How to Build and Protect a Brand

The Importance of Brand

• It is a common mistake (especially for tech companies) to think that brand is not important;

• Innovation and novel positioning will see a business through to success;

• However the brand is the one word elevator pitch, encapsulating the nature and ethos of the business, as well as the nature of the product/service;

• If it does not do this inherently it can through education of the public;

• In many businesses it is the only thing that differentiates one business from another, or at least which allows businesses to express their differentiation;

• A strong brand comes about through:

– A sensible initial choice;

– A pragmatic approach to brand protection;– Ongoing effort by way of communication and enforcement

What is the Function of a Trade Mark

• Distinguishes the goods or services of one undertaking from those of another

• Badge of origin

• Guarantee of quality

• Repeat purchasing

• Unique indication of origin of goods/services

• “Trade Mark” is a legal term defining a specific right. “Brand” often used to refer to a combination or range of things that combine to make up the identifier of a company or product to the consumer. The “brand” may include, name, logo, font style and other less tangible things such as writing style, colour scheme etc. Brand is often protected by way of a number of trade marks.

Choice of Brand

• Searching – make sure that there are no obvious bars or potential bars to use. There is nothing more detrimental to brand reputation than launching a brand and being forced to change shortly thereafter;

• Nature of Mark – will it be likely to be easy to protect. Is it “distinctive”?

• Communication to consumers – historically most branding experts tell us that the best brands tell the consumer what the product or service is. However is this the right approach bearing in mind all that the brand needs to do for your business? Most now acknowledge that brands must differentiate not describe.

Search

• Ensure that appropriate searches are conducted within reasonable budget

• Think about geographical expansion

• Think about product expansion

The Importance of Being Distinctive

• It is the fundamental concept in trade mark law

• It is what allows registration

• Key in analysis of comparison of marks

– Sabel v Puma: one of the factors that impacts on likelihood of confusion;

– Medion: comparison of distinctive elements/ elements that play an independent distinctive role;

• Without this it will be very difficult to prevent others from using your brand, and if so how does it remain your unique differentiator?

s.3 UK Trade Marks Act 1994

• Mainly directly comparable to Art 7 CTMR 207/09• S.3(1)a – not capable of being a trade mark• S.3(1)b – not distinctive• S.3(1)c – exclusively designates a characteristic (descriptive)• S.3(1)d – has become the common name in trade (generic). How does this relate to the

term being used on the market/internet• “the proviso” – no objection under “b”, “c” or “d” if it has become distinctive as a result

of the use of it by the proprietor

Does a Mark Convey Meaning?

• Some marks are arbitrary and on that basis are usually regarded as being inherently distinctive. Eg, GOOGLE, KODAK

• However, most look to convey meaning about the product or the company, and whether the mark is inherently distinctive depends upon how that meaning is conveyed;

• UKIPO position – descriptive means conveys “clear and unambiguous meaning”;• Unusual Juxtaposition – BABYDRY • Ambiguity - DOUBLEMINT

How Does a Mark Convey Meaning?

• The normal objections to registration of a trade mark are all about the meaning the mark conveys

• If the mark conveys clear and unambiguous meaning about some characteristic = “c”• If it conveys clear and unambiguous meaning about something else relating to the

proprietor or the business sector = “b”• BUT is this how consumer perception works? Whilst registration is important, the most

important thing is that the brand functions how the business wants it to for the relevant consumer.

• What makes someone see a word used in the context of goods/services and think of it as a TM and not something else?

• Context?• Presumption?• How is the meaning conveyed?• The DIGALOT spade (legal position versus consumer perception of brands)

Visual Addition

• Does it look like a trade mark? Visual addition can help obtain registration but will this really help?

• UKIPO practice on “surplus” – BEST BUY case

• Starbucks v BSkyB:

– “I conclude that the CTM is precluded from registration in relation to the services in issue because NOW would be understood by the average consumer as a description of the characteristic of the service, namely the instant, immediate nature of the service. The firgurative elements of the CTM do not affect this conclusion.”

– “nowness”

– “the fig leaf of distinctiveness”• Sun Ripened Tobacco

Protection of the Holistic Brand?• Protect key words;• Think about logos?• What about key visual images?• Typeface?• “Tone of Voice”• Concepts• Style of advertising?• Look of website?

Impact of Distinctiveness on Enforcement

• Distinctive character an essential/fundamental part of assessment

• Do the Courts understand how it works?

• WS Foster v Brooks Brothers– Gives impression of English heritage, old fashioned craftsmanship, quality etc– This increases its dictinctive character?– It is distinctive but is this right?– Is it “weak”?

• Shoe Boudoir– “the word boudoir is a familiar word, allusive both to the

idea of dressing up and to a certain ornate aristocratic style”

– Not as distinctive as other elements and so not the dominant element– In this case “weak” element not enough– Independent distinctive role?

Well Known Marks• Wider scope of protection in view of well known nature• Reputation a question of fact• Does inherent distinctive character impact on such marks?

• Impact on “due cause”?• Impact on establishing “link”• Impact on establishing “unfair advantage” or “detriment”

Protect your Brand

• Trade Marks generally national in extent (but EU and International TMs available);

• Need to be protected for specific goods and services – “classes”. The wider the coverage the wider the right but the higher the cost;

• Trade Mark Protection Strategy:

– Think about key elements of brand;

– Protect elements separately;

– Protect for key jurisdictions and products;

– “Priority”

– Take a tiered approach – think about and budget for plans

• Compare:

– Company names

– Domain names

– Social media tags

– Adwords

Tell People About your Brand

• Marketing

• Marking – ie “TM” and “R”

• How the brand is used

– Adjectival use

– Do not use in a generic way

– Highlight your brand

– Think about importance of different brand elements in communications

Enforcement

• Unfortunately the rights do not enforce themselves

• Sue for trade mark infringement or passing off – for a clear and flagrant breach of your rights this can be the only way. Expensive (although can recover your costs if successful).

• Court proceedings not the only way however. For example:– trade mark oppositions

– pre-action negotiation/ settlement

– domain name disputes

• The stronger your rights, and the more clear cut the infringement, the less you will spend on enforcement

• Watching (trade marks, domains, content, PR research value)

What we cannot prevent

• Use of the descriptive parts of marks

• Descriptive use of your marks (as long as in accordance with honest practices in commercial matters)

• Use of your marks to refer to you – eg comparative advertising

• BUT CAN PREVENT:– Use of identical mark in relation to the goods/services covered by your registration;

– Use of a similar mark in relation to identical or similar goods/services where there is a likelihood of confusion;

– If reputation can be established can prevent use of a similar mark which takes unfair advantage or is detrimental to the distinctive character or repute of your registration

– COPYING IS NOT REQUIRED

Policing your marks – what to look out for?

• Direct copying

• Manipulation of your branding

• Anything that undermines or dilutes the power of your brand

• Trade mark applications

• Use Watching services

Sounds Easy?

• There is a lot to do and think about;

• Cost is an issue;

• However, there is always something that can be done on any budget;

• Do not ignore issues;

• Always think of the overall strategy and end point when determining your strategy;

• Ultimately a good brand is built and developed on the back of a good business – it is very difficult to develop a good brand without something to back it up;

• However, many good businesses do not get what they could out of their brands, and could do more;

• Sensible choice, strategic enforcement, and ongoing effort in terms of communication and enforcement will all help.