Brand protection

Source : PLC

Why is Brand Protection Important?

Brand protection is critical for our business because if a brand is not properly protected rights in the brand may be weakened or lost. Key aspects of brand protection include:

• Obtaining appropriate legal protection.
• Using the brand properly.
• Enforcing the brand.

Failure to take appropriate steps in any of these areas could jeopardize brand rights and value. If rights are weakened or lost we may not be able to prevent the brand from being used by competitors.

 

What is a Brand?

Brands are distinctive identifiers and associated elements that distinguish our products and services from our competitors' products and services. They add value to our business by enhancing consumer awareness and improving customer loyalty.

A brand name or logo is primarily protected under trademark law. A trademark can be:

• A word (PEPSI).
• A logo (NIKE "swoosh").
• A color (UPS brown).
• A shape (COCA-COLA bottle).
• A slogan (WHAT WOULD YOU DO FOR A KLONDIKE BAR? for KLONDIKE ice cream).
• A domain name (AMAZON.COM).
• A person's name (RALPH LAUREN).

A strong brand can be a valuable commercial asset. According to a recent survey the top three global brands by value are:

• COCA-COLA (worth $71,861 million).
• IBM (worth $69,905 million).
• MICROSOFT (worth $59,087 million).

(Interbrand, Best Global Brands 2011.)

 

Creating and Legally Protecting a Brand

Brand elements may be protected by certain types of intellectual property rights, for example trademark and copyright, which can be used to strengthen the brand and prevent unauthorized third-party use.

Brand Creation

• Speak to the legal department early on in the creative process to ensure that what we create can be protected and does not infringe other brands or other intellectual property rights.
• Keep any development confidential. Failure to do so can prejudice our ability to get legal protection. Clearly mark all confidential information as such, including when distributing internally.
• Take great care if we involve third parties such as brand consultants or advertising agencies in creating a brand. Make sure that before they are engaged they sign appropriate confidentiality agreements and intellectual property assignment and work-for-hire agreements to transfer rights (such as copyright) in their work product to us.
• Ask the legal department to conduct appropriate trademark clearance to ensure that any trademark elements of the brand do not infringe the rights of others.
• Keep accurate records of the development process and date stamp these documents. This will help provide evidence if any infringement claim is brought against us. For example, for a copyright claim evidence that it was created as part of an original process rather than copied.

Legal Protection

It is important to recognize and understand the legal rights that can be used to protect brand value:

• Trademark. In many countries trademark rights are afforded to the party that is the first to register the trademark. In some countries, including the US, trademark rights arise from use of the trademark and can be strengthened by registration. Trademark protection can extend to brand elements such as distinctive logos, slogans and colors. Trademark rights prevent others from using the same or similar mark in a manner that is likely to cause consumer confusion.
• Copyright. Copyright protects original literary, artistic and scientific works, for example, a written work. It protects original works from other people copying the works without permission.
• Trade dress. Trade dress is the overall visual appearance of a product or its packaging. Subject to certain requirements, and depending on the jurisdiction, trade dress may be protected under trademark, copyright or design laws.
• Patent. Inventions associated with a brand may be protected under patent law.
• Trade secrets and confidential information. Formulas, drawings, patterns, compilations, programs, devices, methods, techniques or processes associated with a brand that are not generally known and are kept in secrecy may be protected under trade secret or confidentiality laws depending on the jurisdiction.

The following table illustrates how certain elements of a brand may be protected under trademark and copyright laws:

	Trademark	Copyright
A logo
A word or slogan
A color
A shape
A domain name
A person’s name

Registration: Why and Where?

Some brand elements can get greater protection if they are registered (for example, as a registered trademark or copyright). In many countries, trademark rights are afforded to the first party to register the trademark. In other countries registration is not required for protection but affords various benefits. For example, in the US, a federal registration serves as evidence of the owner's exclusive right to use the trademark nationwide for the goods or services listed in the registration.

Applications to register trademarks are subject to various requirements, including that the mark be distinctive.

Trademark registration may be costly and time-consuming. Trademark rights are territorial and rights in one country generally do not confer rights in other countries. For example, it is possible that a trademark may be protectable in one country but not available in other countries because it is already owned by another company. The issues are complex so you should speak to the legal department for guidance.

 

Using a Brand

Once a brand has been created and protected, it is important that we use it consistently and do nothing that could cause us to lose protection. Steps that can be taken to ensure that our brands are used properly include:

• Adopting and enforcing brand use guidelines. Brand use guidelines should include clear rules on how the brand must be used throughout the business. For example, with appropriate trademark symbols, as an adjective or in certain fonts or colors. Enforcing brand use guidelines helps build up the recognition of the brand, its market presence and therefore its value.
  [CROSS-REFER TO YOUR COMPANY'S BRAND USE GUIDELINES IF YOU HAVE THEM.]
• Using the brand consistently. Even minor changes in the way our brand is used, for example, in font or color, can create a new right that will then need to be protected in addition to the rights we already have. Costs of protection, for example, registration fees, can quickly rise if we have multiple variations of our brand. Also, use of new variations may risk diluting the brand or loss of rights in prior versions.
• Using proper notices. Use copyright notices © and trademark symbols (for example in the US, ™ for an unregistered trademark and ® for a registered trademark) where appropriate. They act as an early warning system to would-be infringers and will help us when seeking to prove that a defendant knew about our rights.
• Ensuring that trademarks are used. Nonuse of a mark can result in loss of protection.
• Ensuring timely compliance with renewal requirements for registered rights. Failure to meet renewal requirements risks the loss of registration protection.

 

Licensing a Brand

A brand can be commercially exploited and strengthened in a number of ways. A principal method, other than our own use of the brand, is through licensing. A license is generally an agreement that gives another business the right to use our brand for specified goods or services during a defined period in a defined territory.

Always speak to the legal department before allowing any third party to use our brand either formally or informally. Generally we should permit a third party to use our brand only under a written agreement that sets out specific parameters and requirements for the use.

Enforcing a Brand

We can lose brand protection if we allow people to use our brand without our permission and control. Infringement or other misuse of our brand by others will also weaken its value. We must therefore monitor the marketplace and take appropriate action against others who infringe or misuse our brands. To help protect our brands we should:

• Keep accurate records of permitted third-party use of our brand rights. Monitor use to ensure adherence to the terms of any agreement.
• Make sure everyone understands the importance of reporting any suspected infringement or misuse of our brands.