Rebranding — a risk worth taking?

Often the brand can create a lasting impact if the brand has resonated with customers and has remained relevant over a period of time. That said, there are challenges that may arise when handling legacy branding notably when there is a period of inactivity or when a company decides to rebrand.

Trade mark protection for a brand is essential given it is a way to identify the source of the goods and services provided but also to prevent others from using said branding without permission and allows legal action to be taken against infringers. However, a period of inactivity not only diminishes the impact of the brand along with its value, but it also causes risk with respect to the company's trade mark registrations. This situation often arises when a company decides to rebrand. Sometimes, rebranding is necessary in order to help a company grow; if planned and executed carefully, companies can reposition themselves in the market and modify their aims and objectives with the target audience’s interests. However rebranding can require substantial time, attention, financial resources, and it can also jeopardise the registered status of a company's trade marks.

A trade mark registration can be revoked for non-use if it has not been genuinely used in connection with the goods or services it covers for a certain period i.e. five years in the EU and UK. Therefore a period of inactivity, for example following a rebrand, means a trade mark registration could then be vulnerable to revocation.

An example of this is Mars' chocolate bar Marathon rebranding to Snickers. With this example, in an attempt to keep the Marathon trade mark registration alive on the UK register, the brand ran a limited-edition retro version of the chocolate bar under the Marathon name. Trade marks for Marathon were vulnerable to revocation for non-use at the time and so these limited-edition runs takes advantage of the nostalgia of the old brand and had the effect of ensuring the trade mark doesn’t become vulnerable to non-use revocation. However, bringing a brand out of retirement is not guaranteed to maintain a registration – the use must be "genuine commercial use" and not "token". It is questionable whether a limited edition run featuring an old brand will always satisfy this criteria.  

If a company decides to relaunch a business, it may choose to revive its previous brand rather than to rebrand. However there are factors that should be taken into account. The power of a brand's heritage and nostalgic value should not be underestimated. A brand that evokes positive memories could be essential in keeping that brand alive and allow it to be fully restored. Importance should also be placed in connecting with consumers when it comes to legacy branding. Consumers are the company's biggest stakeholders, so the need to get them on board is a priority.

However if a company does choose to rebrand, then it is important they first carry out trade mark clearance searches. This is a process to check if the proposed trade mark for the rebrand (i.e. name, logo etc.) is available for use and registration, by identifying any existing conflicting trade marks on the official registers within the searched jurisdictions. If the search comes back clear, then a company can proceed with the rebrand. If the search raises any conflicting trade marks, a company can either move forward with the rebrand despite the risk or they can try to mitigate the risk first. Alternatively a company can proceed in a different direction with the rebrand altogether.  

Ultimately there are risks associated with rebranding a business, but it may be necessary to do so if a business wishes to expand and/or change the vision or message they are projecting to their consumers. From a trade mark perspective, a rebrand could mean the end of the registrations if those trade marks are no longer going to be in use. However if there is strong goodwill associated with the brand, then consideration should be given to preserving the legacy brand, which would then potentially mean maintaining the trade mark registrations by using the trade marks.