Revitalising a trademark in the market through rebranding is an effective marketing strategy. Cases such as Instagram, YouTube, Burger King, Apple, and others have been able to efficiently navigate these transitions. To ensure long-term viability, however, it is important to execute this transition together with a solid strategy or legal assistance, especially in the trademark area.
Rebranding is the term given to the marketing strategy through which the image, logo or some characteristic element of a trademark is changed in order to make it more attractive to consumers. This process not only involves an aesthetic change, but also seeks to redefine the public’s perception or identity of the trademark, adapting to the new realities of the market and current trends.
Although trademarks or the concept of identifying products and services have existed since ancient times, it was not until recent centuries when the areas of marketing and advertising began to gain relevance. With the surge of new technologies and globalisation, the need to differentiate themselves in a competitive market led companies to develop more sophisticated branding strategies. Today, digitalisation, mass media, the Internet and social networks have enabled entrepreneurs to have access to tools and platforms that allow them to share their commercial activity to consumers around the world.
In a changing world, permeated by trends and social and cultural movements, marketing has had to develop strategies that allow trademarks to evolve at the same rate, without losing the values or recognition that they have previously acquired over the years. Indeed, rebranding was created with the aim of serving as a tool to modify trademarks or update their identity and perception, without being detrimental to the positioning they have already secured.
There are many reasons or grounds that may lead a company to adopt a rebranding strategy. One of the main situations is when there is a negative perception or connotation associated with the trademark. In this case, rebranding is used to present a new image that allows the company to regain consumer confidence, disassociating itself from said negative perceptions. Another reason may be a structural change in the organisation, such as a merger or acquisition. In these cases, the aim is to make it clear to consumers that the trademarks belong to the same group or that they have some connection or association. A decision is eventually made to harmonise certain characteristics of the trademarks so that the consumer can identify them as common elements more easily.
Rebranding can also respond to a generational change, where the objective is to align the trademark with the values and preferences of new audiences, ensuring its relevance in an environment that is constantly evolving. Another reason may be driven by internationalisation, adapting the name, logo or identity to make them culturally relevant and accepted worldwide.
Although the role of advertising or marketing departments is key to ensure the positive impact of the strategy on the market, it is essential to have the support of the legal department, especially with the advice of experts in intellectual property, and particularly trademark law. As will be discussed throughout this article, there are a number of implications and risks that we must try to mitigate, otherwise the transition may not be adequate.
Step 1: Review of the portfolio of Trademarks and Intangible Assets related to said trademark.
During the strategy planning stage, it is essential to carry out a detailed review of the portfolio of trademarks and, in general, of the intangible assets directly related to the current trademark identity. The status of each of these intangible assets must be carefully assessed, checking whether some details need to be updated or if measures need to be taken to ensure complete protection. For example, during the course of business, there may be an offering of new products or services that were not protected or included in the initial registrations, or they may have entered into new countries in which the respective registrations must be completed, among others.
Step 2: Trademark background searches on novel elements.
The availability of these novel elements that will be introduced must then be analysed. It is crucial to remember that trademark protection is acquired solely and exclusively through the registration of that trademark. These figurative or word elements may already be protected by other trademark registrations, which could lead to difficulties when trying to obtain protection. Two key mistakes are sometimes made during this stage. First, it is often mistakenly assumed that once the trademark name has been registered, a more comprehensive analysis of the associated intangible assets is not necessary. This is a common mistake, since the registration of the name protects just that: the name. Complete, suggested protection is achieved by including the figurative or graphic elements that make up this new image.
Secondly, it is common to think that since no other trademark that uses similar elements is known on the market, there would be no legal difficulties in accessing the registration. Nevertheless, this analysis may be incorrect, as there are several factors that may go unnoticed. A trademark may exist that, at first glance, appears to belong to a completely different industry. However, by analysing the trademark registration and applying the competitive connection analysis, it can be identified that the available information is sufficient to block the registration or cause future problems. Another situation that could occur is the existence of a registered trademark that is not being actively used, but may still present a significant legal obstacle.
At this point, it is important to emphasise that specific advice must be offered for each of the countries of interest. Although there have been attempts to harmonise intellectual property rules worldwide and several common elements do exist, each trademark office has its own substantive and procedural regulations. For example, in countries such as Colombia and members of the Andean Community, the registrability examination is mandatory, even if no oppositions have been filed. In such cases, strategies to overcome obstacles that may arise must be analysed more carefully.
