"Brands are like celebrities. They should never leave their house without a good lawyer." So says David Nichols, managing director of brand consultancy Added Value, who - like most working in brand development - is used to balancing creativity with issues of intellectual property (IP).
Lawyers have become something of a fixture at big brand development meetings as brand owners seek greater protection for their products against copycat rip-offs. Name, slogan, package design and shape, as well as technology can all be protected through judicious registering, and more and more clients are making sure they do so as a matter of course.
It is a classic stitch-in-time situation. Paying attention to creating a design with defendable characteristics before a brand has even launched, can save its owners a lot of hassle, time and, crucially, market share later on.
"Competitive advantage is in how you present your goods. So if someone is taking key elements of your brand, or even the strapline and copying it, that can be very damaging," explains Paul Randle, a solicitor at IP legal specialists Briffa, who believes this is becoming a board-level issue. "It is about considering protection and infringement during the design process and certainly before launch."
Stephen Groom, a commercial partner at Osborne Clarke and a specialist in marketing and media law, adds: "Increasing vigilance is essential for marketers or they can find themselves in hot water. We recommend that, at a very early stage in the design process, marketers search the registers to see what is out there and so avoid disaster further down the line. Ignorance of a registration is no defence - it is incumbent on the marketer to take advice at an early stage."
Areas of protection
Brand owners and designers are undoubtedly getting to grips with what they can do to protect themselves. According to Bruce Proctor, Diageo associate general counsel IP, and previously global head of trademarks at Coca-Cola, big-brand owners are increasingly aware of what is at stake.
"If you don't have adequate protection of your brand, you end up sharing your wealth with others. And if you are not careful, you step on others' toes. It is lose-lose either way if you don't pay attention to IP,"says Proctor.
He heads a 33-strong global IP team, which gets involved early on in the design process, to give as much protection as possible to new and extending brands.
"We try to create a very proactive relationship so we can explore optimal ways of building in protection around the things needed to make packaging distinctive. When you plant your commercial flag, you want to do it in bedrock not sand," he says.
There are several ways to gain protection for brands. For innovations, such as packaging technology, a patent can be applied for. Key criteria are that the candidate must be novel, inventive and capable of industrial application.
But even multiple patents are not an absolute guarantee of protection, as Gillette is finding in its battle with Wilkinson Sword (see box).
Brand names, logos and external shapes can all be registered as trademarks, but not if they are purely descriptive. Coined phrases or more abstract words have more success. Some brand slogans can be protected by registering them as a trademark, but not if they are merely descriptive.
But there are exceptions. "You can register a fundamentally descriptive mark, if you can show that before you filed your registration papers, it had become so recognisable it had taken on a distinctiveness in the public realm," explains Osborne Clarke's Groom.
But this is a somewhat grey area, as demonstrated by the dispute between Nestle and Mars (see The Expert's View, right), which has been referred to the European Court of Justice. A decision is not expected for a year.
Trademarks, which are renewable every ten years, can last indefinitely, but only give protection by sector categories. Design registration covers all categories, but only lasts up to a maximum of 25 years. Logos registered as trademarks can also be registered as designs. The owner of a design registration can stop any design that is not materially different.
All these registrations are comparatively inexpensive compared with what is at stake. But being registered does not mean you are home and dry.
"It's an extra weapon in the armoury," says Dominic Farnsworth, partner at lawyers Lewis Silkin. "Registrations are easy to get, but the fact you have it only gives you strong protection if the registration is strong in the first place."
Where appropriate, brand owners can also prosecute under the law of Passing Off - which relies on a brand being so familiar in the market that when another comes out with a suspiciously similar product, it is deemed to be confusing. The British Brands Group, a body of major brand owners, feels this is difficult to enforce and is lobbying the Patent Office and the Department of Trade and Industry to get it tightened up.
According to British Brands Group director John Noble, it is a question of extent: "Fair enough to use the same category cues,"he says. "But for us, the test is the consumer being misled into thinking a product is the original or has come out of the same factory as the original - that's a step too far."
"It isn't acceptable for someone else to trade off our investment," adds Don Williams of brand designers PI Global, who says his company and sister 3-D-packaging specialists PI3 make sure clients register all relevant trademarks, designs and patents. "You need to be as unique as possible."
