Category Archives: Famous Trademarks

How to trademark: 6 points you need to know

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How to trademarkYour name is what you use to promote and advertise your business and it’s what your customers use to recommend your product or service. You build up goodwill in the name through using it.

Therefore, it makes sense to own the rights in it by registering the name as a trademark as a priority. Once registered, the rights in the name may be transferred just like any physical property.

The choice of name is important from a legal perspective. The more distinctive your name, the easier and more affordable it will be to take action against anyone who piggybacks off your success.

There are 6 key points to take into account in order to understand how trademarks operate.

Similar trademark names are a problem

An important objective of trademarks is to avoid customer confusion about the source or origin of goods and services. This means if you wanted to choose a name that was already registered, it wouldn’t be enough simply to make slight adjustments to the name (such as in the spelling or add an extra word) in order to avoid clashing with an existing registration.

The broad scope of protection of trademarks looks at the issue from the customer’s point of view. Without the legal protection of trademarks, consumers cannot rely on finding products and services they’ve liked in the past and want to use again. If the names are too similar, the customers can be confused and disappointed if they mistakenly purchased the wrong product.

Company and domain registrations are not enough

Owning a company name or domain name does not automatically give you a right to prevent others using a similar name. Even if you have registered the .com of the name or limited company, you will still need to check the trademark register first.

You may well be able to use the company or domain name you’ve registered, provided you don’t use it in competition with an existing business that has trademark rights in the name. It depends on the business activity you want to use it for and whether you will have a legal problem.

There is a difference between registered and unregistered trademarks.

It is not necessary to register a trademark in order to use a name. But there are serious downsides to not registering a name. For example unbeknown to you, someone else may have registration which prevents your using the name, or someone else might begin to use the same name or register it first.

If you have been using a name for a long time, you may have built up sufficient rights in it to be able to stop another party using the same name on the grounds that they are ‘passing off’ their business as yours. Bear in mind though, that it costs time and money to take action in these situation and you face all the uncertainties of litigation.

Trademarks are territorial

Trademarks are registered on a country-by-country basis. So if you register a trademark with the UK Intellectual Property office, it will give you the rights to use your mark in the UK. But if someone based in another country uses the same mark, your UK mark does not give you the right to stop them.

Trademarks comprise certain categories of goods or services

Names can be shared by more than one business, provided the businesses are not in competition with each other. The reason for this is that trademarks are registered against classifications, and you are permitted to use the trademarks for those predefined categories of business.

There are 45 trademark classes in all. The overriding issue is that the names must not cause confusion to consumers looking to buy products or services.

Famous marks are an exception to the classification rule

A famous or well-known mark may enjoy broader protection than an ordinary mark, in view of its widespread reputation or recognition. Such marks are not subject to the classification restrictions.

The objections to applications trying to register famous marks in different classes is that the applicant is taking unfair advantage of the mark’s fame and its use could have a detrimental impact on the well-known trademark.

These consideration need to be understood before choosing a brand name. To learn more, read ‘Legally Branded’ written by Shireen Smith.


Trademark protection of pantone 2685c not wrapped up by Cadbury

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Image for Blog Post - Cadbury

Securing trademark protection for colours is notoriously difficult, as demonstrated by the recent Court of Appeal ruling in the litigation between Cadbury and Nestlé, concerning the trademark registration of pantone 2685c.

Nestlé v. Cadbury

In 1914, as a tribute to Queen Victoria, whose favourite colour was purple, Cadbury started to use the shade of purple known as pantone 2685c on its packaging, and it has done so ever since. In October 2004 Cadbury applied for trademark protection of this shade of purple for all chocolate goods. In 2008 Nestlé opposed the registration. After three years of proceedings between the parties the case went through to a hearing. Five months later, in December 2011, a final decision was made by the Hearing Officer, who concluded that the colour was capable of being registered. Nestlé subsequently appealed this decision. In May 2012, the High Court ruled in favour of Cadbury but limited the trademark protection to chocolate bars and chocolate drinks. See our previous blog post (Can You Trademark A Colour? Cadbury Secures The Rights To The Colour Purple) for further details. In its ruling of 4 October 2013 the Court of Appeal overturned the decision of the High Court.

