Avoid potential IP conflicts

This IP First Response website has been designed to help IP rights holders navigate IP infringement and enforcement by making it visible, accessible, and to provide information about the factors involved in pursuing different options. It does not provide legal, business or other professional advice, and none of the content should be regarded as recommending a specific course of action. We welcome any feedback via our IP First Response feedback form and by emailing us.

What is it?

Rebranding your business can be an effective strategy to make sure you’re not infringing existing trade marks, to avoid disputes with other parties, or to apply for a new trade mark after your application to register a trade mark hasn’t been successful.

While contemplating rebranding your business can feel very personal – and it is important to acknowledge any emotional response you have to the situation – choosing to take this action (as part of a thought-out IP strategy) can be a valid and rational choice. 

Many successful businesses have rebranded throughout their history as strategic moves. Rather than being an act of admitting defeat or suggesting that one party was 'right', rebranding can be a savvy forward-looking choice that can help you avoid costly IP disputes and focus on your core business.

Regardless of whether you have a strong claim to the use of a trade marked brand or are accused of infringing, some reasons for choosing to rebrand to avoid any potential conflict might include:

There may be commercial relationships you wish to preserve
The other party is more willing and able to argue the conflict than yourself
You cannot be sure of the merits or ownership status of your right (for example, the matter is not black and white, or it would be costly to determine the relative merits of your position)
The new brand would be a relatively simple change for you, with little loss of business advantage
The cost or effort of other actions (enforcing or defending your right) far outweighs the value of the right and cost of rebranding.

What are the benefits?

Rebranding does not require the cooperation or even engagement with the other party, and is thus a very non-adversarial process.
You have the control to avoid conflict – unlike adversarial processes which have unpredictable outcomes.
It might be a more productive way to use your resources, compared to professional fees which may not add sufficient value to your business.
The time, cost and labour required to take actions to avoid infringement on your IP may not be justified at this point in your business or IP journey.
Choosing to avoid enforcement actions shelters you from needing to establish or defend your rights, which you may not wish to draw attention to.
Additionally, clearly distinguishing yourself from competitors will help your customers avoid confusion, which may occur even if both parties have a registered right to use the trade mark.

What are the risks?

Without professional advice, there is a risk that you will miss easy and effective enforcement options.
You may have a legal right to use the IP and will have given it up when you didn't have to; advice from an IP professional can help you determine this.
Rebranding may not resolve the fundamental IP issue (e.g. you may believe that the new brand is different enough, but someone else could still consider it deceptively similar, and thus grounds for challenging).
You may lose some reputation/goodwill you may have built under your previous brand.
Rebranding will not resolve any disputes about the design or the functional elements of your product(s).
While rebranding does not necessarily require engagement with the other party, without engagement or agreement, you can't be assured the other party will not pursue enforcement actions (which may have occurred while using the previous brand).

What are the possible outcomes?

The rebrand successfully avoids any potential conflicts and no further action is needed.
The rebrand does not avoid the issues and other forms of resolution are required.

What might the costs be?

When evaluating rebranding costs, it may be helpful to consider what might be involved, such as:

Professional design services
Implementation (printing, websites, social media, signage, business registrations, new IP applications)
Customer communications and brand awareness campaigns.

These costs should be weighed against alternatives when making your decision.

How much time might be involved?

The time taken to complete a rebrand will depend on your business. If the other party has asked you to make changes within a certain deadline, you may need to move quickly if you want to avoid further discussions with them.

How much is this used?

One survey of 91 Australian small businesses found that 48% had to rebrand their business due to the inability to secure a trade mark.

Who can use this?

Both large and small businesses use this strategy.

Who’s involved?

Yourself.
IP Professional – professional advice can help provide you with expertise to ensure you have considered the issue comprehensively, and additionally that the new designs adequately avoid any current and future IP conflicts.  These professionals can also help you protect the new brand with registered IP if desired.
Design professionals (optional).

What do you need to proceed?

Review IP First Response resources to understand all your enforcement options. This helps you make an informed choice to weigh other options.
Calculate the potential costs and timeline for different options actions.
Identify which type of IP professional you may choose to consult and consider having initial conversations to understand their services and approach.