Branding Trends From a Lawyer’s Perspective — Introduction: Out With the Old, in With the New
5 October 2020
Author: Sarita Schröder
In this blog series, we highlight prominent branding trends and consider the implications that they may have on the legal protection of a brand. Branding is, of course, a broad concept that encompasses everything from product to promotion and beyond. However, for the purposes of this blog series, we use the terms ‘brand’ and ‘branding’ in a narrower sense — primarily synonymously with ‘visual identity’.
You can find links to the other parts of this blog series at the end of this post.
How Rebranding Can Impact Your Brand’s Trademark Protection
When cared for properly, trademarks — like diamonds — are forever. Although trademark registrations generally need to be renewed every ten years, this can, in principle, be done indefinitely. For example, in Finland, some of the oldest trademark registrations that are still in force are the result of applications filed over 120 years ago.
A key requirement for maintaining trademark protection is that — in addition to paying the required renewal fees — the trademark must be put to genuine use in connection with the goods and services for which it is registered. In practice, this means that the trademark must be used externally with the aim of creating or preserving demand for the relevant goods and services. If the genuine use of the trademark is ceased for a sufficiently long period of time (five years in the EU), third parties can demand the revocation of the registration. Alternatively, it may prove impossible to enforce the trademark even if its registration remains in force.
According to various sources, businesses rebrand about every 7 to 10 years on average. Rebranding typically entails taking certain logos or other brand elements out of use and replacing them with others. As registered trademarks cannot be amended and as applications for new trademarks are treated as new applications even if they have some elements in common with earlier registrations belonging to the same owner (e.g. the same dominant word element), a fundamental challenge that rebranding poses is ensuring that it does not weaken the legal protection that has been built over the years or decades for the brand.
In the long term, it can be challenging to fully maintain all earlier trademark registrations for a brand that has been revamped. Moreover, trying to do so would not necessarily be warranted. However, careful planning and a forward-looking trademark strategy can help to ensure a sufficient degree of continuity despite the fact that rebranding will almost inevitably take place from time to time. Below, we share three tips in this regard.
Three Tips for Future Proofing Your Trademark Portfolio
Identify the key elements of your brand and aim to protect them separately — in addition to protecting the brand as a whole.
In addition to registering a trademark for your logo, file a separate application at least for your brand name as a word mark. Moreover, look into whether you could also trademark, for example, the symbol, monogram, or other figurative element used as part of or as an alternative to your brand’s logo, your brand’s signature colour, or some other distinctive feature for which your brand is known. This way, even if your brand as a whole evolves over time, you will already have protection for its individual elements that may remain constant.
Regularly reassess the need to complement your trademark portfolio with new filings.
Rebranding does not always take place in a dramatic fashion with everything being overhauled more or less overnight. Instead, small changes often creep in along the way. For this reason, it is important for the branding and trademark experts within an organisation to regularly sit down together to go over how the brand is evolving and to discuss whether new trademark applications should be filed to account for the tweaks being made. Ideally, these meetings should take place well in advance of any changes being decided on and implemented, so that the trademark experts can help the branding experts ensure that possible legal risks associated with the changes can be avoided or at least mitigated.
Keep your heritage alive by retaining at least some use of your historic logo or other brand elements for the relevant goods and services.
For example, despite dropping ‘Yves’ from its name in connection with a brand refresh some years ago, Saint Laurent continues to use its iconic ‘YSL’ monogram as a feature on, among other things, many of the handbags and other accessories in its collection. This means that, if necessary, Saint Laurent should continue to be able to show genuine use of the trademarks protecting said monogram — at least with respect to some of the goods and services for which they are registered.