This distinctiveness is the key, as most designers agree. "Functionally and legally, being different is the best protection for your brand," says Added Value's Nichols. She points to Nescafe's distinctive jar shape and Egg's innovative identity as aspects which make them defendable.
Creating defensible graphic design is difficult, but it helps to be category-breaking, says Vicky Bullen, managing partner of Coley Porter Bell. She cites its striking design for Kotex sanitary products. "By being the leader, you own that language - the key thing is to stay visually ahead," says Bullen.
"It is about putting as much clear water as you can between you and the competition," agrees Jill Marshall, executive chairman of branding and packaging at Design Bridge. "If you set your stall out at the start with something ownable, they can only follow you so far."
Gordon's Gin had been vulnerable to this kind of chipping away before Design Bridge redesigned it last year. The design was a distinctive bottle shape with embossed logo and a different take on the much-copied florid label graphics.
The Anti-Copying in Design group (ACID) suggests introducing insignificant details into a design, to catch copycats. "If a copyist uses those details, it's a good way to trap them," says ACID chief executive Dids Macdonald. Ordnance Survey (OS) included a tiny detail on a map, depicting a non-existent feature. This enabled it to challenge a map maker who had copied OS's map wholesale.
While being distinctive might always have been creatively desirable, now it is assessed and nuanced for legal reasons, as well as to ensure that there are enough registrable features.
"Now the legal departments are starting to take a proactive role in saying what factors need to be borne in mind to get the design protected," says Simon Chapman of Laytons.
The conundrum is at what point in the process to bring in the lawyers. It is a balance between cost and effectiveness. Do you check every design option on the list, a procedure that could be slow and financially onerous? Or do you risk ending up with a short list of designs, which all end up being struck out for legal reasons, something which Unilever legal counsel Marjon Esfandiary, one of the group's UK trademark specialists, says happens quite often.
"Part of our mission is to get to these problems early," says Esfandiary. She often finds herself involved in the naming process with marketers.
While full searches are only carried out on the short-listed candidates, Unilever also does initial online searches on long lists.
"The earlier the better, but earlier is more expensive. You have to make the trade-off," says Nichols, adding that there is a gap in the industry for marketing-savvy lawyers, who will help find alternatives rather than just say no to brand proposals.
The side effect of so much protection is that it can be increasingly hard to find a brand name, which says what you want it to, but is not already registered. Last year, 80,000 new trademark applications were made.
"It's a classic problem. It is difficult to register a descriptive phrase. But the more descriptive phrases are the most attractive ones," says Groom.
"You can register a mark that's fundamentally descriptive, if you can show that before you filed your registration papers, it had become so recognisable it had taken on a distinctiveness in the public realm."
The congested name market has led to a recent trend for more abstract names such as Nectar and Orange. "The trouble with a completely abstract name is you have a huge job to do with building familiarity," says Deborah Carter, creative director of Dragon. "It is often right for big names with big support, but a smaller brand, which can't put so much clout behind it, will probably need something that says more about it."
Another way around name restrictions, she says, is giving a popular word "a twist" by changing it slightly or adding a compatible word to ensure it can be registered.
Esfandiary agrees: "You can add something small and it can make a big difference. The most difficult thing is to get marketing colleagues away from choosing descriptive names."
Brand protection is an area that is likely to increase in importance, especially in unstable economic times, which encourage a defensive attitude.
By putting IP concerns at the heart of the design process, diligently registering your own IP assets and being vigilant in policing them from rivals' infringements, you can give your brand considerable and valuable protection. But that doesn't mean anyone can rest on their laurels, says Diageo's Proctor: "It's always the case that they could come closer than you'd like. But that's just called competition."
GILLETTE vs SCHICK-WILKINSON SWORD
A ruling is imminent on the preliminary injunction in a patent infringement dispute between shaving rivals Gillette and Schick-Wilkinson Sword (SWS).
Gillette is arguing that Quattro, a four-bladed razor sold under the Wilkinson Sword brand in the UK, infringes patents on its Mach 3 razor and should be withdrawn from the market.
Launched in 1998, the sector leader, Mach 3, is protected by more than 50 patents relating to blade angles and distances between blades. Although Quattro has four blades, Gillette says the positioning rather than the number of blades is what counts.
Energizer, the parent company of SWS, denies that its Quattro razor infringes patents or Gillette's patented technology, which it argues are invalid and unenforceable. It also denies that Quattro would need to use the progressive geometric blade configuration that Gillette claims is protected by patent.
