The importance of the relationship between branding agencies and legal advisors

28 November 2013

Intangible assets, such as a portfolio of brands, are key differentiators of a business in an increasingly competitive global commercial market.

Business owners look to branding agencies to develop such differentiators. The creative output from a branding agency generates intellectual property rights such as copyright and trade marks. Given the saturation of brands it is critical for branding agencies to work closely with their legal representatives to ensure the client can “own”, in a legal sense, what the branders develop and that they do not infringe another party’s existing rights.

One recent matter in Australia highlights the importance of the relationship. After spending some months developing a new brand and associated visual identity for a telecommunications company, the agency realised, at the eleventh hour and under enormous pressure from the client to launch the business, it needed to conduct clearance checks of the brand.

Although the clearance searches revealed some potential infringement issues, the agency decided to go against the legal advice, given the imminent launch date for the business. The outcome was regrettable. The business launched under the new brand in connection with considerable branding collateral and expense. The competitor was alerted to the new brand and lawyers were instructed to send a nasty letter.

Although going back to the drawing board prior to launch would have meant a grumpy client due to missed deadlines, it would have avoided the added expense of rollout material, legal costs, and the embarrassment of ‘getting it wrong’.

Lawyers and brand agencies can work together. Instead of viewing legal input as a hindrance to the creative process, if lawyers are involved early in the design process, the legal and brand team can provide an important value add to the client. From a governance perspective it makes sense, with many businesses questioning why an agency should be able to charge a client for a design or identity that the client can’t register or that results in infringement proceedings.

Important points to note:
  • Logo trade marks are not “word” marks. A logo mark incorporating the new brand does not necessarily allow you to stop others using the word alone. 

  • If the client’s budget doesn’t allow for the costs of trade mark registration, ensure that at least preliminary searches are conducted prior to launch and use of the ™ symbol is adopted to put third parties on notice that the brand is being used as a trade mark. 

  • Understand who created the brand and who the ultimate owner is meant to be. 

  • Conduct searches of each market in which the client intends to commence business prior to launch to ensure a uniform global brand strategy can be adopted. 

  • Discuss the brand guidelines for each brand with the lawyers to ensure the trade mark registrations accurately reflect the branding agency’s recommended use of the brands.

Lawyers and brand agencies can work together. Instead of viewing legal input as a hindrance to the creative process, if lawyers are involved early in the design process, the legal and brand team can provide an important value add to the client.

Image of Justin Senescall
Justin Senescall,
Truman Hoyle
jsenescall@trumanhoyle.com.au

Bird & Bird has a cooperation agreement with the Australian law firm Truman Hoyle. Truman Hoyle is a Sydney-based firm which share our strengths in key sectors like telecoms, technology and media, serving similar industries and similar clients.

This article is part of the BrandWrites Newsletter for November 2013