Choosing a brand

We all know the key role your brand plays in building awareness of your charity with its beneficiaries and in driving engagement with donors, but how do you maximise and protect its value?

Your brand is that unique and recognisable identity such that it distinguishes your charity from others in the sector and which communicates the values of your charity to your beneficiaries and donors. It can contain many different elements, some of which are easy to identify, such as the brand name and logo, but others can more difficult to discern, such as reputation and goodwill. These diverse elements mean that there is lot to consider when creating a new brand, or undertaking a re-branding exercise.

We’ll outline some of the legal issues surrounding possibly the most important element of any brand – the brand name – later, but as an initial consideration if you’re engaging a consultant (or other third party), to support your brand creation and development, you must ensure that they are properly engaged before they start work. Key to this is to ensure that the charity owns the intellectual property (IP) in the outputs and deliverables generated by the consultant in the course of their services by ensuring an appropriate written agreement is in place. In absence of
such an agreement, or if you contract on the consultant’s standard terms, it’s likely that ownership of the IP will remain with the consultant, even though you’ve paid for their services.

This can cause serious problems, as although in most cases, the charity will have the right to use the IP that it has paid for, control will remain with the consultant. There is no guarantee that
the consultant will adequately protect it or maintain protection, and they may look to license or sell it third parties. A further payment may be required to secure ownership for the charity at
a later date, diverting time, effort and money from pursuing your charitable aims and objectives.

As your brand name forms the core of your brand and is easily the most recognisable (and possibly the most valuable) element, it’s essential that you ensure that it can be freely used, without
infringing any third party’s rights. If not, the charity could become embroiled in legal action, have to pay damages for infringement and/or be forced to withdraw the brand name from use.

As a minimum, searches of the relevant trademark registries, company registries and domain name registries should be conducted to understand what rights already exist and whether they could
be problematic. If you’re creating a new name for your charity, you should always bear in mind the Charity Commission’s guidance and disregard any potential names that may be offensive, misleading, or which are already in use by another charity – this can be confirmed by a straightforward search of the register of charities.

Once you have chosen your brand then consider registering it as a trademark. A registered trademark grants the owner the exclusive rights in the use of the trademark, which is registered for use
in respect of one or more classes of goods or services. Use of a brand name identical to a registered trademark in respect of a registered use will infringe these rights. In addition, infringement may also arise from: (a) a brand name similar to a registered trademark being used for a registered use; or (b) a brand name similar to a registered trademark being used for a use that is similar to a
registered use, and in both cases where this use may cause confusion on the part of the public.

This relatively wide scope of rights granted to the owner of a registered trademark make it a powerful tool to protect your brand name and by extension, the value of your brand.

Potentially any “sign” that can be represented graphically and which is capable of distinguishing your goods or services can be registered as a trademark. Your mark should be distinctive and not descriptive of the goods or services offered under it. While brand names and logos are obvious candidates, trademarks have been registered for shapes, colours, sounds and even smells. So you should consider your whole brand proposition and seek to register any distinguishing elements that fulfil this definition. Although, as always, you should seek professional advice, to maximise the protection gained and to minimise the risk of issues arising. There are various domestic and international systems of registration

and you will need help and guidance to ensure you protect your key brand assets in the right territories, in respect of the right goods and services and in a cost effective manner.

You should also consider taking domain names and establishing social media accounts that represent your brand name, to prevent unscrupulous or parody use by third parties.

Once a trademark is registered, as a general housekeeping matter, you should ensure that it is put to use and that any renewal fees are paid promptly, failing to do this may make it liable to
being removed from the register.

Crucially, you should take swift enforcement action against any infringer. This not only defends your position in the sector by preventing confusion amongst your beneficiaries and donors, but also
protects the value of your trademark, as continued use by infringers can lead to it losing the ability to distinguish your brand, meaning it ceases to be registrable as a trademark. However, you need
to take care not to make a ‘groundless threat’ of infringement action, as doing so can expose your charity to legal action and the risk of being liable to pay damages for the loss resulting from the threat. This is a complex area of law, and typically no more than a notification of your registered trademark should be given without you having sought professional advice.

You will also need to take prompt action against any conflicting trademarks that are put forward for registration, as in the UK, rejection of a registration on the basis that there is an existing conflicting mark relies on the owner of the prior trademark raising an objection. Preventing registration early on is far more effective and cheaper than bringing an action for infringement further down the line.

The above points highlight the main legal issues which you should consider in building and developing your brand. In summary, the key issues are:

• Create – Bear in mind the Charity Commission guidance and ensure that consultants providing services to create the new brand are engaged on appropriate terms that pass ownership of any IP to the charity. Choose distinctive brand names that are not descriptive.
• Clear – Conduct clearance searches to determine whether the potential brand name can be freely used – searches of the relevant trademark registries are essential.
• Register – Apply for registration of the key elements of the brand as a trademark wherever possible.
• Defend – Take swift action to prevent conflicting trademarks from being registered and against infringers, taking care to not make any ‘groundless threats’ of infringement.