While marketers and trade mark lawyers have different roles to play with different perspectives, it is the combined input of both that will ultimately nurture and grow a brand.

Lawyers are trained to identify problems that may arise in the near or even distant future. A good lawyer will be able to provide a client with options for overcoming or minimising those problems.

Marketers are trained to communicate to consumers the benefits of a product and are charged with making good products, and not-so-good products, successful.

Often, by the time the trade mark lawyer is asked to put in place formal protections for a trade mark, the business and technical personnel have decided that a product should be successful, and the marketer has worked hard to develop, pitch and perhaps defend their branding and advertising campaign proposal.

Tensions can arise

Trade mark lawyers require time to conduct appropriate due diligence to assess the strength and availability of a mark. The costs and disruption that may occur when a full evaluation is not done can be significant. Meanwhile, the marketers are conscious that delay in launching a product could forfeit an opportunity and result in the loss of money to the company. As such, it is important to plan ahead so that the final trade mark is protected at the time of the launch.

The trade mark lawyers will also recommend the use of unique and “own-able” mark that is registrable under the Trade Mark Act.

Whereas, often marketers like to use descriptive marks that are easier and cheaper to market because they more easily convey to consumers the product’s benefits. While in some circumstances, such as when a product is expected to have a short life, a descriptive or laudatory mark can be more beneficial, if that product becomes success under a weak trade mark, it will be more difficult to stop competitors from using similar marks for similar products.

It is also important to consider the long term impact a marketing campaign for a single product or range may have on an overall brand. A trade mark and brand identity is strengthen by long term consistent use. As such the use of a corrupted or altered trade mark may benefit a short term project but could weaken the overall brand integrity.

Risk assessment

Some clients may be willing to accept some risk to a brand in exchange for a quick and effective marketing campaign using descriptive trade marks. Under these circumstances, a trade mark lawyer may be able to guide the marketers in ways that would help minimise risk and create sufficient distinction between marks.

Working together from the early stages of product and marketing development can allow each party to benefit from the others experience and training. It will also allow lawyers the opportunity to conduct and evaluate preliminary searches before the team gets too committed to a specific mark.

If you would like to know more or need any assistance, feel free to contact us at Antcliffe Scott, we’d be more than happy to help!

Antcliffe:Scott Lawyers