It has in turn applied for several patents for Quattro, which it feels will change the shape of the market.
Quattro, the world's first four-bladed razor, was launched in September and is priced, as is Gillette's Mach3 Turbo, at $8.99 (£5.30).
It represents Wilkinson Sword's biggest-ever investment in research and development. In the 1990s, Gillette spent $1bn (£573m) developing Mach 3.
A hearing on the preliminary injunction took place in the US last month.
The outcome is expected shortly. If granted, the injunction could force Energizer to remove Quattro from the shelves. If disallowed, Gillette, traditionally the leader of the $6bn (£3.4bn) worldwide razor market - but now facing increasing competition - may have to pay substantial damages to Schick, the number two in the market.
PACKAGING INNOVATION SHOW AT TOTAL PROCESSING & PACKAGING 2004
Date: March 29-April 1 2004
Venue: Birmingham NEC
Visitor profile: Aimed at anyone involved with the design of packaging, The Packaging Innovation Show at Total Processing & Packaging 2004 is for marketing directors, brand managers, packaging designers, retailers and packaging innovation managers.
Exhibitor profile: Rexam, one of the world's top five consumer packaging groups, is sponsoring the event, alongside the Faraday Packaging Partnership; Delcam, a global leader in the supply of CADCAM; and design company KinneirDufort. The initiative is also being supported by the British Brands Group, the Design Business Association, and design companies Fitch:London, PI3 and SiebertHead.
The 2020 Vision Design Challenge: Innovative packaging design is key to the successful marketing of products. The 2020 Vision Design Challenge has been created to inspire the packaging industry, marketers, retailers and everyone involved in the supply chain by showing what major design groups and the creative industry believe is the future of packaging. The Packaging Innovation Show at Total Processing & Packaging 2004 will showcase the best creative thinking applied to packaging in the retail environment for the year 2020.
Visit www.totalpp. co.uk or call 0870 429 4396 for more information.
THE EXPERT'S VIEW
DOMINIC FARNSWORTH partner, Lewis Silkin
Having spent millions building up a brand, it makes common commercial sense for brand owners to underpin this investment with strong legal protection from competitors.
Registered trademarks are perhaps the strongest weapons in a brand owner's arsenal, but obtaining a trademark can be an uphill struggle. The Trademark Registry may refuse an application on various grounds, including descriptiveness - namely that the brand is descriptive of the goods or services to be provided under that brand. The reasoning behind this is understandable.
For example, if a manufacturer obtained a registration for 'fast dry' for tumble dryers, its monopoly on this term could have an impact on other manufacturers, who might reasonably wish to use either of these descriptive terms themselves. But when it comes to deciding what is descriptive or non-distinctive, the waters are somewhat murky.
The UK Trademarks Act 1994 arose out of the Trademark Directive. This means questions of interpretation of the Directive fall to the European Court of Justice (ECJ). Procter & Gamble finally secured registration for 'baby dry' for its Pampers nappies after the ECJ ruled that the "syntactically unusual juxtaposition" of the words 'baby' and 'dry' was sufficiently inventive and unusual in the English language to overcome an objection of descriptiveness.
Some eyebrows have been raised at the Advocate General who, while viewing the 'baby dry' criteria as correct, has recommended that Wrigley's 'doublemint' application for chewing gum be rejected. The line between what is and isn't acceptable seems particularly fine.
Slogans and straplines can also be registered. But this is proving increasingly difficult after last year's decision by the Trademark Registry to issue a Practice Amendment note tightening up registration requirements.
At the moment, the ECJ's decision in respect of Nestle's application for 'have a break' is pending. Nestle's argument is that while 'have a break', when considered in isolation, may be non-distinctive, it has, through use, become distinctive through the goodwill built up in 'have a break, have a Kit Kat'.
Simply stated, if you were to say "Have a break" to a member of the UK public, the chances are they would reply "Have a Kit Kat". The question is whether part of a mark can acquire distinctiveness of itself when not used in isolation, but as part of a larger mark.
Even if the ECJ rules it can, Nestle may still fail if the English courts do not think sufficient distinctiveness has been acquired. And this is notoriously difficult to prove with commonplace colloquial phrases. So, success before the ECJ may not mean victory at home.