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News
1 May 2009
The Power of Branding -How Solid are your Foundations?
In these times of economic recession it will interesting to see which brands come out the other end untainted, or perhaps even stronger than they were prior to the downturn. With many of the large financial brand owners like Lehman Brother Holdings Inc., in administration, one may speculate as to whether Lehman Brothers which has been around since the 1850's can be reinvented as a brand which will exist in ten years time. Formerly well known Wall Street brands such as Merrill Lynch have now faded into relative obscurity, whereas Bank of America, previously a regional US based bank (and now owner of Merrill Lynch), has risen to become the second most recognised brand in the banking sector according to the 2009 report by the brand consultancy firm, Brand Finance. The next few years will be a good test for the strength and staying power of a brand and even apparently unassailable brands such as Nike, which has already reported a 15% drop in sales in Europe, will be made work that little bit harder.
A strong brand involves consistent values and principles together with a clear ethos and culture, (or counter-culture). A Trade Mark whether in word or logo form, or a combination of these, is the foundation for most brands and is the single most important intangible asset behind the brand. Therefore choosing this Trade Mark as the cornerstone of your brand is a crucial first decision. It is essential that you have a Trade Mark in which you can firstly obtain registered intellectual property rights and then maintain, enforce and defend these rights. It is also essential to be aware of other elements of your brand which cannot be registered but can also be protected through some other system of protection such as copyright, design right or the law of passing off.
Choosing The Right Trade Mark
A recent article was carried in many of the English papers about Liverpool Football Club attempting to register the Liver Bird in the UK Intellectual Property Office. They wanted to obtain a registration which would have given them protection in relation to goods as diverse as "metallic framed conservatories", "disposable nappies for babies" and "oven mitts". The Liver Bird emblem dates back to 1350 and is an emblem used by Liverpool County Council and other institutions and businesses. It forms part of the Liverpool club crest and has been used in various forms in the Liverpool Football Club Trade Marks over the years. They already hold a Registration for this Liver Bird with the letters, "L.F.C." underneath.
The objections from the general population in Liverpool and the council were so strong that the application was withdrawn. The issue seemed to be that while Liverpool Football Club may have been using the Liver Bird within their insigne for some time, they should not be able to claim a monopoly right in this historic emblem. If a Registered Trade Mark had been granted to LFC, the council may have had to take a licence or pay royalties for their continued use. However, it has been suggested that the fact a firm of Manchester Attorneys filed the application may have fanned the flames of the average Liverpudlian's fury.
The lessons, if any, to be taken from this are that firstly, you should ensure that any complex Trade Mark is broken down and protection obtained for the distinctive individual parts, if those parts are going to be used on their own. Therefore, if you have a logo and word mark which are used together and separately, the best form of protection will be given to you by making three applications: one for the logo, one for the word mark and one for the combination of these.
Secondly you should ensure that the Trade Mark you chose can actually be protected. If the Liver Bird, or something very similar had been used by many diverse bodies then it would not be capable as functioning as an indicator of origin in relation to goods emanating from Liverpool Football Club. Another aspect to this is that even if the Liver Bird had been able to be registered on its own as a Trade Mark, the extent of protection would have been very narrow as Liver Birds exist in slightly different forms for a range of goods and services provided by other parties. If LFC were primarily interested in preventing counterfeit goods the counterfeiters may only have to change the stylisation of the Liver Bird logo very slightly to avoid infringement.
Is a search worth the expense?
A recent American case brought home the danger of not conducting a clearance search prior to launching a new brand. The company owned by the heirs of Jimi Hendrix sued the owners of a new brand of alcoholic beverage, which was branded with an image of Jimi Hendrix - which may not be the most tasteful brand to have chosen for alcohol in any event.
The Trade Mark owners sued for Trade Mark infringement and breach of other laws protecting their intellectual property. They have been awarded $3.2 million in damages by a Federal court. While this is obviously an extreme case the point about conducting a search is to ensure not only whether you can register the Trade Mark you are building your brand around, but also whether you can use it, or whether you would be infringing another parties registered intellectual property rights. It is often more prudent to make the financial investment at this early stage rather than ending up on the wrong side of an infringement action.
(First Published in Ulster Business May 2009)