Three Court of Appeal Judges found that the trademark lacked “specificity, clarity and precision of visual appearance”, and therefore to allow the trademark to be registered would, they said, “offend against the principle of certainty and the principle of fairness by giving a competitive edge to Cadbury and by putting Nestlé and its competitors at a disadvantage”. The reason for this decision was that the wording Cadbury had used to describe the colour was ambiguous. Cadbury described the colour in its application for trademark protection as: “the colour purple (Pantone 2685c) …. applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods“. It was the use of the word ‘predominant’ within this description that led to the Judges determining that the trademark lacked clarity, as it “opened the door to a multitude of different visual forms”. Cadbury argued that the word ‘predominant’ meant that the colour covered more than 50% of the surface area in question and Sir Timothy Lloyd did suggest that “if Cadbury had spelled this out in their registration it may have been possible to achieve certainty”.

Cadbury have indicated that they may appeal this decision. If they do appeal, the case will most likely be heard by the European Court of Justice. It will certainly be interesting to see what happens next.

It is important to remember that this decision does not mean that Cadbury cannot pursue anyone who now launches a range of chocolate bars and goods packaged within the same or similar shade of purple. They still have the right to bring a passing off claim against anyone who tries to misrepresent their goods as Cadburys.

Trademark protection for colours

To register a trademark, whether it is a word, logo, colour or shape, the applicant must show that the trademark is a sign, can be graphically represented and is capable of being distinguished from other trademarks. As this case demonstrates, it is difficult to secure trademark protection for a colour due to the requirement that the trademark must be graphically represented in a clear and unambiguous manner. Although difficult, it is not impossible to trademark a colour and many companies have managed to do so. For example, Tiffany’s have registered pantone 1837, better known as Tiffany Blue, for boxes, shopping bags and the cover of catalogues, and Heinz have secured trademark protection for the distinctive turquoise colour found on the packaging of its baked beans.

What can we learn?

It is important to ensure that when you register a trademark your application is clear, precise, durable and unambiguous. We must learn from the mistakes made by Cadbury in their application to register pantone 2685c.

Trademark law can be complex, especially if you are trying to register a colour or shape. Professional advice is essential, as trademark lawyers can help draft your application to ensure that it meets the necessary requirements, giving you a better chance of securing trademark protection. This is particularly important with UK trademark applications as the IPO appears to be taking an increasingly tough stance when determining what is and is not capable of registration.

UGG Trademark Disputes

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Trademarks are territorial, which means you register them country by country wherever you do business. Although this is can be expensive, and it may be tempting when starting out, to think it’s easy enough, in theory, to trade in other countries under a different brand, UGG is an example of what can happen when a trademark is not available to a business internationally.

TMRBoots known as UGGS are worn around the world particularly in rural locations. The term UGG for this specific type of sheepskin boot has been used in Australia since the 1950’s and now many consumers believe the boots are from Australia.

The term UGG-BOOT was registered in 1971 in Australia, but then lapsed as it was not used. Then in 1999 the American outdoor company Deckers registered the word mark UGG AUSTRALIA. Celebrities began to wear the boots and by the early 2000’s the boot became popular and sought after all over the world. As a result Deckers became more protective of the brand and began issuing legal threats against companies in Australia who were using terms similar to UGG such as UGH.

In 2006 a competitor of Deckers, UGG-N-RUGS successfully applied to remove UG, UGG and UGH Boots from the Australian Trademarks register on the grounds that the term was generic and descriptive of a specific type of sheepskin boot in Australia.

Deckers still has its trademarks in the EU and the US However, in Australia the company  aroused much controversy over the question whether the name is a brand name or a geographical indicator for a type of boot., and as mentioned Deckers lost its trademark there.  The fact that Deckers is still a registered trademark outside Australia means that competitors cannot market their boots as UGGs in the EU and USA. Instead they have to use terms like Australian Sheepskin boots to describe the boots.

