Article by Sharon Givoni
If your interior design business is currently rebranding, chances are you're focusing on tools to newly position your business in the market and communicate a fresh message to consumers. This is especially true for interior designers and architects looking to reposition for the post-pandemic future. As revered American legal expert Louis D. Brandeis once noted, "In differentiation, not in uniformity, lies the path of progress."
Whilst the marketing aspect is key to a rebrand, the legal side of this transitioning process is equally as important.
There is a tendency for the legal considerations of a rebrand to fall far down the list of priorities. You may have invested considerable resources into creating a fantastic new brand, but without having undergone preliminary checks, it may well be all for nothing. The earlier the legal factors are considered and addressed, the quicker you can clear the path to a successful transition in the market.
Below I have compiled the main legal considerations that I advise all my clients on to ensure they have a solid foundation to begin their rebrand.
1. Check your New Name
The first thing you need to do before anything else is to ensure you have selected is actually available. Conducting trade mark searches early on can save a lot of heartache later.
This is because if someone else has the same or similar mark, you might not be able to use it. In fact, even if that someone else has not registered their trade mark, they may still have rights in it and prevent you from registering your mark.
A huge misconception is that if your new brand name is spelt slightly different, or is attached to a different looking logo, this will be fine to use. However, the real test under the law is: will consumers be confused, and will they wrongfully believe the two firms are somehow connected?
For example, you might concoct the name “Colour-A-Holic” and start using it when someone else already has a trade mark registration for the name “ColourHolic”.
The problem here is that both names are still arguably too similar, despite the different spellings. On the flipside, the words Décor Master and Design Master could be considered different enough.
It’s all a matter of fact and degree when it comes to names and there is an element of subjectivity in it. Generally, these are questions for lawyers to consider.
2. Lock in that Domain Name!
You may be able to secure the foundations of your new brand, such as the domain name but it won’t help you if you cannot get trade mark registration.
One of the first things my firm does for my clients is to cross-check domain name databases.
The use of a domain name that is different to your trade mark name or your business name is less effective marketing than having a consistent name.
3. Consider the Rebranding Potential on social media
A rebrand never just stops at trade mark registration.
Social media names such as Instagram handles and Facebook page names are always important considerations. The availability of your new name across all these various forums and platforms can determine the reach of the rebrand and how effectively you can convert viewers to customers.
Just bear in mind: business names and domain name registration gives you no ownership rights in the name itself, but are merely there to serve certain administrative purposes.
4. Beware of Descriptiveness
It may seem obvious, but when rebranding under a new name, you are looking to have exclusive rights over that name. If you pick something too descriptive, you probably won’t be able to protect it.
One mistake I have seen clients make is believing a slight misspelling of a descriptive word is their own new word, but the law still treats obvious misspellings the same.
Another problem is when businesses try to rebrand with a word in foreign language that has an obvious meaning to the relevant English-speaking populations.
For example, the brand name “Design D'intérieur” for your interior design business may encounter difficulty in registration as they mean “Interior Design” in French, and a good part of the Australian population speak or are familiar with the French language.
The same would apply for the brand name “Decorazione Della Casa”, which mean “home decoration” in Italian. Something that often surprises my clients is that aurnames too can be considered too descriptive if it is a common surname in Australia!
5. Make sure your Logo is Copy-Right and not Copy-Wrong
As a drawing, logos have their own set of rules around copyright law. The main thing I advise my clients is on the necessity of ensuring they own the logo created, and not the person who has designed the logo. If a business has a designer create a logo for them, and they go ahead and trade mark that logo without first making sure the designer doesn’t retain ownership, the business may be opening themselves up to copyright infringement issues.
Another thing to be wary of is whether the logo the graphic designer creates for your business is original. One red flag is if they are unable to show the general revolution or iteration of how the logo was designed or formed. You must ensure the logo is completely original, and not copied from somewhere else, otherwise you may find yourself in a legal knot.
Remember: Even if you copy a logo from an unrelated brand, this can still be troublesome.
A Case Study – Simone Haag
You are very likely familiar with preeminent interior designer and stylist Simone Haag®.
Simone is an example of a designer who has used her name to create an empire.
Naturally, having invested such amounts of time, finances and other resources into building goodwill and reputation in her name, she would need to protect it. This is where my firm came and helped Simone register her name as a trade mark Simone Haag®.
What does this mean? Well, aside from having the rights to warn and educate the market that her name has become an asset using the ® symbol, if an interior designer by the name of “Simon Hager” or “Simone Hag” came along, Simone may well have a strong claim against them for infringement of her trade mark!
So what does this mean for you? The above five tips are just a snapshot of some of the issues that can arise. We're all familiar with Shakespeare’s 16th century line:
“What is in a name? That which we call a rose. By any other name would smell as sweet”, but in today’s times, designers (and businesses in general) need to understand that there
is so much more to a name.
And if you get your branding wrong, it’s really not so sweet.
By Sharon Givoni.
Please note the above article is general in nature and does not constitute legal advice – always contact your lawyer if you require advice about your specific circumstances.
This article was written by Sharon Givoni, principal solicitor at the law firm Sharon Givoni Consulting (https://www.sharongivoni.com.au/).
If you have any questions, or you want her to prepare, review or amend a written contract for your business, contact Sharon and her team at: firstname.lastname@example.org.
We offer members of our Premium Group Coaching Program access to an exclusive Group Contract, created by TDC legal expert Sharon Givoni. Every year, we build on this detailed and comprehensive contract with the program members, to ensure we have you covered for every conceivable challenge. The terms are written in easy-to-understand language, backed by sound advice from a reputable source. In addition to the Group Contact, our program members have the opportunity to discuss issues relevant to their businesses with Sharon. We recommend grabbing a copy of Sharon's book "Owning It : A Creative's Guide to Copyright, Contracts and the Law".
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