are unique, abstract and carry no descriptive baggage.

These are everyday, commonly understood words but which have no association with the goods or services they represent.

Allusive marks are those that hint at a feature of the product or service (or hint at what that product or service is), but without describing it directly. These can be very successful because the alluded-to feature may draw customers in.

Even though allusive marks are suggestive in some way of product features carried by their name, they do not directly describe the products and the features associated with them.

So, good trade marks tend to fall into these three main categories:

Strong (invented):

• EXXON for petrol
• KODAK for cameras
• MARMITE for savoury spread

Fanciful (no association):

• ROSES for chocolate
• ANCHOR for butter
• EGG for financial services

Allusive (suggestive):

• CHEWITS for sweets
• JAGUAR for cars
• HABITAT for furniture

Logos can fall into each of these categories as well:

• The Audi ‘four rings’ (invented)
• A black horse (fanciful, for Lloyds TSB banking services)
• A puma (suggestive, for running shoes)

Early clearance: the most critical step

Before finalising any brand name for launch, a clearance search should always be conducted.

Failure to do the research could result later on in the infringement of an earlier right, leading to a hasty rebrand and a heavy cost outlay.

Research of this type should include:

• A fully-comprehensive trade mark register search (in the UK and in relevant jurisdictions if expansion is planned).
• An Internet search for identical or confusingly similar use.
• Domain name checks.
• Company register checks.

Of most importance here are trade mark register searches, but the others should not be ignored

Trade mark searches should cover not only checks for identical words, but for phonetically-equivalent marks as well as similar marks.

A trade mark does not have to be identical to infringe. Reasonable similarity can sometimes be enough.

Where similarity of the proposed mark with an earlier right is found, it is important to consider the respective goods and services. Are they the same? Are they similar? Would they overlap commercially in practice?

Weighing all this up will lead to an overall assessment of a likelihood of confusion. This will determine:

• Whether the mark is free to use; and
• The chances of successfully registering it.

Many brands (large and small) make the fatal mistake of paying no or little attention to searching before they launch. Some learn the hard way.

The importance of trade mark searching cannot be underestimated.

Trade mark attorneys excel in this area because they have the expertise in analysing trade mark searches and assessing the risks.

Distinctive character: absolute grounds for refusal

A trade mark may be refused registration on absolute grounds under Section 3 of the Act. This includes marks that:

• Are descriptive (e.g. ‘EASY PEEL’ for fruit).
• Lack distinctive character.
• Have become customary in the relevant trade (e.g. ‘ASPIRIN’ for pharmaceuticals)
• Mislead the public
• Contravene public policy or morality

However, even if a name is strongly allusive or is descriptive, it may still be registrable in the UK.

This is because the UK Intellectual Property Office (UKIPO) will accept a prima facie non-distinctive or descriptive mark for registration if it can be established that the mark has acquired a distinctive character as a consequence of the substantial commercial use that has been made of it.

In other words, if it can be shown that through its extensive use the public have come to recognise the mark as a brand name with a particular trade origin, then it can be registered.

The application and examination process

A UK trade mark application must include:

• A representation of the mark
• A list of goods and/or services categorised by class
• The applicant’s name and address
• A declaration that there is a bona fide intent to use the mark

Filing broader specifications can often ‘future-proof’ rights for expansion, whilst at the same time securing rights in the mark for current commercial interests.

Once filed, the UKIPO will issue an examination report addressing any absolute grounds and, where appropriate following a cursory search, highlighting any earlier potentially conflicting marks.

If no insurmountable issues arise, the application is published for opposition.

Opposition: managing third party risk

Following acceptance, the application is open to opposition for a two-month period, which is extendable by one additional month at the request of any interested party.

The most common basis for opposition is similarity to an earlier registered mark.

By way of a very simple example, the owner of an earlier UK right for ‘GO-DELI’ might want to oppose an application to register a mark such as ‘GO-DELLY’ if the later application covers goods that are the same or similar as the goods protected under GO-DELI.

It is therefore important to assess any potentially conflicting marks highlighted at the examination stage because one or more of those could be the subject of a formal opposition challenge later.

Although many trade mark oppositions are filed every day in the UK, they are not all equal on merit.

Some are certain to succeed, some will have no hope at all of success whilst all others will fall at various places in the middle of the two.

Oppositions actions can be won and applicants can also succeed in fending them off. In all other instances, settlements are commonly reached before any final decision is taken.

Many settlements may be based on little more than agreement by an applicant to modify its specification of goods or services and, perhaps, to formally agree in writing not to use its mark in a certain commercial field once registered.

There are many different ways to settle. Again, this is part of a trade mark attorney’s core expertise.

Maintaining trade mark rights

Once a trade mark is registered, a certificate is produced which is proof of ownership of the trade mark right.

Trade mark registrations must be renewed every ten years and can last indefinitely.

A mark does not need to be used, but if it is not used for five consecutive years following registration (or for any uninterrupted 5-year period thereafter) it becomes vulnerable to cancellation for non-use.

Only an interested party would have any motivation to want to cancel a registration for non-use. There are various reasons why a cancellation might be filed, but they are brought about as a consequence of an ongoing dispute between two parties.

Should that never happen, the mark will stay on the register for as long as the renewal fees are paid, every ten years.

It can be said with reasonable certainty that there are probably thousands of registered UK marks that have either never been used, or were in use once upon a time before that use was curtailed and never resumed.

To sum up

The creation of a new brand name is as much a legal exercise as it is a marketing one.

Invented and allusive names offer the greatest potential for enforceable protection. Descriptive and generic names may serve a marketing purpose but often provide no legal exclusivity and are difficult to enforce.

All businesses, regardless of size, should adopt strong naming conventions, prioritise clearance searches and register their trade marks early.

The golden rule is this: register the mark you use and use the mark you register

If you would like further information on this subject or wish to discuss the launch of your new brand then get in touch with SH&P today.