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MIND

Building a successful brand

— a lawyer’s perspective

09072019
By Mathilda Nordmark and My Morinder

In today’s globalised and increasingly digital world, companies have the possibility to grow at an incredibly fast pace, but the competition between brands is higher than ever. To be successful, you must not only create great products but also operate under a clearly distinguished brand. Brands need to do more and more in order to reach their po- tential customers — much more than simply having a store front which grabs the attention of passers-by. Most brands are sold and marketed online and this is where potential customers are. Therefore, it is important to stand out in search results — brands must be in the right context and ensure that those who are interested can locate the brand and its products. Brand strategy and trademark protection go hand in hand. A trademark is the legal protection enjoyed by a brand. Trademark protection gives the brand owner exclusive rights, meaning that they can prevent anyone else from using an identical or confusingly similar mark on goods, packages, in advertising etc. in the course of business. Therefore, trademarks are essential for building brands as it protects the investments that are made in the brand. Any brand owner wouldn’t want anyone to copy or to profit from what they have built, right? For budding brand founders, we recommend starting with a branding and trademark strategy early on. In figuring out your trademark and branding strategy you should consider creating something original for your brand. When coming up with possible names, logos and marks you must consider whether or not the brand is protectable as a trademark. For instance, purely descriptive word elements cannot be registered as a trademark. Your denim company cannot be trademarked under the name ”Jeans”, etc. You must also consider whether or not the trademark is identical or similar to another company’s trademark. While it might seem tempting to some to choose a name or a logo which makes the customer think of another successful actor on the market, we strongly discourage this for two reasons. Firstly, if you make the mistake of using a trademark that can be regarded as confusingly similar to another registered trademark this could lead to costly infringement proceedings in court or opposition proceedings at the relevant trademark authority. Secondly, in the future, you may not want to be associated with the older brand. Maybe it will fall out of fashion, or maybe it will portray values that neither you nor your customers represent. A future rebranding due to any of these reasons can be costly both in actual costs and in relation to market recognition. We therefore recommend performing a clearance search on your trademark suggestions which gives you an idea of the availability of a mark for use or registration. This can be done by your trademark counsel who will provide you with an analysis of the risks associated with each candidate and suggestions on how to reduce such risks. When you have passed the clearance process, the next step is to figure out a registration strategy. You should consider where (geographically) and for what (for which products and services) you want to register your trademark. The strategy should take into consideration both where you are now and your expectations of brand expansion. Maybe you are currently only selling sunglasses in Sweden, but within the next few years you plan on reselling them all over Europe. Then you should probably consider whether you can register your trademark in the entire EU. However, do not choose an overly aggressive protection plan for your trademark abroad. It can be costly to ensure the protection of your trademark, so choose wisely. Trademark registration is possible to obtain in three ways: 1) National registration, 2) EU registration and 3) International registration. A national trademark registration is only valid in the relevant country and applications are filed with the local registration agency. As a national registration only grants the trademark national protection, the exclusivity offered by a Swedish trademark registration is limited to Sweden. An EU trademark protected in all 28 countries of the EU through one single registration and can be more cost and time efficient than registering nationally when more than one EU-country is involved. An international registration does not afford you worldwide protection but rather works as an administrative tool to simplify the process of applying in multiple countries. Through one application you can designate in which of the 92 jurisdictions which have signed up to the international system in which you wish to register your trademark. It’s good to know that in order to apply for an international registration, you are first required to have a national or EU trademark application or registration for the relevant trademark. Once you have obtained your registration, the hard work starts. You should then start strategizing regarding the enforcement of your trademark rights. It is your responsibility to enforce your trademark rights. We recommend you take an active role in pursuing your trademark rights, but be sensible when enforcing perceived infringement and misuse of your trademark. Taking legal action on every perceived misuse is likely to cost you. For you to enhance your possibility of creating a successful brand and trademark where you can start to build value I recommend the following three steps: 1) Choose something of your own — your own original brand will help you differentiate yourself, and don’t forget to register the domain name. Make sure that your customers can find you. 2) Consider trademark protection and a trademark strategy early in the process of choosing a brand, as not having a strategy will likely to cost you in the long run. 3) Make sure that while you grow, your trademark protection grows with you. This can include expanding protection to new brands, markets, products and services.