05 October 2017
The phrase brand and design clearance captures a whole array of things, but fundamentally refers to the checks that a company runs during the stage at which it is creating or establishing its brand and/or designs. In this podcast, Salmah Ebrahim discusses the dos and don'ts when it comes to brand and design clearance.
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Kate Swaine: Hello. Welcome to Gowling WLG's podcast on brand and design clearance. My name is Kate Swaine and I am Head of the Brands sub-team that sits within our Intellectual Property team here at Gowling WLG. I am going to be talking to one of our senior associates, Salmah Ebrahim, about brand and design clearance, the dos and don'ts and the issues we typically advise clients to be alert to.
So Salmah, please can you tell us what we mean by brand and design clearance?
Salmah Ebrahim: The phrase brand and design clearance captures a whole array of things but fundamentally it refers to the checks that a company runs during the stage at which it is creating or establishing its brand and/or designs. Brand clearance, for example, can cover anything from checking that the proposed name for a new product is acceptable in light of trade marks or company names that already exist in the market, to ensuring that any marketing or advertising relating to that product complies with the advertising standards set by regulatory bodies such as Advertising Standards Authority. Similarly, design clearance can cover anything from checking that a proposed design has not already been thought up by a competitor or registered to ensuring that the design meets manufacturing and safety standards.
Ultimately, trying to reduce or ideally eliminate any exposure to a legal claim being brought in the future is at the heart of brand and design clearance. Our intellectual property team here at Gowling WLG works with its diverse range of clients to manage or eliminate any risk of an intellectual property right infringement claim being brought in the future, as a consequence of the brand or design a company has developed.
Kate Swaine: Who should be involved in brand and design clearance?
Salmah Ebrahim: The saying that too many cooks spoil the broth certainly does not apply in the context of brand and design clearance. Our advice to clients is to always try and ensure that all relevant persons from the business are involved and spoken to as soon as the brand and design process begins, and this includes their legal team, whether it be their in-house legal counsel or external lawyers such as ourselves. The reason for this is quite simple: lawyers have been trained to spot things that may not necessarily be an issue immediately, but may become an issue by the time a product or design is taken to market.
So for example, someone in your marketing team may come up with a brand name that sounds brilliant on paper but has actually been a registered trade mark of a company that consistently enforces its rights, exposing your company to the high risk of not only a trade mark infringement claim being brought, but also the opposing company succeeding and a re-brand and costs award in their favour being ordered by the court. Involving lawyers in the brand and design clearance stage, in addition to all the usual players, helps minimise this risk and the costs to a business in the event that a claim is brought against it. It is also important to bear in mind that companies' creative processes often lead to content that is capable of protection provided certain requirements are met and this is another important way in which value can be added to your brand and design with the assistance of your legal team.
So for example, the design team in a company may think up a design that could benefit from, and be commercially exploited through, the design registration process but it is important that a design is recorded in a certain way, exhibits certain degrees of innovation and is registered within a set time period in order to be registered. We always flag to clients as well that it is important that the regulations relevant to their industry are borne in mind, and sometimes a specialist in this field will need to be involved in the brand and design development process as well.
Kate Swaine: In the context of brand clearance, what are the main checks you typically advise a business to do?
Salmah Ebrahim: As I mentioned, brand clearance is essentially a mini infringement analysis, trying to look to the future and whether third parties will likely take issue with your proposed brand or product, in light of their brand and the rights they subsequently hold. The main check we do with any new brand or product is checking whether the proposed name is already a registered trade mark of a third party. Subject to where the client is planning to operate, we typically run checks using UK and EU databases. We will also sometimes involve legal teams from countries in the States for example, as their legal system is different to ours and we are qualified to advise on UK law only. We also check that the proposed name is not already the name of a company or that, to the extent we are able to check via search engines like Google, that the proposed name or branding does not encompass or mimic the product or general product get-up of a third parties. It is always important to remember that a 'clear' check on a trade mark database does not necessarily mean a name or form of branding is ok to use: the databases are themselves limited when it comes to providing an accurate picture of every brand that is out there and unregistered rights, that exist in the get-up of a company's product, may still form the basis of a passing off claim.
Finally, the other main check we run is on domain names, which are sometimes forgotten. It is important to bear in mind that it is possible for all of the other checks we run to come back clear but for a third party to have already purchased the domain name you would ideally like to use. This is especially relevant for international companies who need to check that multiple domain names across multiple jurisdictions are in fact available. Some jurisdictions, are notorious for 'trade mark squatting', whereby a third party purchases a domain name that it will only release to a company in exchange of money and court systems do not always rule in favour of a brand owner in these circumstances should they choose to take legal action.
