What's in a Name?

What's in a name? Plenty...

Have you ever been so bored that you've read the fine print on a can of Coke? I have. In fact, I've studied Coke cans very closely as protecting trade marks is what I do – and a can of Coke illustrates how important a name or trade mark is.

The Coca Cola Company doesn't bother actually making bubbly drinks, they leave that to the various bottlers around the world. So what does the Coca Cola company actually do? In short – they licence their trade mark, the unique name for their product. The registration certificates for the Coca Cola trade marks registered around the globe are probably the most valuable pieces of paper in the world!

Why is this relevant to you? Let’s assume you have a concept, a working title for a product and you have even registered a business name to 'prove you own the name'. Let’s say you've created a sugar free donut which you have named 'Krispie Free'. You are very excited about the product but you can’t protect your recipe because a friend of yours says you “can’t patent recipes”. You visit G&C to help you pull all the strands together in preparation for getting your product on the market and that all in all, you think you have pretty much all the bases covered.

No – first thing is that the business name does not give you any rights – it is simply a name that you can trade under which isn’t your own. A business name does not give you the right to use the name on a product and it certainly doesn’t help you stop anyone else using a similar or virtually identical name.

The only way to create rights which guarantee that you can use the name on a product and which enable you to stop competitors copying and/or getting too close to your name is to register it as a trade mark.

Before you look at creating positive, valuable rights for yourself though, you must ensure that your name can be registered. You need to get a search of the Trade Marks Register done. A search, if done properly, will answer these two questions:

(1) Is your proposed trade mark too close to any pre-existing trade marks? In our Krispie Free example the answer is probably yes, Krispie Kreem would prevent your trade mark being registered.

(2) Is it “legally” registrable? Let’s assume your proposed trade mark passes the first test and is not too similar to earlier marks. It still needs to pass the legal test of which trade marks cannot be registered when they are generic names or too descriptive of what the product is or does.

If you get a search done properly, you will know two things by the end of the process. The first is that you will not be treading on anyone else’s toes (and get sued for infringing their trade mark) and secondly, that your trade mark can be registered.

So, the first step of making sure you can get your own rights registered is a vital one. When you do get a trade mark registered it can be registered and renewed for 10 year periods. Your trade mark will last and endure when competitors have copied your recipe. Your trade mark will still be there surviving changes in packaging styles. With each sale, the value of the trade mark increases, your goodwill in it increases and so does the value of your business.

In fact, a registered trade mark goes on your balance sheet as an asset and in time, you can borrow money with a trade mark registration as security, just as the Coca Cola Company did.

So whatever you do – if you want the benefits of creating a great brand, make sure at the start that it's yours and that you can register it.

John Hawker is an intellectual property lawyer who advises G&C and their clients
on the issues regarding registering and protecting brand names.