Walking The Brand Protection Tightrope

Developing a brand identity is a key priority for most businesses. A distinct, recognisable brand is vital for grabbing people’s attention and attracting consumers and clients, and the integrity of a brand needs to be protected from third parties using or exploiting it without permission, which could dilute or damage the brand by association.

However, even the way that you approach brand protection can affect the reputation of your brand. Too soft an approach and there’s a risk of encouraging further infringement; too aggressive and you may come across as bullying and insensitive.

Knowledge Is Power

The first step in any brand protection strategy is monitoring the market and identifying infringements. Training employees to recognise and report potential infringements is important; those in sales and marketing will have exposure to the market and a greater awareness of what competitors are doing. Signing up to internet alerts for activity relating to your brands is also advisable, as are more specific watching services, such as those that keep an eye on trade mark registries for potentially conflicting new applications.

As a business grows, it becomes more difficult and more expensive to monitor infringements, meaning certain channels or countries may need to be prioritised. The main thing is to have a strategy in place and regular reviews to ensure it meets your business’s evolving demands.

Iron Fist Or Velvet Glove…?

Identifying infringements is important, but the critical decision is what to do once an infringement has been identified. Enforcing your rights can be expensive and eat up resources, so smaller businesses may not be in a position to engage solicitors or issue court proceedings.

If possible, infringements should be reviewed by the business on a case-by-case basis, which provides the opportunity to prepare bespoke responses and consider alternatives. However, bigger businesses which find themselves facing numerous infringements in multiple jurisdictions may find this unworkable. This may mean that a more streamlined approach is required with “stick” letters before action ready to be rolled out with minimal tailoring to a specific case.

McDonald’s has built a formidable reputation for enforcing their rights against even quite small companies using the “Mc” or “Mac” prefix, for example “Maccoffee” and “McFalafel”, to prevent third parties exploiting the commercial success of the franchise by affiliation. While this approach has attracted some criticism, the strength of their brand shows it is effective.

Adidas’s brand protection strategy has also been in the news, with its pursuit of those in the fashion industry using stripes, which Adidas argues infringes its “three stripes” trade mark. Again this seems to be effective up to a point, but Adidas’s persistence has caused one competitor, Forever 21, to issue proceedings seeking a declaratory judgement to confirm that they don’t infringe.

For companies with global reach dealing with numerous infringements, this is likely to be the most cost-effective approach, at least initially. However, it’s important to bear in mind that “semi-automated” brand enforcement can be a blunt tool. So it is important to include escalation procedures to make sure that cases that are not resolved quickly can be handled appropriately, because clumsy or insensitive handling of disputes has the potential to alienate would-be customers and generate bad publicity.

Indeed, an increasing number of alleged infringers seek to capitalise on what could be perceived as a heavy-handed approach against them by publicising communications relating to the infringement. Social media has provided these smaller businesses, which typically don’t have the resources to fight back through legal channels, with a voice.

When Red Bull opposed Old Ox Brewery’s trade mark application claiming that the use of “Ox” and “Bull” were so similar that it would result in confusion, Old Ox Brewery’s response was to publish an open letter to Red Bull and managed significantly to increased publicity for the Old Ox Brewery.

Similarly, Stephen Fry and Sir Ian MacLellan added their voices to the already popular Twitter and Facebook campaigns to save ‘The Hobbit’ pub in Southampton after Saul Zaentz Company, who owns the rights to The Lord of the Rings and the Hobbit franchises, threatened it with legal action.

Another example is Littergram, a non-profit organisation trying to address the litter problem in the UK, who received a letter from Instagram claiming that they were infringing Instagram’s trade mark. After some back and forth, Instagram dropped the matter and praised the initiative, rather than pursuing it further, which may have generated bad publicity. This kind of consideration can be picked up earlier where individual assessments are made.

Where there has been backlash, a further concern in brand protection is how best to respond or minimise the damage. Earlier this year, Brewdog claimed a local Birmingham-based business was infringing its trade mark over “Lone Wolf”. Subsequent public outcry on Twitter and in the media led to Brewdog backtracking and publicly apologising for their lawyers’ “trigger-happy” approach. Engaging with the issue and providing a response showing that you can see the humour in the situation can help limit some of the damage.

Where a company has the time and means to make individual assessments of an infringement, more appropriate stances might be adopted which could avoid public opinion being soured, and the need to make public retractions.

Not All Publicity Is Good Publicity

In the media, the trade mark enforcement approach taken by big corporates versus small local businesses is usually reported under a ‘David v Goliath narrative.

Bentley Motors recently lost a claim against Bentley, a small Manchester-based clothing outlet. Bentley Motors tried to invalidate the clothing outlet’s trade mark claiming that they were taking unfair advantage of their reputation in the car industry. In 2014, and upheld in subsequent rulings, a British chain of comedy and music clubs called ‘The Glee Club’ obtained a ruling that “Glee”, the TV show distributed by 20th Century Fox, infringed its trade mark. Where small companies are successful, it’s often reported as a triumph for both trade mark protection and for the “little guy”.

This narrative and the popular propensity to root for the underdog means that public perception is often kinder to the party deemed to be the weaker of the two in a trade mark dispute. These examples also demonstrate the power of trade mark registration regardless of the size of the company.

In Summary

Ultimately, there’s no one-size-fits-all approach to brand protection. A proportionate strategy tailored to your business needs should be established to ensure that a consistent approach to brand protection is taken. As your business changes and grows, this should be reviewed and updated regularly.

Be prepared to respond quickly and, where possible, it’s best to assess infringements individually. This isn’t always feasible, and a vigorous, broad approach may be necessary to protect the integrity of your brand; when making this decision, ensure that you’ve considered the risk of attracting criticism.