Earlier this month I had the pleasure of interviewing Sharon Givoni who is a Melbourne-based brand lawyer. We have worked with Sharon on a number of brand projects over the past few years. I was keen to ask her some of the questions we are regularly asked by clients:
What makes a defendable brand Sharon?
In my view Neil, it is one that is unique and distinctive. The whole purpose of a trade mark is to distinguish one’s goods and services from those other traders. It effectively acts as a ‘badge of origin’. From a legal perspective, the strongest brands you can have are invented words such as ‘Kodak’, ‘Xerox’ and ‘Kit Kat’.
I always advise my clients to be wary of using names that may be already in common use or descriptive. For example, common surnames that appear many times on the electoral role such as Jones and Smith may not be registrable as other people with that surname may need to use their own name. Geographical names can also be hard to get a trade mark for, if indeed the product can be produced in that geographical region. So ‘Queensland Bananas’ would be problematic, where as ‘North Pole bananas’ would be better, as bananas never grow in the North Pole!
At what stage in a naming project should the lawyer get involved?
Simply speaking, once you have come up with a new brand name, it’s important to get it legally checked out. My clients have been surprised time and time again on a name which they thought was completely unique had actually been taken by someone else.
Also, Neil, sometimes if someone uses or has requested a brand name that is too similar to your client’s proposed name even though it is not exactly the same that can stop the brand name from getting registered, or worse amount to trade mark infringement. The ‘Tsubi’ fashion label is a case on point. They had to change their name to Ksubi when they exported to the US after Tsubo challenged their name for being too similar.
So, clients also need to consider what countries that they may expand to in the future as well.
How long does it take until I can rely on a trade mark?
The answer to the question depends on whether the Trade Marks office raises issues with the mark. In some circumstances, you can apply for ‘expedited’ examination to speed matters up. In any event, the very minimum a trade mark can be registered in Australia is 8 months.
Is it true that you can register a sound?
Absolutely. Basically, anything that can function as a brand can be registered. This even includes colours, sounds, patterns and aspects of packaging. For example, Cadbury has recently protected certain shades of purple for chocolates and McCain has its well-known ping sound for ‘Ah McCain, You’ve done it again’ trade marked as well.
What are the main benefits of trade marking?
Trade mark registration gives you a monopoly over the mark Australia-wide. This means that you own the mark and can stop others from using it in the goods and services for which you have registered it for. You can also use the ‘®’ symbol as a ‘back-off’ sign. This is extremely valuable.
The interview was held on 15 February 2012. Sharon's focus is on turning ideas in assets and is more than happy to talk through ways of protecting your brand. Sharon Givoni Consulting: email firstname.lastname@example.org or www.sharongivoni.com.au.