On your Marques

How do a country’s advertising rules and regulations affect a company’s brand protection policy? In the wake of the 2007 Marques conference, Claire Mounteney of Marks & Clerk UK and chair of Marques Brands & Marketing Team, offers advice for trademark owners

Ask any marketer whether they had fully considered the IP implications of  the name that they have selected for their newest product or service, and chances are they will say no. When it comes to choosing a brand name, the top priority for any marketing team is usually the descriptive power of the chosen name, rather than the work that will be involved in registering and protecting it. But as MARQUES’s recently renamed Brands & Marketing Team (previously the ‘IP Marketing Team’) knows all too well, the two don’t have to be mutually exclusive. ‘Think of a brand name, such as Jaguar,’ says Claire Mounteney, the Team chair. ‘It works on both levels. It promotes the key values of the product, but in a way that is distinctive and global – making it much easier to register and protect than a name like “speedy cars”.’

Part of the work of the Brands & Marketing Team has been to advise both marketing and IP departments of the need to work together to develop product branding. ‘It really is a two-way process,’ explains Claire. ‘It’s not just that the marketing department needs to be educated in the legal issues surrounding their work; the IP department also needs to understand the business of marketers. To build a watertight IP strategy, they also need to be appreciative of fashions and trends in the company’s industry. After all, there’s little point investing millions in an IP protection scheme when that product is likely to have a short shelf life in the marketplace. If it’s a brand that is designed for longevity, however, it’s important to make sure they minimise the element of risk.’

Educating owners
Indeed, as the Team is keen to point out, the work of MARQUES to educate brand owners and IP attorneys is not just driven by the need for mutual understanding. When marketing and IP departments work together, they can also prepare a more efficient and cost-effective brand strategy. ‘Educating marketing and IP departments in this way can pay considerable dividends when it comes to managing budgets. Indeed developing a brand that is distinctive means that it is also easy to protect, reducing the likelihood of serious court time in cases of infringment.
 
‘Similarly, when the IP department works with their marketing colleagues, they can also help to prioritise the way in which  the registrations are filed. That’s particularly important in cases where multiple jurisdictions work to multiple rules.’ 

One such topic area is ‘brands and the younger consumer’, the theme of the 2007 MARQUES conference in Porto and the springboard for the organisation’s most recent IP survey. In it, the Brands & Marketing Team asked over 40 attorneys in key jurisdictions around the world to provide the rules and regulations behind advertising directed at the youth market – a  subject that is approached differently in the different territories.

‘The results have been very interesting and informative,’ says Kathryn Szymczyk of SD Petosevic. ‘Not surprisingly, the relevant legislation of most jurisdictions now bans the advertising of tobacco. As for other vices, we have found, for example, that in Bulgaria, there is no blanket prohibition with respect to alcohol, but advertisements cannot create an impression that use of alcohol contributes to social or sexual success.’

‘Nowadays, kids are seen as consumers and targeted as such,’ says Anouk von Meyenfeldt, vice-president and general counsel at Tommy Hilfiger. ‘In the US alone, around 40,000 TV ads a year and over US$20 billion is spent on advertising to children. Unlike 10 years ago, the majority of brands have a kids and teen strategy. For example, Tommy Hilfiger works to create an image that appeals to our young consumer and to build brand loyalty within all age groups. But there are rules and regulations to adhere to, many of which are particular to jurisdictions.’

'It’s not just that the marketing department needs to be educated in the legal issues surrounding their work; the IP department also needs to understand the business of marketers.'
- Claire Mountenay

Effective marketing
‘Marketing aimed at young consumers can be effective,’ agrees Tobias Cohen Jehoram, partner at Dutch law firm De Brauw Blackstone Westbroek and vice-chair of the Brands & Marketing Team, ‘but it has also provoked many initiatives for protecting young consumers and their parents, which, in turn, has had legal implications for brand owners.’ Tobias refers to the current ban on tobacco advertising as a case in point. ‘These days, tobacco advertising has been banned in most Western jurisdictions and yet in the 1960s, tobacco commercials used to feature children’s TV characters, such as the Flintstones,’ he says.

But not all brand advertising is so cut and dry. While most jurisdictions are now united in their approach to tobacco advertising, the same cannot be said for the advertising of other products and services to children and adults.  ‘Views in Europe diverge widely,’ says Tobias. ‘As regards specific regulations in relation to children, some member states have implemented bans with various degrees of severity. European norms are mostly vague and leave much room for national (and cultural) differences.’ So, for example, in Sweden, TV advertising and sponsorship of programmes aimed at children below the age of 12 are prohibited. In Greece, there is a ban on advertisements for children’s toys between 7am and 10pm and a total ban on adverts for war toys. However, in Spain, a ban on adverts is considered undemocratic, and the UK and The Netherlands do not consider advertising aimed at children as harmful per se.

To negotiate the minefield of rules and regulations, it’s important to ensure that all issues concerning the use and registration of IP Rights are considered. The key to developing a successful strategy is for the IP and marketing departments to work together. This forms the basis of the Brands & Marketing Team’s work.

The key questions
The MARQUES survey asked attorneys to provide the following information on rules and regulations in their territory:

1 Are there regulations that restrict the advertising of vices, such as tobacco and alcohol?

2 Are there regulations that restrict advertising to children?

3 Which government agency, if any, oversees and enforces the above restrictions?

4 Who can object to such advertising?

5 Are complaints automatically investigated and, if so, what is the procedure?

6 What restrictions does the trademark law place on the registration of immoral or scandalous marks?

7 Please provide examples of marks that have been denied registration based on these restrictions and/or any case law on the subject.

MARQUES would like to thank everyone who contributed to the survey. The full list of contributors and results is available by visiting: www.marques.org


This article first appeared in IP Review, issue 20