In today’s increasingly litigious environment, brand owners need to consider how to control the use of their brand by others, while continuing to manage and to protect their trademarks.
The rise in litigation
According to the World Intellectual Property Organisation (WIPO), trademark applications grew more than 7% in 2016, with computers and electronics, business services and technological services accounting for more than half of all applications.
With the growth in trademark filings, and the sheer number of trademarks already in the marketplace, it is more difficult for brand owners to clear and register unique marks. Despite the majority of senior executives believing trademark infringement is on the rise, only one in five has a process in place to actively watch more than 75% of their marks. A rise in trademark infringement is likely a result of companies vigilantly pursuing infringers to assert the value of marks they already own.
Making a mark
Competing businesses often go to war over trademarks if there is an argument for consumer confusion. Chocolate maker Lindt recently went to court over the “Gold bear” mark, entering a dispute with confectionary company Haribo that uses a similar image.
In 2016, the Icelandic government entered a legal battle with “Iceland”, the UK-based and South African-owned supermarket chain. Iceland Foods was granted the EU-wide trademark for the word “Iceland” in 2014. However, Iceland’s native companies claim they are being restricted from promoting their Icelandic goods in Europe due to the existence of the supermarket’s EU-registered mark. “Iceland Gold”, an Icelandic fish company, and “Clean Iceland”, a specialist seller of Icelandic national products, have experienced significant difficulties trading in the EU.
The social front line
Social media sites such as Twitter and Facebook now contribute to the web of data that should be checked by brand owners for infringement. Official Twitter statistics suggest that 66% of US brands use social platforms for marketing products or services, and as more brands use social media, the likelihood of infringement increases. For this reason brand owners need to monitor mentions of their name and products online and all domain name searches and investigations should include social media.
With the litigious environment expanding to online and social media platforms, brand reputation is also under threat. Multinational brewery, BrewDog, experienced reputational damage when it forced a Birmingham based public house to change its name because the brewery had trademarked the name for a new brand of vodka. The pub received hundreds of likes and re-tweets following its disclosure of BrewDog’s actions and in light of such negative publicity, BrewDog backed down.
IP can make up as much as 70% of a business’ overall value and it is in the interest of brands to prove this. If a brand owner consistently treats their trademark as a valuable asset through litigation, the task of persuading a tribunal of that value and the mark’s entitlement to protection becomes easier.
Schedule a meeting to discuss the future of trademark management with our IP gurus at INTA here.
