Cars, sofas and snacks: what makes a brand (legally)?
Brands and branding are important (if you’re reading this blog, you probably already agree with this). They are your first point of contact with your potential customers and if the brand is doing its job properly, they leave an impression. The brand is a shorthand way of communicating the quality of your product, your ethos. It’s a guarantee in many ways.
Should you – and can you – protect a valuable, but intangible asset like this?
In order to preserve the “uniqueness” of the message a brand gives out, brand owners sometimes need to take steps to prevent others from straying too close, risking customer confusion. These actions can be made much easier if you have some form of registered protection in place.
How to protect
The most obvious way to protect a brand – be that a wordmark (like Twitter) or a logo (like Twitter’s little blue bird) – is as a trademark. There’s no legal requirement to register a brand as a trademark before starting to use it. However, a registration can make enforcement far easier. Trademark registrations in the UK are all on a publicly accessible register so should also act as a deterrent to third parties, if they carry out proper checks while developing a new brand.
The Intellectual Property Office in the UK is the official UK government body responsible for intellectual property (IP) rights including trademarks, patents, designs and copyright and is well worth making your first port of call when developing a new brand. They can assist with obtaining a trademark registration. You may also want to seek professional advice.
What can you do?
Recent cases have involved some recent high-profile brands, demonstrating the value of brands, trademarks and IP rights generally.
In a decision issued early last year, Enterprise (the vehicle hire people) successfully sued Europcar (also vehicle hire people) for trademark infringement and obtained a UK-wide injunction to prevent use. The case concerned use by Europcar of a lower case e logo, which Enterprise successfully argued was similar to its own e logo, protected as a Community (EU-wide) trademark.
In July of last year, Sofa Workshop successfully challenged Sofaworks Limited, over the latter’s use of SOFAWORKS. The interesting lesson from this case was that Sofa Workshop actually lost its case based on infringement of its registered trademarks:
The company-owned, and based its case, on Community trademark registrations (EU-wide) for SOFA WORKSHOP. However, because the company had only used its mark in one state – the UK – Sofaworks was able to cancel the registrations on the grounds of non-use. Nevertheless, Sofa Workshop still prevailed, on the basis that it owned an actionable right in the UK on the basis of its longstanding use, so succeeded under the tort of passing off.
These cases show the ability of words and logos to function as enforceable brands and the tools available to brand owners. In principle, all sorts of other things can function as trademarks, including smells, shapes and sounds. But less traditional marks like this are a more difficult territory.
The January decision of the High Court to deny Nestlé’s attempt to register the shape of its four-finger KitKat bar as a trademark received quite a lot of publicity. Another decision issued by the same judge on the same day also illustrated the potential problems with shape marks.
London Taxi Corporation Limited owned registered trademark rights for the shape of its vehicles (example below). It sued a manufacturer of a different model of London taxi, claiming infringement of those marks.
The defendant successfully argued that the marks were invalidly registered and unenforceable. Among other points, the judge found that they would be perceived by the average consumer as merely a variation of the taxi shape – not identifying origin – and so did not possess the necessary distinctive character to function as a trademark.
These cases show the value of brands, and trademarks as property rights and powerful enforcement tools. Businesses should give careful consideration to protecting their brands and enforcing against parties that stray too close. They also show the importance of identifying what your brand is – what does the consumer see that it links to you and not to a rival?
In short, what separates you from the herd?
AUTHOR: CHRIS MORRIS
Chris Morris is an Associate and trademark attorney in Burges Salmon’s intellectual property team, which helps clients to protect their valuable brands and designs worldwide.
Chris has worked successfully with a number of AB’s clients on trademark issues.