DESIGN: Staying on top in trademark battle - Manufacturers are trademarking the names, colours, shapes and smells of brands in an attempt to stop imitations

Manufacturers must be vigilant if they want to protect their brands from imitators. This was highlighted by the recent spat between Red Bull, manufacturer of the high energy ’stimulation’ drink and Beverage Brands, maker of a vodka-based product called VRB.

Manufacturers must be vigilant if they want to protect their brands

from imitators. This was highlighted by the recent spat between Red

Bull, manufacturer of the high energy ’stimulation’ drink and Beverage

Brands, maker of a vodka-based product called VRB.



Although VRB supposedly stood for Vodka Revitalising Bevvy, the initials

are also established club-speak for ordering a vodka and Red Bull. Red

Bull threatened legal action; VRB became VR.



But is it always this easy - and how can brand protection be built into

the design process? Beverage Brands’ swift response to Red Bull’s

protective swipe was no doubt motivated by the fact that in an earlier

’passing off’ action between Red Bull and another rival, Red Square, the

judge ruled in favour of Red Bull. Not only did Red Square have to make

changes to its packaging, it also had to make a substantial payment to

Red Bull.



There are two forms of court action open to brands hoping to challenge

imitators. The first is an infringement action, used if a brand is

deemed to have infringed on a rival’s trademark. The sole requirement is

to show that the rival’s brand is likely to confuse consumers, but it is

hard to prove.



Wagamama, the London restaurant chain, succeeded in bringing an

infringement action against a competitor using the name Ragamama.



McVitie’s famously failed in its infringement action against Asda in the

Penguin versus Puffin case.



Puffin was not similar enough to be deemed an infringement on the

Penguin trademark. However, McVitie’s did succeed in proving its case

that Puffin was ’passing off’ as Penguin.



Similarities in Puffin’s packaging design and advertising which called

on consumers to ’P ... P ... P ... Pick up a Puffin’ were found to cause

confusion to customers and to potentially damage McVitie’s business.



John Peacock, a partner at trademark attorney Eric Potter Clarkson,

points out that ’passing off’ can be hard to prove: ’You must establish

that the other side is a misrepresentation which causes confusion to

customers and damage to business or goodwill, or has the likelihood of

doing so,’ he says.



HFC found out how hard this was to demonstrate in its court battle with

HSBC, the company formerly known as Midland Bank. HFC sought an

injunction to prevent HSBC from rebranding its 1700 outlets, arguing

that it was confusing its customers.



The judge ruled against HFC - much to the relief of HSBC’s marketers,

who have spent pounds 7m on rebranding the bank in the UK alone.



The verdict surprised many commentators. The difficulty in predicting

the outcome of such cases has made manufacturers more aware of the value

of trademarking not only the name but other aspects of a brand.



’In the Penguin versus Puffin case, McVitie’s had not registered the

get-up, the colour or the overall packaging style of the brand,’ says

Peacock. ’Now McVitie’s registers everything it can. The trademark

register now has a lot more marks for shape, smell, get-up or

packaging.’



It is only since the introduction of the Trademark Act in 1994 that

manufacturers have been able to protect aspects of a brand such as its

shape. In order to secure registration, the shape or name has to be

distinctive, comprising a sign or combination of signs. This is known in

legal terms as the ’get-up’.



’You can trademark names, shapes, and certain devices such as Kellogg’s

rooster, or Sugar Puffs’ Honey Monster, which would ensure the brand was

recognised even without its name on the packaging,’ says Satkar Gidda,

sales and marketing director at design agency Siebert Head. ’It is more

difficult to lay claim to colours, packaging or shapes because it could

be argued that these were an established part of the category language.

It would be a brave person who doesn’t follow the yellow category colour

for tonic water.’



An increasing number of brands are staking a claim to a unique element

of their design or marketing. Direct Line has registered its advertising

jingle and Toblerone its shape, while BP plans to register its corporate

green colour.



Unique three-dimensional designs may be the key to owning and defending

a property. ’We try to come up with patentable concepts and failing

that, certainly ownable or defendable properties, ’ says Gidda.



This view is backed by Pam Robertson, a director at branding consultancy

Brandsmiths: ’We try to create distinctive brands and enhance the brand

proposition through its visualisation. It is easier to protect a brand

if you have something different.’



McVitie’s lost out to supermarket own-brand digestives because it did

not own the concept. When the company came up with the Hob Nob, it

quickly laid claim to the name and blocked possible rivals.



Nestle was so frustrated by supermarket imitations of its Gold Blend

jars that it spent two years and about pounds 10m on a new

’nipped-waist’ look with an octagonal lid.



Corporate identity designers can trademark names or logos, but there are

pitfalls. According to corporate identity specialist Corporate Edge,

more than 1600 companies in the US changed their names in 1997. More

than 700 of those changes resulted from mergers and acquisitions.



Finding an original name for a new enterprise is also hard. ’Total

protection, which comes when you register the name itself, is very

difficult because we are saturated by names,’ says Terry Tyrrell,

chairman of Enterprise IG. The company is developing a new identity for

the merger of British Steel and Koninklijke Hoogovens.



Tyrrell says new names generally fall into one of four categories:

descriptive (such as British Steel); associative, which convey a brand’s

key attributes; hybrid, and abstract names. Descriptive names are almost

impossible to register, as they could easily describe rival

activities.



The Brandnaming Company was behind Flaunt for Triumph International and

Fuse for Cadbury’s. More recently, it was charged by the software

company NCR with finding a name for new ATM software which could be

registered in 138 countries. The company discovered there were already

1.9 million high-tech product names. It finally settled on APTRA, a name

based on a combination of applications and translations.



’It is extremely difficult in this area to develop names based on real

words,’ says Jonathan Hall, brand strategist at Corporate Edge. ’The

internet has also made the question of branding much more

internationally focused.



Even if you operate from a shed in Wapping, you are perceived as a

global brand and designers have to take that into account for domestic

assignments.’



Domain names on the internet have to be registered separately.



Registration is not subject to the same rules as trademarking, but names

are already running out.



’Of the 25,500 words in the dictionary, only 750 are still free, with

the .com and .co.uk suffixes also becoming increasingly full,’ says

Hall.



’This is leading to more pressure to come up with made-up names.’



INTERNATIONAL TRADEMARKING



For an international company with a portfolio of brands, trademark

registration can be a complicated business.



While registration in Europe has been made easier by the launch of a

European Trademark Register based in Alicante, international companies

may still find they are required to apply for trademarks in multiple

classes in a number of countries.



Companies that plan to expand into new marketplaces while protecting

their brand equity need to think ahead about registration to avoid

disappointment.



’Trademarking shouldn’t drive the commercial strategy, it should be led

by it,’ says Cathy Newman, head of marketing at The Brandnaming

Company.



’It is important to ensure that you don’t become a slave to your

trademarks.’



The Brandnaming Company has launched a new product - BrandCover - which

is aimed at international companies that have more than five brands and

operate in five or more countries.



The service sets out to align trademark protection with marketing intent

and strategy, both current and future, and has already benefited

Gallaher, the cigarette manufacturer.



The process has four stages. First, the company establishes the perfect

portfolio of protection for the client. Stage two involves mapping out

the client’s existing protection level.



These are then compared to identify areas of mismatch, where the client

may hope to review its strategy.



Finally, BrandCover will develop and implement any changes.



’The idea is that we can fill in the holes where a company is vulnerable

and if you can’t fill them in, at least we can warn them about it,’ says

Newman.



’Doing a BrandCover project doesn’t necessarily mean you are going to

save money - you may find the company is not protected adequately - but

it is about being prepared for the future.’



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