Thinking of rebranding? Avoid legal headaches with these five points

If you don’t know what you’re doing, rebranding can be fraught with risks and problems that can affect your business long after the relaunch party. Chris Round and Monica Lillas have some helpful tips to help you avoid legal headaches and copyright nightmares.

chris round headshotSo you’ve decided it’s time to rebrand? That’s great! Whether it’s a new name, a fresh logo or a website redesign, rebranding is an exciting and busy time for any business.

However, to execute a successful rebrand it’s important to do your homework first to avoid legal headaches and issues down the track. Here’s five tips to make sure you do it right.

 

1. Trade mark searching

monica lillas headshotMake sure you have the right to use the name you choose. Before you start rebranding, consult a qualified intellectual property lawyer and arrange for a search of the Australian trade mark register.

If there is already another businesses out there with a similar name or logo selling the same or similar goods or services as your business then you could be in trouble. Existing trade marks may prevent registration of your new business name or logo.

Worse still, your competitor may bring legal proceedings against you or your business for trade mark infringement or misleading and deceptive conduct, which can be costly and result in the need for a further rebrand all over again.

The expense of trade mark searching at the start always dwarves the costs of defending your brand when a letter of demand arrives.

 

2. Domain name availability

Check to see if the domain name you’re interested in is available. Contact an Australian domain name registrar to conduct the relevant searches. With all the new domain name extensions now available, it’s also a good idea to conduct searches to make sure the domain name you’ve selected is sufficiently different from your competitor’s websites so your customers don’t get confused.

Another strategy is to purchase a variety of domain name extensions (such as .com, .net, .shop, .com.au) to prevent competitors from registering other versions of your domain name and to redirect customers to your website, even if they mistype it.

It’s also a good idea to choose a domain name that’s short and easy to type so your customers are more likely to be able to find your business online.

 

3. Registering a business names

Make sure you can register the business name you’ve chosen. In addition to trade mark protection it is important to register a business name. A business name is a name or title under which a person or entity conducts a business. It is a legal requirement if you carry on business in Australia and you are not using your own name.

Registering a business name also prevents other traders from registering an identical business name. Search the business name register using ASIC Connect or otherwise consult an intellectual property lawyer who can assist you with these searches.

 

4. Protection of logos

Often a rebrand involves a change in logo. Make sure that any new logo created is an original design and does not simply copy the logo of another trader, which could leave you and your business exposed to claims of trade mark and copyright infringement.

Ensure that the business that designs your logo assigns ownership in the copyright in the logo to you.

Also, don’t forget to file a trade mark application to protect the logo to ensure that no other businesses can use that logo for similar goods or services. Again, you should arrange for trade mark searching before rebranding commences so that you can ensure the new logo can be protected.

 

5. Global markets

Think globally. If your business operates in more than one country it is important to conduct trade mark searches internationally, to ensure the rebrand can be progressed in all relevant markets without issues. Make a list of all the jurisdictions in which your business operates and provide these to an intellectual property lawyer to conduct the relevant searches.

Many leading international law firms now have offices in Australia, and are able to arrange global trade mark searches.

 

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Chris Round is a partner in the intellectual property group at K&L Gates. 

Monica Lillas is a lawyer at K&L Gates.

 

NOTE: This article is for informational purposes and does not contain or convey legal advice. The information herein should not be used or relied upon in regard to any particular facts or circumstances without first consulting a lawyer.

 

Further reading

 

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