A Glob­al Meet­ing of the Brands

In Brief

Last month, I rep­re­sent­ed Swaab Attor­neys at the 138^th Annu­al Meet­ing of the Inter­na­tion­al Trade­mark Asso­ci­a­tion (INTA) in Orlan­do, Flori­da – the home of famous theme parks includ­ing Dis­ney­world and Uni­ver­sal Stu­dios – busi­ness­es who clear­ly val­ue a well-devel­oped and well-pro­tect­ed brand. Over the course of the con­fer­ence it became clear that an appro­pri­ate brand pro­tec­tion strat­e­gy is still fun­da­men­tal to the suc­cess of any busi­ness, big or small and no mat­ter where they oper­ate around the world, giv­en the ever increas­ing impor­tance of the online world.

Glob­al exchange of ideas

The con­fer­ence saw around 10,000 brand own­ers, lawyers and inno­va­tors meet to dis­cuss cur­rent intel­lec­tu­al prop­er­ty issues fac­ing organ­i­sa­tions around the world and to dis­cuss inno­v­a­tive approach­es to brand pro­tec­tion strate­gies. Through­out the con­fer­ence I met with inter­na­tion­al clients, for­eign asso­ciates and friends of Swaab to share ideas and hear from lead­ing indi­vid­u­als on inter­est­ing top­ics including:

• strate­gic options to guard against trade mark infringe­ment in the mod­ern market;
• the rise of hash­tags and their use as trade marks;
• the future of plain pack­ag­ing leg­is­la­tion around the world giv­en the recent Aus­tralian expe­ri­ence with the tobac­co industry.
• recent changes to trade secrets law in the UK and US;
• ambush mar­ket­ing and social media in light of the upcom­ing 2016 Olympics in Rio; and
• Chi­nese trade mark pro­ce­dure in a world where many busi­ness­es are man­u­fac­tur­ing in Chi­na or are increas­ing their mar­ket pres­ence in Chi­na to tar­get the grow­ing mid­dle class.

Inno­va­tion was a com­mon theme across all dis­cus­sions and in par­tic­u­lar the role that it plays in shift­ing how we source, buy and sell prod­ucts on a dai­ly basis. While we all want to max­imise the poten­tial of the new oppor­tu­ni­ties pre­sent­ed by the ​‘inno­va­tion boom’, brand own­ers should still ensure their busi­ness­es are well rep­re­sent­ed and pro­tect­ed on e‑commerce sites or in non-tra­di­tion­al media out­lets, as it can be dif­fi­cult to con­trol the infor­ma­tion and prod­ucts avail­able to the pub­lic in an online world.

Social Media

Brand own­ers need to be savvy when mon­i­tor­ing and pro­tect­ing their brand online. If you are too relaxed, you will be seen as an easy tar­get by infring­ing par­ties and you may weak­en any intel­lec­tu­al prop­er­ty rights estab­lished over time. Alter­na­tive­ly, if you are too aggres­sive in your pro­tec­tion approach, you may erode the good­will being devel­oped in your brand by sat­is­fied cus­tomers or brand loy­al­ists through fan accounts or prod­uct endorsements.

How­ev­er, be wary of the rise of trade mark infringe­ment and dam­age to brands by users on social media behe­moths like Face­book and Insta­gram. Insta­gram, the fun pho­to-shar­ing social net­work­ing ser­vice, has, over the last few years, become an avenue for fake accounts that offer cheap coun­ter­feit prod­ucts. This social media plat­form is not unique and sim­i­lar acts can be seen across many oth­er sites.

Brand own­ers at the INTA con­fer­ence said they were con­scious of the dam­age that these fake accounts cause to their brand not only in the obvi­ous direct rep­u­ta­tion­al dam­age or the reduced mar­ket share caused by the avail­abil­i­ty of coun­ter­feit goods, but also the poten­tial for brand fatigue, where your busi­ness sim­ply becomes back­ground noise in an over-sat­u­rat­ed online mar­ket. How­ev­er, more pos­i­tive­ly, busi­ness­es can utilise these plat­forms to estab­lish the rep­u­ta­tion of their brands in over­seas mar­kets, which can be very impor­tant when estab­lish­ing first use of a trade mark.

E‑Commerce Plat­forms

Addi­tion­al­ly, online mar­ket­places were a hot top­ic as they pro­vide con­sumers with a huge range of prod­ucts aggre­gat­ed from a wide array of providers. The avail­abil­i­ty is high­er, the selec­tion is wider and the prices more com­pet­i­tive than tra­di­tion­al stores. The rise of eBay, Mer­ca­do-Libre, Aliba­ba and Tmall pro­vide busi­ness­es with new avenues through which they can reach con­sumers and sell their prod­ucts, often in mar­kets pre­vi­ous­ly unex­ploit­ed by the busi­ness. The plat­forms, how­ev­er, can also be lever­aged by coun­ter­feit­ers. Busi­ness­es must mon­i­tor and move quick­ly against infringers to pro­tect their brands.

Remov­ing list­ings from some sites can be achieved by util­is­ing a site’s exist­ing take down pro­ce­dures. How­ev­er, some­times small­er sites do not have a prop­er process in place or the exist­ing process can be fur­ther com­pli­cat­ed as the prod­uct descrip­tion does not con­tain a brand name or trade mark but instead uses an infring­ing prod­uct image or logo. The list­ings become hard­er to find, and the pro­ce­dure more labo­ri­ous, as they are not eas­i­ly searchable.

Like­wise, busi­ness­es should be aware of any dis­trib­u­tor or busi­ness part­ner who uses a trade mark beyond the scope of their licence or starts sell­ing prod­ucts online in breach of a sup­ply agreement. 

Devel­op a strategy

Over­all, all del­e­gates agreed that it was fun­da­men­tal to con­sid­er and imple­ment a strate­gic approach when devel­op­ing and pro­tect­ing your brand. This can be done by reg­is­ter­ing a trade mark or design, ensur­ing that you own the copy­right in any key art­work or prod­uct images and enforc­ing those rights, and main­tain­ing appro­pri­ate licenc­ing arrange­ments with dis­trib­u­tors, retail­ers or busi­ness partners.

We can work with you to tai­lor an appro­pri­ate strat­e­gy to pro­tect your busi­ness and help pre­serve your brand’s unique lus­tre. Make sure your busi­ness val­ues its brands (read more here) and keeps its house in order (read more here) so that we can use the skills learned from our friends at INTA to help your busi­ness put its best foot for­ward in the online world.