Competitors are trying to change UGG into more of a regional mark like Champagne and want consumers to associate UGGs with a particular type of sheepskin boot made in Australia and not a trademark which indicates they are made by Deckers. In response, Deckers is focusing on the fact that its UGG boots are made in China and not Australia.

The fact that the UGG trademark has been revoked in Australia but is still registered in the EU and the US presents Deckers with serious challenges.

It is difficult for Deckers to tackle the companies selling UGG boots from Australia on the internet as I found out when I tried to buy a pair of UGG boots for my daughter back in 2009. As I wrote on the Azrights IP Brands blog that’s when I became aware that UGG is not a trademark in Australia and Deckers can’t stop vendors from Australia labelling their boots as UGGs within Australia. It is notoriously difficult to prevent sales online from entering the EU or American markets once to reach  consumers in these markets. This is despite the fact that many of them are likely to have bought the boots online believing them to be the genuine article, and not from some Australian boot company producing a lower quality boot.

Arguably, Deckers could do more to prevent consumers from being confused. For example, they could rebrand so as to remove the word Australia, especially given that its UGG boots are in fact made in China. It would be even better if the company were to change its brand to DECKERS UGG.

Deckers would benefit from taking swift action to prevent confusion in the market place, and to ensure the name UGGs is associated with its own quality products. The importance of educating the public about its boots so people are not duped into buying UGG boots from Australia when what they’re actually looking for are branded UGG Australia boots from Deckers can’t be overstated. What do you think? Have you had any experiences buying UGG boots? Let us know by leaving a comment below.

Protecting the Shire: Fry and McKellen step in to save the Hobbit

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Some may see it as unwarranted bullying, while others say it is to be expected.  Either way, the publicity arising from recent allegations of IP infringement have certainly thrown The Hobbit pub in Southampton firmly into the limelight.  The Saul Zaentz Company, owners of rights to the Hobbit and Lord of the Rings brands, among other JTT Tolkien work, have taken action against small business owners in the past, such as in November of last year where their lawyers argued that the Hungry Hobbit cafe took unfair advantage of the Hobbit trade mark.

While the cafe is reportedly considering a change of name, the pub, which sells Frodo and Gandalf cocktails, has received overwhelming support not only from the online commuity, but from actors involved in the upcoming Hobbit film. A Facebook campaign has rallied the support of 60,000 Facebook users (Save the Hobbit, Southampton), and actors Stephen Fry and Sir Ian McKellen have even agreed to pay licence fees on behalf of the pub to settle the dispute.

When issues like this capture the imagination of the public, the results can be surprising, I’m sure that SZC were not expecting such a backlash.  More so than any marketing or education by businesses in the field, these disputes serve to increase public awareness of IP issues crucial to businesses worldwide.  Taking advantage of the public interest, a group of Tolkien enthusiasts have now also begun a campaign against exclusive rights in the word Shire, encouraging visitors to their website to proudly showcase a Save the Shire poster.  It will be interesting to see how much momentum they are able to generate.

Painkillers and Product Recall

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The makers of Nurofen plus recently had to recall all remaining stock of the product, after it was discovered that some packs, in particular those in branches of Boots in Victoria, Beckenham and Bromley, contained the antipsychotic drug Seroquel. At first, the Medicines and Healthcare products Regulatory Agency (MHRA) put out a safety alert to warn people about the mistake, potentially affecting thousands of packets.     

Later, further evidence of tampering came to light in Northern Ireland, where a pack was found, this time containing the prescription medicine Neurontin, typically used to treat epilepsy.  Dr Aomest Bhatt, medical director of Neurofen Plus, said ‘We are taking this matter extremely seriously and have decided to recall all packs of Neurofen Plus as the most prudent course of action in the current circumstances. We’re asking consumers to return any packs of Nurofen Plus to a pharmacy. No other Nurofen products are affected or being recalled’.

Impact of a product failure

Nurofen has long been one of the leading Ibuprofen brands, but in addition to the financial expense incurred as a result of these incidents, a recall of all Nurofen Plus products sems likely to have a significant negative impact on the brand, and the public’s trust in Nurofen.

