Learning the rules of the name game

SBHD: Naming a company, service or brand can be a huge gamble, but some risks can be removed if designers get the legal essentials right, advises Jonathan Mercer

Last November a story appeared in the press demonstrating the importance of naming. Two months after spending a reputed ú5m on a glamorous relaunch (including a new name), Britain’s third largest tour operator (Owners Abroad in a previous incarnation) was given only 12 weeks to change the name of one of its subsidiaries.

The challenge to First Choice Tours came from one of the 130 companies which had already established use of the name – a small ski and business travel company based in Kent which had registered the name 1st Choice Tours three years previously.

Most design groups are aware that by simply carrying out a search at Companies House, this type of mistake can be avoided. But that’s about where general design industry knowledge of the issues relating to creating names stops. In a business where many graphic design groups say they offer brand and corporate naming as a separate and distinct service, this ignorance is foolish.

It is not as if designers are unaware of the importance of a good name as the first and most powerful expression of a brand or company. A good name can act as an inspirational tool for effective and creative design ideas – how much easier a task to design the corporate identity for a company with a name like Mercury, Apple or Energis than Dixons, the Co-op or National Provincial.

The point is that naming a new company or service is more than just a question of creative inspiration and marketing know-how.It requires in-depth knowledge of legal systems and thorough research (thorough means timely and at times expensive; not half an hour at Companies House or the Trade Marks Registry).

Most designers might come up trumps on the creative and marketing side, but fall at the first legal hurdle. What’s more, there is no proprietary system in existence which will allow designers or their clients to understand and solve the problem of naming overnight. It is simply a question of trying as hard as possible to understand the implications from a legal and a creative perspective and of going as far as possible to do the right research up front. And, essentially, you do need to use a company which provides legal advice.

To achieve all of this you need time. It takes time to create a name that is unique enough to be protectable and registerable, and to make sure that the name is not infringing any existing names – registered or not. Under English law, ignorance is not a defence.

To give a hypothetical example: “Whyto”, the fab new name you have just thought up for a brand of toothpaste, and which you have used on new pack designs and through extensive brand research, is already in use, unregistered, by a small manufacturer in Ireland. If your client is planning on launching Whyto in that market you need to know that beforehand – and you may need to change the name, rebrand and redesign in order to prevent even more costly legal battles further down the line. A Common Law search would help, but it would be more helpful to know all the registered and unregistered toothpaste brands (and oral hygiene products) in the market you are targeting before you start the naming and branding process. This may seem obvious, but it very seldom happens.

Before you consider generating a name you need to know how and where that name will be used, and understand its full range of applications and geographical scope. If it’s to be applied to a range of products or services, you need to know at the outset what they are and research each trademark class to which it applies.

This is especially true in the case of naming a new company or service where the name may be applied to a series of different communications – from the overall corporate identity on the letterhead to specific products. It is also crucial in the case of pan-European branding, where, even if a product is to be launched in only two countries initially, it is important to have a strategy which incorporates the whole future market.

Infringement varies according to the use of the name, so, again, it is of primary importance to know any possible future permutations of the name before developing a new corporate identity. You can then register the name for future use within the trademark class, even if your client is not planning to launch in that class for some time. The apocryphal story about the Spaniard who, shortly before the Barcelona Olympics, registered the name NIKE as a trademark in Spain and thus caused major problems for the world’s biggest sportswear company, is a case in point.

Designers must do more to understand these complex issues, if only because we can only educate clients if we are educated ourselves. Essentially, creating names is like practising safe sex – you don’t have to use protection, but you’d be a fool not to.

Jonathan Mercer is a partner at intellectual property specialist DDg Brand Guardians.