Recently the oil and gas Authority, which was founded in 2015 with the task of maximising the value of the oil and gas industry, rebranded to the North Sea Transition Authority (NSTA). The NSTA is the most recent, but likely not the last, example of an organisation updating its name, logo, and perhaps even their identity to reflect an updated mission statement. In the case of the NSTA, the change is seen as a reflection of an expanded role, which includes emissions monitoring and carbon storage licensing.
Such changes have been commonplace recently. Business organisations such as Oil and Gas UK (OGUK) now the Offshore Energy UK (OEUK), and the Oil and Gas Technology Centre (OGTC) now to the Net Zero Technology Centre (NZTC) have made similar changes. Other changes such as Total becoming TotalEnergies and National Oilwell Varco becoming simply NOV have been perhaps more subtle.
All of these changes are a reflection of the current energy transition and the shift to renewable/sustainable energy in recognition that global carbon emissions should be lowered, e.g. keeping global warming to 2 °C in accordance with the Paris Agreement.
It is important to consider the trade mark strategy when transitioning from one brand to another to ensure that it aligns with the commercial aims of the business, the anticipated brand transition timings and budget. Below are seven key points to consider when rebranding your business:
1. Should existing trade mark registrations be renewed?
A trade mark can potentially last forever if it is renewed periodically (usually every ten years) and remains in commercial use. The business may have a valuable reputation and goodwill in the old brand, which may be protected through one or more existing trade mark registrations. There may be merit in renewing existing trade mark registrations to ensure that the business can continue to enforce its rights against third use of elements of the old brand, which could potentially damage the reputation and goodwill of the business. In addition, the business may decide to incorporate some of the elements of the old brand into the new brand identity to enable consumers to make a connection between the new brand and the business. Existing trade mark registrations may confer protection in some of the common brand elements, which could merit renewing the mark(s).
2. Which element(s) of the new brand should be protected?
It is important to bear in mind that trade mark registrations can generally be cancelled on the grounds of non-use if they are not used commercially for a certain period of time. Some of the existing trade mark registrations may become vulnerable to cancellation on the grounds of non-use during or after the transition period. This factor should be carefully considered when devising a trade mark strategy.
It is important to think about what aspects of your brand you wish to protect. Trade mark registrations can protect words, logos and slogans, as well as less conventional elements such as colours, designs, sounds, motions and shapes, for example. Whilst it is possible to incorporate multiple elements of a brand in a single trade mark application (e.g. a company name, the trading name, a logo and a slogan), combining multiple elements can reduce the strength of the individual elements from an enforcement perspective. There may be merit in obtaining separate trade mark registrations for different elements of the brand to confer the most robust level of protection for the key components of the brand identity. There may also be protection in place for elements of the old brand that are incorporated in the new brand identity, and so the purpose of filing new trade mark applications may be to supplement the existing protection.
3. Trade mark search
A trade mark search can be a useful exercise to assess the level of risk associated with adopting a new brand and whether there are any steps that can be taken to mitigate the risks. Prior to using or seeking to register a trade mark, it is generally advisable to conduct searches to avoid costly rebranding mishaps. Trade mark searches are intended to identify earlier third party registrations or applications that could potentially be used to oppose a trade mark application or to challenge use through infringement proceedings, in a particular country or territory.
4. Distinct non-generic mark
It is also important to consider whether the proposed brand satisfies the substantive requirements for trade mark registration. In order to be registrable, a trade mark must be distinctive in relation to the goods and/or services applied for. Trade mark applications for non-distinctive, descriptive and/or generic brands will often encounter objections during examination. The distinctiveness of a trade mark can also affect the scope of the rights conferred by the registration. Generally speaking, the more distinctive the mark, the broader the scope of enforceability.
5. Good and services
When applying for a trade mark, it is necessary to stipulate the goods and/or services with which it is intended to be used. Goods and services are separated into “Classes” for administrative purposes. Each “Class” corresponds with a different category of goods or services – for example, “energy distribution services” falls within Class 39, whereas “mobile applications for viewing energy bills” falls within Class 9. Determining the specification of goods and services, and the associated Classes should form part of a trade mark filing strategy.
While businesses may have determined the areas in which they operate years ago, when they rebrand to reflect new strategic goals, the good and services where trade mark protection is applicable may also need to be modified.
6. Territorial scope for protection
Trade marks are territorial in scope. A trade mark registration generally only confers rights in the specific country in which it is registered. There are some exceptions to national trade marks, such as the EU Trade Mark which confers rights in all 27 Member States of the EU through a single registration.
Markets previously of interest may have changed in accordance with new applications in new markets. Markets of current and future interest should be considered when drafting a trade mark filing strategy to ensure trade mark protection aligns with the proposed timings, budget and commercial aims of the business.
A company previously operating the North Sea and the Gulf of Mexico in offshore intervention may have a market share where trade mark registration is key in the US, Mexico, the UK and Norway. The same business having decided to transition its business to include CCUS may consider work in Australia to be important in growing their business. A previously-conducted clearance search to determine if existing trade mark protection existed in the original countries of interest may need to be reconsidered when entering new jurisdictions. Additionally the meaning of brand names may be carefully analysed for differences in language or cultural understanding.
7. Greenwashing
Avoiding accusations of greenwashing will be paramount as the public at large is becoming more educated in the energy transition and looking for meaningful change rather that simple marketing spin. Ensuring a rebranding exercise is reflected in meaningful corporate policy changes with proof points will reduce accusations of deceptive PR practices.
A well-thought-out rebranding strategy will serve to inform customers of a business’s directed shift to new markets while maintaining existing reputation and goodwill in the corporate brand. Incorporating a trade mark strategy bearing into the broader rebranding with the noted-points in mind will provide a strong new brand which can be enforced against third parties and forms a valuable business asset.
At Marks & Clerk, we have trade mark and patent attorneys, as well as commercial lawyers specialising in various fields of technology, including the energy sector, who can assist you in your intellectual property matters. Should you ever need our assistance please do not hesitate to get in contact with the authors, Tomas Karger and Jason Chester.