Product failures as high profile as this can cost companies millions, and in some cases destroy their reputations.  So far, the incidents have not been shown to result from actions of the company, and a formal investigation into the mix up is being conducted with help from the police.  But irrespective of whether any negligence is found to have occured, these events are likely to damage the brand.  The severity of the impact depends on how the recall is handled.

One criticism levelled against Reckitt Benckiser, the product’s manufacturer, was that they did not act fast enough in putting the public at ease following the discoveries. Although product recalls are invariably bad news for business, if handled correctly the damage to brand reputation might be controlled.  On the other hand, Santosh Desai, CEO of Future Brands suggests that ‘the best thing to do is not look for a quick fix solution. The healing process takes time and there’s no quick plaster’.

Inform customers at first

Jonathan Hemus, in his blog for The Drum, points out that Reckitt Benckiser provided no information about the product recall on the Nurofen website, their corporate website or their Facebook page. Hemus suggests the danger of not communicating with the public is that ‘customers turn to others for advice rather than Nurofen itself, a risky proposition in terms of reputation management.’

Nurofen has since added a statement to its websites and facebook page about the recall, but was arguably slow off the mark in doing so.

Vigilance is key to protecting the considerable investment involved in developing a brand – while Benckiser might not be at fault, the Nurofen recall may still have a major negative impact on the company as a whole.  As suggested in the Economic Times article, ‘product recall is the worst possible nightmare for every marketer’, reputation is fragile and what took years to establish, can come crashing down in hours.  No one can avoid the unforeseeable.  However, communication and engagement are key when information travels the world in milliseconds.  This is especially true in a crisis.

Bands and Brands: (Some of) The original cast of Bucks Fizz strike out

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Recently, Robert Gubby (aka Bobby G) succeeded both in an opposition brought against his former band members in connection with their application to register the trade mark mark THE ORIGINAL BUCKS FIZZ, and in defending an action for revocation of the mark BUCKS FIZZ, owned by his wife Heidi Manton.  The case report is available via the IPO Bucks Fizz to consist of the original lineup.  Further clarifying the Registry’s view, the Hearing Office explained:

‘Plainly, once the public became aware that most or all the original members of the group were once again performing under tha namen Bucks Fizz, the public’s expectations as to the line-up of any particular group appearing under that name was liable to change.  But the recent confusion is not the result of the use made of the mark by its owner … [who] cannot be held responsible for that because … such use was not with [their] consent’

This is not the first dispute arising in connection with ownership of an act’s name after members of the band have left.  The IPOs decision cites the SAXON case, in which Laddie J. explained that ownership of a band name vests in the band partnership, and that individual band members, though they have an interest in the name and associated goodwill, do not own the assets themselves.  Importantly, the judge found that a second band using the same name, established following the disbanding of the first, will acquire separate rights in the goodwill it generates.  The question was then whether or not the goodwill of the initial band has evaporated; whether its rights have been abandoned; or whether it has acquiesced to the second band’s activities – in that case, and as suggested in the BUCKS FIZZ case, the original band members were found to have abandoned their share in the goodwill, leaving the latest incarnation of the band with stronger rights.

Under dissimilar circumstances, the SUGABABES brand, after the last of the original band members left last year, has recently been the subject of a dispute.  Mutya Buena, one of the founding members, filed an application for the European Community Trade Mark in March 2009, on the assumption that after the last of the founding members of the band left, the Sugababes had effectively ‘ended’.  This was opposed on the basis of earlier rights owned by the latest incarnation of the band, whose Heidi Range argued: “Our record company [Universal] owns the name so there’s no conversations about who owns the name”.  The band currently includes 3 members, none of whom were involved in the original line-up, and in light of the strength of goodwill in the brand associated with the group the opposition was successful.  Buena’s application was stripped of much of its content, resulting in a narrow, arguably near-worthless registration for: Paper, cardboard and goods made from these materials, not included in other classes; stationery; paper gift wrap and paper gift wrapping ribbons.

