Brands routinely find creative and innovative ways to generate new customers or retain existing ones. A notable recent example of this has been the use of sub-brands to branch out into the same or a new market without jeopardising the parent brand’s existing position. UK Trademark Attorney Laura Morrish discusses the trademark implications.
Sub-brands, or secondary trademarks, can reflect a different personality than their parent brand, target a different generation of consumers or create a market at a different price point without compromising the status of the main brand or product line. Their use has advantages over creating a new brand from scratch due to the parent brand's existing reputation and consumer base, as the use of the same mark for a different range of products will freeride on the back of that reputation.
Sub-branding in the automotive, food, beverage and fashion sectors
Sub-branding is an established practice in the car industry; for example, the use of the main TOYOTA brand alongside secondary brand names for the relevant vehicle, e.g. HILUX or PRIUS, each with its unique personality and image. The same applies in the food sector, where sub-brands are commonly used to indicate a product, or product range, alongside a parent mark that indicates the product origin; e.g. Cadburys’ is the parent or ‘umbrella’ brand for Flake, Double Decker, Dairy Milk and so on.
In the food and beverage industry, sub-brands are also now being used to indicate healthier options, low alcohol alternatives (e.g. Coca Cola Zero, Becks Blue and Müller Light) or related products. For example, Diageo has created several new gin varieties, including sloe gin, elderflower gin and ready-to-drink products, that are all sold under the GORDONS trademark alongside descriptive sub-brand names, e.g. SLOE. Other businesses have used existing brand names to expand into completely new ranges. For instance, Lotus Bakeries now produces BISCOFF ice cream, spread and sandwich biscuits alongside its original speculoos biscuit.
Fashion retail provides another example, with luxury fashion houses using sub-brands to create less expensive, secondary lines to reach out to a different consumer, without compromising their existing reputation. In these circumstances, the sub-brand is often distinct from the parent brand; for example, designer Christopher Kane uses his new brand MORE JOY to reach a younger market. However, the sub-brand might also be connected to the original mark, as with Matthew Williamson and Alexander McQueen, who sell lower-priced products under the shorter, catchier marks MW and McQ respectively.
Trademark considerations for sub-brands
First, consider whether the sub-brand is worth protecting. The answer will depend on the nature of the mark and how it will be used:
- If the sub-brand is both distinctive and entirely different from the parent brand, then protection is essential. However, if it is a descriptive term that will be used alongside the distinctive parent brand, then registered protection. may not add further value. Many sub-brands will fall along the scale in between these two extremes and so each must be assessed on its own merits.
- Will the sub-brand appear on its own, or always with the parent brand? What goods or services will it be used for and how might the use for those goods impact the parent brand? Generally, if the brand will be used on its own and/or for an entirely different range of products then trademark protection is likely to be necessary.|
- How long term will the use be? If the sub-brand will only be used for a seasonal product or limited edition item, then its use may have ceased by the time the mark reaches registration. Unless it is likely to be repeated annually, there would be little to be gained from protecting this type of sub-brand.
If the decision is made to register trademark protection, then the next step should be to undertake a clearance search to establish whether a chosen sub-brand is available for use/registration in the relevant jurisdiction. Even if a secondary mark is descriptive, and at first glance unregistrable on its own, it is important to check that a third party has not managed to ‘sneak’ it onto the register, or gain protection for it alongside a distinctive element that might be similar to the parent brand. Common law searches would also provide an indication of how widely it is used in the relevant field, which may affect the choice of sub-brand.
Where the mark will be used for goods or services that are different to those sold under the parent brand, even where the parent brand is well known, searches should be conducted in the new field of interest. Marks registered in this area that may not have previously been of concern may now conflict. Trademark monitoring, enforcement and co-existence strategies will likely also need to be updated as a result. (For more on this topic as it applies to the food and beverages sector, read our article 'Sober October: What the 'nolo' drinks trend means for trademark owners')
For further guidance on this topic as it applies to your branding strategy, please speak to your Novagraaf attorney or contact us below.
Laura Morrish is a UK Chartered Trademark Attorney based at Novagraaf in the UK.