The event name as a trade mark – when should you consider seeking protection?

An event name is one of the most valuable assets an organiser builds up over successive editions of the event. Despite this, issues relating to its legal protection are often pushed into the background. A lack of adequate legal protection for an event name can entail significant risk. For example, a third party may register a mark corresponding to the name of an established event with the intention of subsequently selling it to the organiser for a fee. Equally problematic is a situation where the organiser unwittingly chooses a name that infringes on prior trademark rights held by another business. Each of these scenarios can lead to costly disputes, hinder the brand’s further development, and sometimes force a change to the event’s name.

Trademark registration as a tool for brand protection

If the name is to be used for years to come and build the event’s recognition, it is worth considering protecting it as a trade mark. In the case of events, this will usually be a word mark or a combined word and figurative mark.

The primary purpose of trademark registration is to protect the value that the organiser builds around the event’s name over the years as it develops. By obtaining protection rights, the organiser gains the exclusive right to use the mark in relation to specific services, can more effectively prevent the use of names that might mislead the public, and can develop additional sources of revenue, such as merchandising. Registration also makes it easier to enforce rights against parties capitalising on the event’s reputation.

Can any event name be registered?

Whether a name can be registered depends primarily on whether it possesses what is known as ‘distinctiveness’. Names that merely describe what the event is, its characteristics or where it takes place do not, as a rule, qualify for protection. Terms such as ‘Online Marketing Conference’ or ‘Warsaw Wedding Fair’ are treated primarily as information about the nature of the event, rather than as individual trade marks. For this reason, registration authorities generally refuse to grant exclusive rights to such terms, so as not to restrict other organisers’ ability to describe their own offerings.

However, the descriptive nature of a mark does not automatically mean that it will never be worthy of protection. The Office may find that a given name possesses what is known as ‘secondary distinctiveness’. This means that, as a result of genuine and consistent use of the sign in trade, the relevant public begins to perceive it not merely as a description, but primarily as an indication of a specific organiser.[1]

In such situations, it is worth considering consulting a professional lawyer or patent attorney. They can help assess whether there are grounds for invoking secondary distinctiveness and assist in preparing arguments to persuade the Office to grant protection.

However, original names in which a descriptive element has been combined with a distinctive, individual graphic component have a much better chance of being registered. Such marks have greater potential to be recognised as distinctive. For this reason, it is worth taking the legal aspects of a name into account as early as the conceptual stage.

Is trademark registration always necessary?

Not every event requires trademark registration. For instance, in the case of one-off or small-scale projects, the benefits of obtaining protection will not always justify the costs of registration.

However, the situation changes when the event name is intended to function as a standalone brand. This is particularly the case if:

• further editions are planned under the same name,
• significant expenditure is incurred on promoting and building brand recognition for the event,
• the event serves as a platform for cooperation with key sponsors and partners, for whom the reputation of the name has intrinsic value,
• expansion into other markets, including overseas ones, is being considered,
• the distribution of additional products or services bearing the event’s name is envisaged.

In the case of events that have been developed over many years, leaving the name unprotected may hinder the brand’s further development. If another entity obtains protection rights for an identical or similar designation, the organiser may face significant restrictions on the continued use of the existing name. In practice, this may mean having to negotiate the acquisition of rights or obtain consent to continue using the designation, and in some cases it may also involve taking legal action. This entails additional costs and, at times, the need to change the event’s branding. The greater the brand recognition a brand has managed to build, the more complicated and costly such a process may prove to be. For this reason, it is worth considering the decision to protect the name as early as the event planning stage, rather than only once the brand has established a firm position in the market.

Other ways to protect a brand

Obtaining legal protection does not exhaust the issue of protecting an event’s brand. It is the organiser’s responsibility to ensure a consistent presence of the name in the digital environment, in particular by registering internet domains associated with the name, maintaining official social media profiles, and controlling how the brand is presented in promotional and sales materials.

At the same time, care must be taken to ensure that appropriate contractual provisions are in place governing the use of the event name by sponsors, media partners and subcontractors, so as to prevent its use in a manner contrary to the organiser’s interests or which is misleading as to the scope of the cooperation.

Summary

In today’s events market, an event’s name is much more than just an identifying feature. Over time, it becomes a vehicle for the organiser’s reputation, brand recognition and the trust of participants, partners and sponsors. The more successful an event is, the greater the value its name acquires, both in marketing and business terms.

It is therefore worth considering issues relating to the protection of the name as early as the event concept development stage. These primarily include selecting a name that can serve as a trade mark, checking that it does not conflict with the prior rights of other entities, and, where necessary, registering the name itself. In this way, the organiser not only reduces the risk of future disputes over the name but also gains greater flexibility in how they can develop and commercialise the event’s brand as subsequent editions take place.

[1] see K. Szczepanowska-Kozłowska [in:] System of Private Law, vol. 14b, Industrial Property Law, edited by R. Skubisz, Warsaw 2017, p. 675.