Legal checklist to building a brand

Whilst building a brand involves highly complex concepts such as the brand values, vision and personality and how the brand is to be ultimately positioned in the marketplace; there are also a number of more fundamental elements which need to be addressed which are critical in contributing to the legal protection for the brand as a whole.

These include; registering a company name, domain name, design, or trademark. This handy checklist concentrates on some key legal issues that are often overlooked if too simplistic an approach is adopted and which can have very serious consequences on the value of the brand if they are not dealt with properly during the initial stages.

  • Check the appropriate register for the same or similar
    company names, including those which are phonetically
    similar – this is to avoid potential ‘passing off’ claims
  • Use dormant companies to protect names that you may need
    in the future
  • Make sure that you register in the relevant jurisdiction
  • Carry out trademark and domain name searches before you
    finalise a company name.
  • Consider carefully what Top Level Domains you wish to
    register
  • Consider having a portfolio of similar, misspelled,
    abbreviated and short form domain names – to prevent
    third parties taking advantage of the brand
  • Ensure that domains are registered in the name of the
    company and not the website developer
  • Register with social media sites such as Facebook, Twitter,
    or Instagram (even if the account is left dormant it stops
    your brand being hijacked).
  • Search the trademark registers to ensure that the new
    name does not infringe existing marks
  • Check for:
    • exact matches
    • marks which are phonetically and/or visually similar
    • class registrations. 
  • Check for unregistered marks and how and where they
    are used
  • Ensure that you use the TM and ® symbols correctly –
    using ® symbol incorrectly can be a criminal offence.
  • Ensure the trademark is registered in the name of the
    company
  • Apply for registration in the relevant jurisdiction
  • Think very carefully about class registrations and how you
    describe the goods and services you seek to register
  • Remember that the best trademarks are made up new
    words (acronyms are good) or original designs
  • Think tactically and strategically about future products and
    services and how they should be branded.
  • Ensure that these are unique original designs and not
    copied from elsewhere
  • Ensure that the intellectual property in the logo is owned by
    the company and not the designer.
  • Protect the brand before you go public with it
  • Be active about looking for infringing activities which
    devalue your brand
  • Act swiftly when you discover anyone infringing your rights
    otherwise you may be deemed to have consented to the
    infringement and/or waived your right to take future action
  • Get knowledgeable advice so you don’t fall foul of
    ‘groundless threats’ actions
  • Licence and manage the use of your brand to protect it and
    exploit it commercially
  • Check services like Google Adwords for how third parties
    are using your brand.