Michael Jewess 1

WHAT’S IN A NAME? –

BRANDING IN LAW AND PRACTICE

Michael Jewess, michaeljewess@researchinip.com

OIPRC seminar, St Peter’s College, Oxford, 5 February 2015

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JULIET: 

What’s in a name?  that which we call a roseBy any other name would smell as sweet;So Romeo would, were he not Romeo call’d,Retain that dear perfection .....

William Shakespeare (1564-1616), Romeo and Juliet, Act II, Scene II

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What is branding for?...

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“Brand is a ‘reputational asset’ which has been ‘developed over time so as to embrace a set of values and attributes’, resulting in a ‘powerfully held set of beliefs by the consumer’ and a range of other stakeholders.” Urwin, Peter, Karuk, Valeriya, Hedges, Philip, and Auton, Frank, Valuing brands in the UK economy, commissioned by the British Brands Group (Westminster Business School, University of Westminster, London, December 2008), www.britishbrandsgroup.org.uk/upload/File/WBS%20VoB%20128.pdf

Less positive: Greenhalgh, Christine, Rogers, Mark, Schautschick, Philipp, and Sena, Vania, Trade Mark Incentives (Intellectual Property Office, Newport, Wales, July 2011), available under www.ipo.gov.uk/

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Interbrand’s brand valuations

business brand value brand value/ business value

Coca-Cola $ 71.9 bn 42%

Shell $ 4.5 bn 3%

Shell, motor vehicle fuel sales to public

10%

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InterbrandMillward Brown

Optimor2011 2011

Coca-Cola $71.9 bn (no 1) $73.8 bn (no 6)Apple $33.5 bn (no 8) $153.3 bn (no 1)BMW $24.6 bn (no 15) $22.4 bn (no 30)Colgate $7.1 bn (no 51) $14.3 bn (no 55)Shell $4.5 bn (no 74) $15.2 bn (no 51)

Ratio of Coca-Cola to Shell

16.0 4.9

Ratio of Coca-Cola to Apple

2.1 0.5

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a legal practitioner trying to act in the best interests of a client engaged in branding activity …

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Community trade mark (CTM) system has made it enormously more difficult to pick a new brand that does not significantly risk infringing existing third-party rights:

applicants getting wider geographical coverage than they need (and used to get before)

OHIM’s practice of granting registrations for an entire class of goods

OHIM’s fee structure encouraging speculative registrations in 3 classes

– leading to “cluttering” of the trade mark register

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Nice classification, class heading for class 9

“Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving, and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.”

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a surveying system with data logging

PLACELIST

Case details for trade mark EU010806008New Search Glossary of terms Print Friendly View Trade mark1 of 1 1 of 1 Trade mark

PLACELISTStatusRegisteredRelevant datesFiling date13 April 2012Date of entry in register22 August 2012Renewal date13 April 2022List of goods and servicesClass 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching

apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-

operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-

extinguishing apparatus.Class 38Telecommunications.Class 41Education; Providing of training; Entertainment; Sporting and cultural activities.Name and Address detailsHolder's name

The Coca-Cola CompanyOne Coca-Cola Plaza, Atlanta, United States Of America, 30313RepresentativeSIMMONS & SIMMONS LLPCityPoint One Ropemaker Street, London, United Kingdom, EC2Y 9SSPublication detailsFirst advertJournal : 2012/090 Date of publication : 15 May 2012

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“We want to combine the physical experience of drinking a Coke with the virtual experience of listening to, discovering and sharing music,” explains Joe Belliotti, Coke’s director of entertainment marketing. “Our ambition is to have a Placelistassociated with everywhere Coca-Cola is enjoyed.”

Coca-Cola, Spotify Launch Ground-Breaking Social Music App

By: Jan Moy June 11, 2013http://www.coca-colacompany.com/coca-cola-music/every-song-has-a-place-coca-cola-spotify-launch-groundbreaking-social-music-app

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1. The client should devise half-a-dozen or more marks –(i) none of which are unregistrable on absolute grounds (in particular descriptiveness),(ii) most of which are invented words so as to improve the chances of surviving clearance searches for third-party rights, and(iii) none of which have negative or undesired associations. 2. All the marks should be searched, and if one or two are clear of third-party rights in the relevant territories, he should think of that as a good outcome.  3. The client should be prepared for this low survival rate on search and to have to adopt his personal least favourite.

Advice to client wanting to launch a new product with a protectable name especially in a cluttered class such as class 9

No positive aesthetic criterion here!

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Brand “architectures”

“one product, one brand”

“monolithic branding”*

* Olins, Wally, The brand handbook (Thames and Hudson, London, 2008), pages 44-53.

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“one product, one brand”, FMCG and alcohol

Unilever (FMCG) Diageo (alcohol)

Hellmann’s Smirnoff

Knorr Guinness

Vaseline Johnny Walker

Dove

Persil

OMO

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“One product, one brand” for a product so innovative that it is hard to describe

WORKMATEtrade mark EU006145528

Specific goods within classes, 6, 18, 19, 20, 21

Workmate® Dual Height Tough WorkbenchWM626

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“One product, one brand” for an innovative pharmaceutical product: no longer possible

Analgesic:

acetylsalicylic acid

registered trade mark Aspirin

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“One product, one brand” for an innovative pharmaceutical product: current regulation in most territories

Product effective against erectile dysfunction:

(as the citrate)

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“One product, one brand” for an innovative pharmaceutical product: current regulation in most territories

Product effective against erectile dysfunction:

1-[4-ethoxy-3-(6,7-dihydro-1-methyl-7-oxo-3-propyl-1H-pyrazolo[4,3-d]pyrimidin-5-yl)phenylsulfonyl]-4-methylpiperazine citrate

Viagra (Pfizer trade mark, EU 233890, class 3)

sildenafil citrate (generic name)

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Brand “architectures”

“one product, one brand”

good for FMCG, mass-produced alcoholic drinks, innovative products (incl. pharma but advantages are restricted by regulation)

“monolithic branding”:

combining the corporate mark with descriptive or semi-descriptive words or characters

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“Monolithic” brand architecture for a product range

BMW 530d for a 5-size, 3.0 litre, diesel car, etc.

GUCCI, “soft stirrup black brocade leather shoulder bag”, etc.

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“Monolithic” brand architecture for diverse but legally connected businesses

VIRGIN ATLANTIC

VIRGIN MONEY

VIRGIN TRAINS

etc.

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If customers are major organisations whose purchases (usually through a professional procurement function) are of individually expensive items (eg IT systems, defence systems) or else are bulk purchases (eg raw materials, utilities),-

then monolithic branding is a “no brainer”.

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Corporate or “house” branding

“ ‘Corporate personality’ is the soul, the persona, the spirit of the organization manifested in some comprehensible way….. The tangible manifestation of a corporate personality is its corporate identity.”

* Olins, Wally, The brand handbook (Thames and Hudson, London, 2008), page 21.

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“a human symbol of achievement, especially individual achievement, which was considered to be a core value of the company”

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With 90 subjects, the symbol did not convey the intended notion without supporting verbal information. Green, David and Loveluck, Valerie [error for “Valeria”], “Understanding a corporate symbol”, Applied cognitive

psychology, 8, 37-47 (1994)

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WHAT’S IN A NAME? –

BRANDING IN LAW AND PRACTICE

Michael Jewess, michaeljewess@researchinip.com

OIPRC seminar, St Peter’s College, Oxford, 5 February 2015