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IP Ingredients, Part 13: Navigating Trade Marks in the World of Food and Drink Rebranding

May 2024

In the dynamic world of the food and drink industry, rebranding can be a strategic tool used by companies to refresh their image, capture new markets, or adapt to changing consumer and cultural preferences.

Recently, we’ve seen a wave of brands refreshing and revising their branding, including a recent move by Coca-Cola to rebrand their LILT product to FANTA ‘pineapple & grapefruit’.  Historically, we’ve all seen and heard how SNICKERS used to be MARATHON and STARBURST used to be OPAL FRUITS.  While these are significant rebrands involving the name changing entirely, rebrands can also be more subtle, such as the CMBC revamp of their Kronenbourg product earlier in April to a design which makes much more prominent use of the 1664 mark, Lyle’s Golden Syrup changing its lion logo or the move by Mondelez to revise their TOBLERONE Matterhorn logo.

Behind the scenes of this creative process, which has the potential to stir up strong consumer reaction, there are also a number of legal considerations, particularly in the realm of trade mark law.  As brands seek to differentiate themselves in crowded marketplaces, and update their image, these changes affect a trade mark portfolio and having an understanding of why and how it does this is crucial to avoid potential pitfalls and ensure your trade mark portfolio remains fit for purpose and protects the brand position moving forwards.

A high priority in the early stages of a rebranding journey, is to identify what may already be on the market and/or registered as a trade mark.  The last thing any business wants is to undertake a rebranding project along with the possible costs of employing a design agency, and becoming financially and emotionally attached to a new brand only to receive a letter from another business that have the same or similar name for their product.  What could follow would be a long and costly re-rebranding exercise resulting in more expense and possible damage to your brand identity in the process.

A good way to mitigate this scenario is to conduct thorough trade mark searches for a short list of names to ensure that new marks do not infringe upon existing trade marks.  This involves a review of the existing trade mark registers to see if any pre-existing third party rights have been registered for the same or similar marks in relation to the same business area.

A search can also include common law rights (rights used but not registered formally as a trade mark) and protected geographical indications (for more information on GIs see the IP Ingredients Series, Part 6).  Given the global nature of the food and beverage industry, a brand may also decide to conduct such searches across multiple jurisdictions to ensure the new branding can be used in each territory of interest.

Conducting searches for a short list of names can be done in conjunction with our research the marketing team may want to do, such as consumer research, to help whittle down a longer list of names into a shorter one that only includes those options that have a realistic expectation to proceed.  In this way, companies can avoid being in that hated position of having a single favourite name, that turns out to be taken by someone else.

Searches can be conducted not only for names, but other brand elements such as logos.

Also an important consideration when embarking on a rebranding project, is to assess what is being changed and how it might impact on the current trade mark protection for the brand.

In cases where the brand name is changing entirely, it will be obvious that new trade mark protection is required.  However, more subtle changes, such as the ‘tweaking’ of a logo, might not require entirely new protection to be filed.

While trade marks can be renewed every 10 years typically, they do become vulnerable after a certain period of time if they have not been used.  In the UK this is 5 years, but the time period can range from 3-5 years in other countries.  Practically, this means that if a brand or a logo etc. is no longer being used because of a rebrand those trade mark registrations could be cancelled by a third party for non-use.

It is therefore important to discuss your rebrand with your IP team so that they can advise on what new protection might be needed, what rights may be lost through non-use and provide a guide on the most cost-effective way to proceed, e.g. through lapsing some rights on renewals to save on renewal costs etc.

If a rebrand, does not involve changes to the main brand or logo, there may still be certain IP considerations to be taken into account.  For example, if the product packaging design is undergoing a refresh or an evolution, there may be the potential to obtain registered design protection, particularly if the new version is particularly novel compared to your competitors or incorporates very distinctive elements to it.

Trade mark law plays a pivotal role in shaping the landscape of rebranding, providing a framework for protecting brand identities and fostering innovation in an increasingly competitive marketplace.  By understanding the intricacies of trade mark searching, registration, enforcement, and strategic collaboration, companies can navigate the complexities of rebranding with confidence, ensuring that their intellectual property assets remain a source of competitive advantage and consumer trust.

For any questions relating to the above, please contact the author, James Appleyard at [email protected].

This article was prepared by Trade Mark Attorney James Appleyard

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