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Brand Protection

Strategic Marketing Conference

Megan Reimers Spoor & Fisher 26 September 2012


What is a brand? How does a brand acquire value? How is brand value retained? Challenges faced Case Studies: Successes and Failures

IP Protection
Intellectual property (IP) and brand integrity = valuable assets
Protection of your brand = Imperative IP protection = increases brand equity and brand integrity saves money

What is a brand? Almost anything

How is a valuable brand created?

With creativity/innovation

Through use and promotion

Distinctive = Protectable



What does a brand do?

Sets one product apart from another Indicates origin/connection with owner

Is a guarantee of quality
Is a sign of a companys acceptance of responsibility

Is a vehicle for advertising

Creating valuable brands

Marketers: Based on strategic criteria like audience relevance, competitive differentiation, sustainability, credibility, graphic potential, echoic resonance, global translations and brand personality Lawyers: You are either distinct or extinct Marketers dream brands: Lawyers dream brands:

Distinctive = Value

- Food - Drinks


PAMPER - Computers

Use = Value

Retaining your brands value

1. Protection
2. Be Aware 3. Zero tolerance

1. Protection
REGISTRATION o pre-clearance Distinctive Conflicting prior marks Know your marketplace Gives notice of rights Facilitates attack and defence

o Registration


COMPLY WITH ALL LEGISLATION Dont damage your brand



Microwave Bacon


Know your grammar: trade marks are adjectives, not nouns or verbs trade marks should stand out Use the or symbols

o JACUZZI spa bath

o WINDSURFER sail board

o Vacuum with a HOOVER vacuum cleaner

You know a branding campaign has worked

when it becomes the generic term for something. Thousands of South Africans refer to loyalty air miles as VOYAGER MILES which is actually SAAs award scheme

Dilution: Being proactive

Dilution: Being proactive

2. Be Aware


Use a team of experts

3. 4.

Keep an eye on your supply chains

Use field investigators Conduct routine raids etc

the early bird catches the worm

o DILUTION In an interview with Kirby Chien (Reuters News on 14 March 2007) InterContinental Hotels (Holiday Inn) said that its growth in China is being hampered by the countrys poor enforcement of IP rights. The COO of China for InterContinental Hotels said that this was as a result of hundreds of hotels using the name HOLIDAY INN without authorisation, which resulted in the dilution of the brand.

3. Zero Tolerance
Have a zero tolerance policy
1. By doing nothing, you can harm your brand (dilution) 2. Show the world that you take any infringement of your brand seriously

3. Maintain a strong defence

4. Again, work with a team of experts to ensure that your rights are expediently and properly enforced

BUT know how to laugh it off!

Possible challenges

1. Infringement of IP
2. Counterfeit goods 3. Passing off 4. Domain names and cyber squatters 5. Ambush marketing

1. IP Infringement

With regard to online search advertising, a decision made in 2010 in the European Union gave Google the thumbs up by allowing its AdWord service, whereby words which are protected by trade marks may be bid upon by rivals. The Internet search engine is not liable when people use the luxury goods maker's trademarks, such as Dior and Moet & Chandon, in online advertising campaigns.

Role of The Digital Era

In todays digital age the Internet = big role on the integrity and equity of your brand. On one hand, online marketing and social media on the Internet can act as a valuable tool to advertise your brand and sell your products and services.

The Internet is also a free playground for pirates, cyber squatters and conartists...

Louis Vuitton v eBay

eBay, an online market place, has been the centre of numerous battles lately. In 2009, the French courts fined eBay 17 mil for selling Louis Vuitton goods (both counterfeit and genuine) on its site. Louis Vuitton relied on a selective distribution agreement which restricted where their products may be sold.

According to research done by international law firm Marks & Clerk, nearly three quarters of respondents to research recently conducted, based on the views of 266 UK business executives responsible for the brand ownership, marketing and control, believe that while the digital age has brought tremendous opportunities for brand promotion, IP abuse and threat to brand integrity happen frequently and are difficult to combat. Online market places are used to advertise and sell counterfeit goods.

2. Counterfeit Goods
cheap imitations of authentic (protected) goods protected goods = registered trade marks and copyright According to research by the Counterfeiting Intelligence Bureau (CIB) of the International Chamber of Commerce (ICC), counterfeiting is said to account for between 5% and 7% of world trade. Counterfeit goods deceive consumers, which results in loss of sales, loss of good name, loss of jobs etc.