The words of Laddie J. in SAXON are a concise warning, and of continuing relevance to bands and other businesses whose brands are liable to become valuable assets alike:

A properly advised band could avoid the problem that [a change in membership] might cause by entering into a partnership agreement which expressly provides for the partnership to continue on the departure of one or more members and which expressly confirms the rights of the continuing and expressly limits the rights of departing partners to make use of the partnership name and goodwill.

Bacardi wins ‘Havana Club’ name battle

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A couple of weeks ago, Bacardi won a dispute against Pernod Ricard over the use of the brand name ‘Havana Club’ in the US Court of Appeals. The court ruled in favour of Bacardi, allowing the company to package and market its Havana Club rum in the US. This ruling follows an ongoing battle with Pernod Ricard, who opposed Bacardi’s sale of Havana Club rum in the US, calling the name ‘misleading’. This lawsuit is one of many various allegations made against Bacardi, which have been ongoing for the past 17 years.

In 2006 Pernod launched a lawsuit against Bacardi, accusing them of false advertising. Bacardi’s Havana Club rum is made in Puerto Rico, but is based on the original Cuban recipe from the creators of the brand, the Arechabala family. Pernod claimed that the ‘Havana Club’ brand would confuse customers into thinking that Bacardi’s rum was made in Cuba.

The U.S court of appeals has reconfirmed that there is no reason to conclude that Bacardi’s Havana Club label is misleading as Bacardi has accurately portrayed the geographic origin and Cuban heritage of the Cabana club. The front of the liquor bottle clearly states ‘Puerto Rican rum’, so as to not cause any ambiguity over the geographical origin of the rum. Instead the name reflects the Cuban heritage of the recipe.

Bacardi stated, “Bacardi USA commends the Appellate Court’s decision, which reaffirms that Bacardi has accurately portrayed both the geographic origin and the Cuban heritage of our Havana Club rum. The Bacardi Havana Club rum is based on the original Cuban recipe from the creators of the brand, which was legally purchased by Bacardi and is now produced in Puerto Rico. This is yet another Court decision supporting Bacardi’s legitimate right to use the name Havana Club for Puerto Rican rum with a prominent statement of origin on the packaging.”

Pernod Ricard is determined to keep fighting against the so-called ‘misuse’ of the Havana Club trademark. The General Counsel of Pernod Ricard, Ian FitzSimons, stated ‘we are determined to continue fighting for fair competition in the U.S. market where ownership of the ‘Havana Club’ trademark dates back to 1976’.

The company had commissioned a survey showing that 20% of U.S. rum consumers had been confused by the Havana rum bottle, evidence which the judge dismissed as being unhelpful.

A complicated History!

The dispute between the two companies in fact dates back before even the start of the Cuban Revolution in 1953, and has a long and complicated history. The ‘Havana Club’ trademark originally belonged to the Arechabala family, who produced ‘Havana Club’ rum in Cuba, which was exported for sale in the U.S. The family lost their company during the Cuban Revolution as the dictatorship took over their privately owned businesses, and in 1973 they were forced to give up their trademark without compensation. After the Cuban Revolution, the U.S started a trade embargo, prohibiting the trade of Cuban goods in the U.S, and meaning rum made in Cuba cannot be legally sold in the U.S.

The trademark was then purchased by Cubaexport from the Cuban government. Later, in 1993, Pernod Ricard, a French drinks company, entered into partnership with Cubaexport, securing exclusive rights to the mark. The first lawsuit was launched in 1996 by the Cuba/Pernod joint venture claiming fraud and deception by Bacardi who had begun distributing rum from the Bahamas in the U.S. under the name ‘Havana Club’. Bacardi produced their rum working with the Arechabala family, the original trademark owners, and had purchased from them whatever remaining rights the family had to the ‘Havana Club’ trademark. Notably, Cuban trademarks have grown in importance in anticipation of an end to the 1963 embargo.

Two years after the Havana Club Holding filed its complaint against Bacardi, legislation was introduced – ‘Section 211’ – forbidding registration in the US of trademarks belonging to Cubans before they went into exile, and leading the case against Bacardi to be dropped. So far this provision has only been applied to the Havana Club mark.