Kate Swaine: And design clearance, what are the main checks you typically advise here?
Salmah Ebrahim: We always stress the importance of accurately recording the date that designs come into existence as a starting point as this will form the basis upon which you assert your own design right and forms the basis of the documents you will submit if you did go down the path of formally registering your design. The database checks that are done in a brand clearance context are similarly necessary during the design clearance process. Both the UKIPO and EUIPO maintain databases that list designs that are registered and consequently it is important to check these to assess whether there are any registered designs to be concerned about and which may be used to bring a design right infringement claim against you.
Kate Swaine: So you've done the checks you mention, how then do you work out whether a client can proceed with a brand or design development?
Salmah Ebrahim: Once we have run the kinds of checks I mentioned, we then carry out a risk assessment which is ultimately the end goal of any clearance project – assessing the level of risk proceeding with a brand or design development. Essentially this is a twofold review, consisting of a legal and litigation risk assessment and a commercial risk assessment.
The legal and litigation risk assessment asks "what are the legal concerns identified and legally speaking, what are the chances of a claim succeeding based on the facts before us" whilst the commercial risk assessment asks "bearing in mind the legal risks identified, what are the commercial risks of proceeding taking into account the commercial environment a client is operating in and in particular, the appetite of any third parties identified for litigation". Even where the legal and litigation risk has been identified as being 'low' because a claim would struggle to succeed if ever brought before the courts technically speaking, it is not uncommon for the risk level overall to be deemed medium/high, if having carried out the commercial risk assessment, a third party known for aggressively protecting its own brand has been identified.
It is important therefore not only to review and determine the legal and litigation risk separately to the commercial risk, but to then weigh up the two and review how they will likely interact. Doing so will determine what the overall level of risk is and it is always worth bearing in mind that the one may outweigh the other and elevate or de-escalate the overall level of risk proceeding with a particular brand or design development. It is important to always bear in mind as well that nothing is ever risk free and ultimately, any brand or design clearance project is about identifying risk and then working out if that risk can be managed in a way that can be 'lived with' and that leaves a business comfortable, commercially speaking, about bringing a brand or design development to market.
Kate Swaine: And finally, if you were to sum up our top five tips when it comes to brand and design clearance what would these be?
Salmah Ebrahim: Do involve your legal team in the creative process of any brand, product and/or design development from the start. Doing so will make the process so much smoother and allow any risks or issues to be identified sooner rather than later. There is nothing worse than seeing a client having to pull a brand or product development because of a legal issue that could have been managed just before they are about to go to market.
Do bear in mind that you do not operate in a vacuum and, just like you are concerned about your intellectual property rights, so will third parties be - some of whom will enforce their rights vigorously. Always make sure that you have done the necessary checks to ensure that your proposed brand or design development will not inadvertently bring an intellectual property right infringement claim to your doorstep.
Do consider whether the risk identified is worth taking in light of the benefit predicted from the development of a brand or product. Whilst this will unlikely be the case in medium to high risk cases, for low risk cases, it is not entirely impossible for a business to proceed with their brand or design development provided they have taken steps to mitigate the risk identified. For example by using a proposed name as a tagline and moving away from it featuring predominantly on pack, as well as ensuring an established brand/company name is used as the prominent term that features on pack. Risk can also be managed to an extent by ensuring there are no similarities in the general 'get up' of a new product to those that are already on the market.
Don't assume, if you are a big and well-established brand that this will protect you. If anything, the more established you are, the greater the risk of a third party taking action against you if they believe they have a claim, in the belief your 'deeper pockets' give them a better chance of receiving some kind of financial compensation. Equally never assume that you will unlikely ruffle any feathers because you are a relatively small outfit: the more a third company has invested in its brand, the more it is likely to take issue with any perceived infringements of its intellectual property rights.
Do keep an eye on your market and feed any concerns back to your legal team. Nothing is ever stagnant or stationary in the world of brand and design clearance and something which may not be a concern today for a particular project, may become a high risk concern for another tomorrow.
Kate Swaine: Thank you Salmah. We hope you have found this podcast useful. If you have any queries on the topic of brand and design clearance or require any assistance to carry out the checks we have mentioned today, please contact either myself or Salmah who will be delighted to assist you further.
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