Bonnie Hassanzadeh is a 3L JD Candidate at Osgoode Hall Law School, enrolled in Professor David Vaver’s 2021-2022 Intellectual Property Law & Technology Intensive Program. As part of the course requirements, students were asked to write a blog on a topic of their choice.
When reports about Facebook’s plan to change its corporate name hit the internet, branding experts offered their theories about the driving force behind the social media giant’s decision to rebrand itself. Some speculated that the rebrand may be part of Facebook’s strategy to distract the public from the reputational harm it has suffered in recent years as a result of scrutiny over the spread of misinformation and hate speech on the company’s social media platforms. Others predicted Facebook’s decision to change its corporate name to be part of the company’s vision for building the “metaverse”– a term used to describe a shared virtual environment accessible through the internet.
On October 28, 2021, Facebook’s founder, Mark Zuckerberg, announced that the company will change its corporate name to “Meta”. The recent shift in the technology conglomerate’s brand identity has introduced a great opportunity to discuss the intellectual property implications of rebranding a business. Given the significance of a company’s trademarks to its brand identity, this post is dedicated to providing some insight about trademark considerations for a corporate rebrand.
Under section 2 of the Trademarks Act (“Act”) in Canada, a trademark is a sign or combination of signs that distinguishes a person’s goods or services from those of others in the marketplace. A sign, amongst other items listed in the Act, includes a letter, word, numeral, figurative element, three-dimensional shape, or moving image. Changes to a company’s name, logo, or slogans often engage trademark rights.
Throughout history, numerous companies have changed their names to cater to a larger audience; swapped their original logos for a more modern look; and abandoned controversial slogans. In 1991, Kentucky Fried Chicken, in an effort to cultivate a more health-conscious image for the company, shortened its name to “KFC”. Apple, formerly known as “Apple Computer”, changed its original logo depicting Isaac Newton sitting under an apple tree to a more minimalistic design. In 2012, Reebok, following public criticism of its marketing campaign in Germany, abandoned its slogan: “Cheat on your girlfriend, not on your workout.”
While unregistered trademarks receive protection under the common law, the scope of protection for an unregistered mark is narrow and enforcement is often difficult. Trademarks may be registered under the Act in Canada. Registration confers to the owner the exclusive right to use the trademark across Canada in association with the specified goods or services for 10 years beginning on the day of registration and for subsequent periods of 10 years upon payment of renewal fees. The exclusivity of use granted to a mark-owner under the Act makes registration essential to a successful rebrand.
When brainstorming a new name, logo, or slogan for a business, it is important to keep in mind the registrability and availability of the proposed mark.
First, to find out whether a mark is registrable in Canada, a careful review of the criteria for registrability set out in section 12(1) of the Act is necessary. To avoid registrability issues, it is important to avoid choosing individuals’ names or marks that are descriptive or deceptively misdescriptive of the company’s products or services. From a business standpoint, aside from the statutory requirements for registrability, it is important to opt for marks that are simple, recognizable, and flexible to allow for future growth in the market.
The availability of a mark can be found through a comprehensive search of active marks in the trademarks database of each jurisdiction in which the business plans to operate. A thorough search of each database will be extremely helpful in narrowing down the business’s options with respect to marks and limiting costs associated with registration down the line.
Finally, consulting with seasoned trademark professionals and branding experts is key to a successful rebrand strategy.
Although an effective rebrand does not necessarily require abandoning the company’s old trademarks, a proactive approach to registering the new marks is a crucial element of a successful rebrand. Aside from meeting registration requirements, a smart rebrand often involves careful consideration of whether the new marks resonate with the intended market. After all, a rose by any other name may smell as sweet but a business with a new name may not be as successful.