Counterfeit Bafana Bafana Goods

South African Revenue Service spokesperson Sibabalwenathi Mfabe said in a statement border control officers seized 26,984 counterfeit Bafana Bafana jerseys at Johannesburg's international airport over lead up to the 2010 Soccer World Cup in South Africa.

3. Passing Off

4. Domain Names and Cyber Squatting

Pre-emptive registration of trademarks by third parties as domain names

Exploitation of first-come, first-served nature of the domain name registration

Register names of trademarks, famous people or businesses with which they have no connection.

5. Ambush Marketing
Intrusion of public attention Surrounding an event Deflecting attention away from sponsor on to the intruder By way of intrusion or association

5. Ambush Marketing Official Beer of FIFA World Cup 2010

Case Study
Christian Louboutin vs. Yves Saint Laurent In resurrecting the mark, the appellate court concluded that the red, lacquered outsole had acquired limited secondary meaning as a distinctive symbol that identifies the Louboutin brand.

Case Study
Frankies vs. Woolworths case
The Advertising Standards Authority (ASA) has ruled that retailer Woolworths must stop using the phrase GOOD OLD FASHIONED as it imitates beverage manufacturers GOOD OLD FASHIONED SOFT DRINKS advertising slogan.

Case Study
Lindt loses chocolate bunny
the combination of the shape, the colours and the pleated ribbon with a small bell are not sufficiently different from the wrapping of other chocolate products, specifically rabbits.

Case Study: Marmite

An importer in New Zealand is battling to have 2,000 jars of British Marmite released by Customs, after the spreads New Zealand manufacturer claimed that selling the product would be a trademark infringement. The British shipment was intercepted upon entry to New Zealand by Customs who, on behalf of Sanitarium hold a customs notice for detaining goods infringing their MARMITE trade mark registration.

Case study
Jenni Button v Jenni Button (Pty) Limited & 4 others The court reportedly found that her continued use of her own name in the course of her clothing business infringed the right to goodwill associated with the Jenni Button trademark, which, by a valid agreement, had been sold to the purchasers. The court found, therefore, that her continued use of her name amounted to 'passing-off

Case study
New Balance Athletic Shoe Inc v Dajee NO (251/11) [2012] ZASCA 3

The Supreme Court of Appeal found that the evidence advanced by New Balance was insufficient to carry the burden of proof required to defend the trade marks under attack. The important lesson to be learnt is that the trade mark proprietor will need to provide clear documents evidencing proof of sales of goods (or receipt of stock) in order to defend expungement proceedings. The Supreme Court of Appeal also re-affirmed the principle of territoriality and confirmed that a person can adopt a mark as their own, in South Africa, even if it has been used in a foreign country.

Case study

On the recent Century City Property Services CC versus Century City Property Owners Association SCA judgement, the CENTURY CITY name was stripped of its trademark status as a result of having become a geographical indicator

Case Study

Groupe LFE (SA) (Pty) Ltd v Swartland Winery Ltd and Another (467/2009) [2011] ZASCA 4 The Court held that the Swartland trademark registration was valid and enforceable and provides Swartland Winery the exclusive rights to use the mark "Swartland" as a trademark for alcoholic beverages.

Case Study
Verimark (Pty) Ltd v. BMW AG [2007] SCA 53(RSA)
The court found that the BMW emblem in the advertisements was used merely to demonstrate the special properties of Verimarks DIAMOND GUARD products. As such, it did not create the impression of a material link between the DIAMOND GUARD products and BMW and therefore did not constitute primary trademark infringement.

Case Study
Adcock Ingram v Cipla Medpro

The SCA last week overturned the High Court ruling and ordered that Cipla Medpros ZEMAX trade mark should be removed from the Register of Trade Marks and in the process confirmed the right of patients in South Africa to be involved in the process of deciding on their medicine, even prescription medicine. The SCA held that the marks were so similar that the patient could well be deceived or confused, and ordered the removal of the trade mark ZENEX from the register of trade marks.

Case Study: A Cause for Concern

Catora AG: Protection of Indigenous Names Abroad.
"In the latest attempt to monopolise the name of an indigenous South African product, Swiss firm Catora AG has registered BILTONG as a trade mark and advertises BILTONG LOW FAT HIGH IN PROTEIN.

Conclusion: checklist
Many other Acts and regulations may affect the legality of marketing communications Checklist: Have you cleared the trade mark? Do you own the copyright? Is the promotional competition lawful? Have you complied with the ASA Code? Have you complied with the new labeling regulations?

Megan Reimers (012) 676 1081