March 7, 2019

Names have power, so choose yours wisely

In his book The Lightening Thief, Rick Riordan wrote that “names have power.” Never was a truer word written. You only need look at Google, Apple and Amazon to see commercial proof of this. According to BrandZ™*, as at March 2018 Google, Apple and Amazon were the three most valuable brands in the world, each respectively worth US$3.02 billion, US$3 billion and US$2.07 billion.

When it comes then to choosing a name for your business, product or service, it makes sense to choose wisely. Not least because you don’t want to infringe someone else’s rights and consequently have to re-brand (which Telecom/Spark had to do in 2014, replacing its proposed ShowmeTV brand with Lightbox. And you also don’t want to offend anyone, as Birkenhead Brewery Company did in 2016 when it featured Māori ancestral legends on its beer labels.

Choosing wisely means conducting a trade mark search before you settle on a name. A name search isn’t just a search of the New Zealand Companies Register, though: it includes searching the trade mark registers of each country of potential interest and the Internet for trademarks that are not registered, but are being used and which could be problematic. Searching might sound like a simple job, but it isn’t: it is a multi-levelled and technical task, best undertaken by a trade mark professional. By conducting such a trade mark search, you are giving your business, product or service the best chance of avoiding conflict and a re-brand (and the associated costs).

A search then should be an integral part of the name choosing process. Unfortunately, it often isn’t. And because it isn’t, I regularly encounter businesses having difficulties with the name they have chosen. For example, I was recently told of a start-up that had to change its name just before launch because it didn’t undertake a search. It didn’t only have to change its name however – it had to change its signage and all its promotional materials and also had to tell everyone its intended name had changed. Had it conducted a search it would have saved itself both cost and inconvenience.

Start-ups and SME’s often don’t conduct searches because of cost – searching is seen as an expense instead of an investment. But this is a mistake. Searching is an investment in the ability to use your chosen name now and into the future. Moreover, the cost of a search is significantly less than the cost of re-branding or of defending trade mark infringement allegations. The failure to undertake a trade mark search is not an issue exclusive to start-ups or SME’s – that would be unfair and untrue. I know of one international consumer products company, for example, who is currently facing a re-brand for the New Zealand market because it seemingly did not conduct a search here before trying to launch. The cost and inconvenience to this business will be huge.

When it comes then to selecting a name – your trade mark, your badge of origin – I repeat, choose wisely. You never know how much that name will be worth one day.


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