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.'