A brand is so much more than a trademark or a design right. It is about individual and personal impressions, reactions and experiences associated with a specific product, service or company. When companies successfully create a strong brand with positive associations it is imperative to prevent other parties from deriving unfair benefit from its use. So a crucial part of implementing a successful brand strategy is ensuring that brand collateral is legally protected and that this protection is maintained and regularly updated. This is where trademark protection and protection for other intellectual property rights (IPR) come into play.
The first step: IPR strategy
Creating a successful brand strategy includes finding the relevant customer touch points that make it possible to communicate a company’s offerings and values to its target audience. Such touch points become the channels for different kinds of communication, which in turn act as vehicles that help target audiences identify the sender. An identifier may be a word, logotype, slogan, a sound, a specific color or a design, all of which may be protected as IPR. Ensuring sufficient protection for these kinds of identifiers by way of a solid IPR strategy is therefore the first key step in safeguarding the brand as a whole.
The IPR strategy should be a living tool that constantly adapts to correspond to the company’s brand strategy as well as the overall business strategy. In well-developed companies the IPR strategy includes well defined processes for ensuring the freedom to operate, to identify and secure relevant rights, to protect and enforce rights and to maximize rights monetization.
Structured processes essential for implementing IPR strategy
Roschier's general guidelines for structuring the processes related to trademark and design rights are summarized in the figure below.
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Before conducting any kind of branding with a new word, symbol or other identifier as part of the brand strategy, brand owners should commission a search report covering the relevant geographical markets and market segments where the identifiers are to be used. The search report has several functions. It will make it possible to analyze whether there are any obstacles that would prevent the use of a specific identifier for a specific product or service, and whether such obstacles may be overcome. A search report also reveals the uniqueness of the proposed identifier compared to already registered trademarks, trade names and domain names, indicating the level of protection that may be obtained. Furthermore, the search uncovers the risks associated with using a specific identifier, ensuring that companies avoid infringing the rights of third parties.
Once the search report has been produced, it forms the basis for an appropriate filing strategy. In many instances an international application is the preferred choice as it provides cost-effective and flexible protection. However in other cases national applications may be more beneficial, for example, if the search report has identified similar previously-registered identifiers, if the identifier has a local expression or when the brand strategy will only be launched in limited geographical markets. It is also important to determine what kind of protection is appropriate (e.g. design and/or trademark) as well as whether a single registration or multiple registration applications are required for the same identifier (e.g. word mark only or word and logotype or even specific elements of a logotype).
As part of the filing strategy and the application process, corporate groups should also evaluate which company or subsidiary should be the registered owner of the identifier. Making an informed decision in this respect may be important for many reasons, particularly from a tax perspective.
External and internal monitoring
Once a registration has been obtained, the monitoring process commences. Regular administrative maintenance such as paying renewal fees is a key part of this process. However the monitoring process can be further divided into external and internal monitoring.
The purpose of external monitoring is to detect any attempts by third parties to derive undue benefit from use of the company’s IPR. Identifying third party infringements and having a clear predetermined approach for handling such infringements ensures that the exclusivity value of the brand may be protected and maintained. Responding aggressively to third party infringements, such as counterfeiting, sends a message to other actors that the company is prepared to defend its rights. It will also help create confidence among customers that the products or services they buy are authentic. External monitoring is also about ensuring that a registered trademark does not deteriorate, which is especially important in the case of trademarks used by first movers launching completely new products in a market.
Internal monitoring involves the creation of company guidelines and policies for using IPR and for monitoring compliance with such protocols. It is also about ensuring that the registered trademarks are in fact used, which is a prerequisite for the registrations to remain in force. Brand owners also would do well to remember that even a small amendment to the graphical design of a trademark that causes it to vary from the trademark as registered may fail to satisfy the usage requirement. Thus, a change of design also requires a new registration.
The result lays the foundation for creation of value
A successful brand strategy must be backed by a solid and up-to-date legal foundation. This ensures that brand owners can fearlessly and confidently use their brand assets to create value for the business. The process of mapping, securing and implementing brand protection does not have to be prohibitively expensive or time-consuming. But if the legal groundwork is not adequately managed, it may well result in a failed brand and business strategy, as well as the risk of costly infringements upon the rights of third parties.