Performing this verification on the availability of the trademark mitigates two different types of risks or contingencies. First, it makes it possible to analyse the probability that the trademark registration will be granted. Secondly, it helps to avoid future disputes due to trademark infringement. In accordance with trademark law, trademarks do not need to be identical for infringement to occur; it is enough that they are confusingly similar to be potentially considered a case of infringement. In this regard, the additional elements that are being incorporated into the rebranding process may make a trademark analysed as a whole confusingly similar to a previously registered trademark.
Although trademark registration does not grant authorisation to use a trademark, but rather an exclusive right that legitimises a claim to a third party for unauthorised use, it is advisable to have a trademark registration for several reasons. Firstly, as it is an intangible asset, it can be used as collateral for some investment or business. Secondly, it will allow actions to be taken for trademark infringement in the event that a third party initiates a confusingly similar use. Thirdly, even though obtaining a trademark registration fully guarantees that you will emerge victorious in any claim, the truth is that it does allow you to have an important element or argument of defence.
The analysis of availability prior to implementing rebranding strategies also helps prevent a company from incurring significant expenses when modifying and positioning its trademark through rebranding, only to be forced to withdraw it due to the inability to obtain registration or due to a third-party claim. Furthermore, it is important not to allow too much time to pass between the analysis of availability and the process to obtain the registration. In these cases, a fundamental principle applies: “first in time, first in right”. This means that if someone applies for a similar trademark before the company’s application is filed, it could hinder the registration process of the original trademark before the Trademark Office, which in Colombia is the Superintendency of Industry and Commerce.
As mentioned in previous paragraphs, rebranding strategies must be implemented in all countries where the company has operations. In trademark law, the principle of territoriality applies, according to which protection of a trademark is acquired only in the country or countries where the corresponding registration has been obtained. However, this principle has some mechanisms that can be useful in rebranding processes, such as, for example, the European Community trademark that can optimise the resources used in these rebranding processes. Moreover, it is essential to consider the specific timelines and requirements of each country, as Trademark Offices in different jurisdictions have different deadlines and procedures.
Step 3: Filing trademark applications
Once the feasibility or availability of registration in the different countries has been analysed, the respective actions must be taken to obtain the different registrations, since this is the only way in which protection of the trademark registrations is guaranteed. When applying for new registrations, it is important to remember the initial inventory or review, since it will determine which new applications are necessary and which are not; in other words, for which elements we should start protection strategies and which ones already have sufficient protection.
Furthermore, the characteristics of these new registrations must be analysed, ensuring that the products and services are correctly classified. At this time, specific products or services may be subject to reclassification due to a new version of the International Nice Classification. Protection of colours must also be considered, depending on whether the colour will be a distinctive element that consumers are intended to associate with the trademark in a special way, or on the contrary, whether the trademark will be used in different colours, but always having the same pattern or label, in which case protection of the colour may not be essential.
It is crucial not to neglect the analysis of the application for approval by other regulatory bodies, especially if it involves products which label must be approved by health authorities, such as food, medicines or certain agricultural products. In these cases, if the change in the trademark also affects the presentation of said products, the procedures or processes that must be carried out before the regulatory bodies to avoid a subsequent sanction must be analysed.
Bearing in mind that significant advertising efforts are often made during transitions, activation or launch of a new trademark image, it should not be overlooked that these campaigns must not only be eye-catching for consumers, but also relevant to ensure that they have all the corresponding authorisations for use or transfers for the works they include. For example, if there is any accompanying musicality, they must have the transfer or licence to use said musical work.
Step 4: Continuous monitoring of trademark registrations
Once the corresponding trademark registrations have been applied for and obtained, there must be continuous monitoring. This monitoring should include constant review of the Industrial Property Gazette to verify whether trademarks that may be confusingly similar are being applied for. In addition, it is important to pay attention to expirations, such as renewals or declarations of use, in accordance with the internal regulations of each country.
In conclusion, rebranding is much more than a simple aesthetic change; it is a strategy that requires strong support in intellectual property, especially in relation to trademarks, to ensure its success. From reviewing your trademark portfolio to planning registrations in various jurisdictions, each stage must consider both legal risks and opportunities for protection. It is also essential to anticipate potential conflicts due to trademark similarities, comply with local regulations and secure rights over creative elements. With proper legal management, rebranding becomes an effective and safe tool to renew the identity of a trademark on the market.
Written by: Andrea Díaz Muñoz, Senior Lawyer – Colombia