Branding Issues Facing Charities and Not For Profits
Intellectual property (IP) matters aren’t always the primary concern of charities. That’s not a criticism; it’s just the way it is.
Charities are organisations set up to help society in some way. Usually run by people in non-executive backgrounds, brand protection is not always entrenched in their thinking. However, for companies, its part of the commercial psyche.
It’s not uncommon for charities to lose large sums of money when creating a brand or rebranding. Very often they opt for the assistance of a creative marketing agency only to discover (usually after the website and marketing materials have been designed and domain names purchased) the name they have chosen is not registrable. This can be for many reasons, such as an identical name is already in use by another organisation, there is one very similar in existence, or the name is too generic.
The same is true when deciding on a slogan or strapline.
Ownership of Intellectual Property Rights
There is another issue with intellectual property rights of which charities may not be aware.
Here’s the scenario: a charity commissions a creative design agency to create a new logo. Once a design is agreed upon, the charity doesn’t make sure it has rights over the logo. As a result, the designer continues to own the rights.
Trade marks extend beyond your charity’s name
Merely registering your charity name at Companies House or at the Charity Regulator isn’t enough to protect it; you must also register a trade mark if you want to be able to stop others using a confusing similar name.
It’s also important to think beyond your name. It’s possible to trade mark campaign names, logos, domain names, and jingles. In the case of slogans and campaign names, you may need to prove it has acquired distinctiveness and has become indelibly linked to the charity.
An example of this is the Dogs Trust’s ‘A dog is for life’ phrase, which was registered as a trade mark. Just as well as it provided the legal backup, they needed when the retailer Ann Summers used the phrase.
Another case was that of the World Wildlife Fund. In 1994, it signed an agreement with the World Wrestling Federation, limiting the ways the sports entertainment network could use the initials. In 2001 it was deemed to be in breach of contract; as a result, was forced to change its name to WWE and ordered to pay damages.
A tale of two trade marks
Within Intellectual Property there are two types of trade mark: registered and unregistered.
The familiar ™ initials denote an unregistered trade mark. It can be attached to anything in the hope of scaring off a competitor, but it is not enforceable under the Trade Marks Act.
Charities wanting to defend an unregistered trade mark have to rely on a process known as ‘passing off.’
An ® denotes a registered trade mark, but it’s important to remember this doesn’t offer you universal protection.
Firstly, the Trade Marks Register has 45 classes of goods and services, and you have to specify which class or classes you want to trade mark.
Secondly, trade marks are jurisdiction specific. That means a UK trade mark is only enforceable in the UK. Therefore, it’s essential your name be registered in each country in which you operate.
How to avoid the pitfalls
There is only one option available to make sure you avoid these pitfalls, and that’s by working with a trade mark lawyer. Just carrying out an online search for existing names doesn’t always flag up similar matches. The same issue applies when choosing a strapline or slogan. Getting professional help to do the groundwork for you will ensure you won’t be treading on anyone’s toes and that your charity’s identity is secure.
Tidman Legal provides a cost-effective service for charities looking to protect their name, integrity, and probity. To learn more, call 0131 557 6450 for an informal chat.