Bacardi unsuccessful in Spanish courts

Although Bacardi retained the ‘Havana Club’ trademark in the U.S, they were not as successful elsewhere. In Spain in 1999, Bacardi sued Pernod, claiming to be the rightful owner of the trademark. However, the Spanish courts sided with Pernod, holding that the Arechabala family neglected the mark by failing to challenge ownership, and leading to expiration of their rights.

Facebook v. Shagbook

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Facebook has recently filed a lawsuit against Shagbook, an adult dating site. It explains that Facebook’s image would be damaged by any registration for the mark Shagbook. Shagbook is a site which allows consenting adults to make location- based searches ‘to hook up with local singles for no strings attached adult dating’.

 Shagbook is not going to take this lawsuit lying down said its founder. He claims he had been using the term ‘Shagbook’ since the year 2000 to refer to his little black book, and created his site in 2006, before Facebook became popular. Shagbook appears to be set on fighting Facebook at all costs.

 Is Facebook abusing its money power?

 Shagbook has accused Facebook of ‘trademark bullying’ and using ‘oppositions, litigation, and threats of the same to maintain a competitive market advantage’.  They state that ‘With billions of dollars in outside investment, Facebook appears to consider the court system, the United State Patent and Trademark Office and TTAB within it to be nothing more than tools it can use to fend off potential competitive threats before they actually materialize’.

 This is not the first time Facebook has gone after companies for names that are similar sounding to their own.  Last year, Teachbook suffered a lawsuit by Facebook for ‘misappropriating the distinctive BOOK portion of Facebook’s trademark’. However, the case was thrown out on a jurisdictional technicality.

 Amongst the other sites that have encountered trademark threats from Facebook, are Placebook for infringement, (which was overcome by renaming the site ‘PlacéBook’) and LameBook.  LameBook is a site parodying Facebook, so it actually decided to follow a strategy of suing Facebook first, which Facebook responded to by suing back.

 ‘Facebook’- Not distinctive enough?

 Shagbook is now planning on using Facebook’s history of trademark disputes against them, claiming that the term FACEBOOK itself is generic.  It argues that the Facebook trademark should never have been granted.

 The accusations of genericity go back to the history of the term ‘FACEBOOK’. Although currently the word ‘Facebook’ is synonymous with the Social Networking site, the term has been around before Facebook was even created. It has been used for decades to describe publications created by students, faculty and universities. Facebooks often contained pictures and limited biographical data.

 According to, the term ‘FACEBOOK’ has been used since 1983, whereas the social networking site was set up in 2004, 20 years later.

 Shagbook argues that moving these facebooks online was just a natural progression.

 Facebook’s accusation that Shagbook has violated Facebook’s trademark, is based on the reasoning that the site’s name is similar in ‘appearance, sound meaning, and commercial impression’, and accuses the site of trying to ‘trade off the fame of Facebook’.                      

 Shagbook’s response is that their site cannot be confused with Facebook’s, as Facebook has often made it clear that it is not a dating site in its marketing strategies, and has even removed individuals who have been using the site as a ‘dating site’. Shagbook believes that therefore, Facebook cannot argue that it provides services that are similar to the ones provided by Shagbook.

Some think this case might be a tough one for Facebook, with even the site’s own trademark being put into dispute.

GOOGLE PLUS – Brand Naming Strategy

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Google’s launch of its social networking site, Google Plus, has caused a lot of attention and speculation in the media.  However, it is not just the site itself that has provoked discussion, but its name too.

Google’s decision to create its social media site under the Google brand has been criticized and praised in equal measure.      

Unlike Google, Apple is a company that has launched its products and services under new names, for example, recently using a lowercase letter ‘i’ to distinguish a service as belonging to it.

Whilst this strategy has been successful in some cases, in others Apple’s use of common words such as ‘phone’ or ‘book’ in combination with ‘i’ has caused it to face lawsuits for trademark infringement as mentioned in our previous blog, Apple under fire again-this time over ibook.

Although Apple has generally managed to fight or pay its way into keeping its chosen brand names, what is for sure is that Google by using its pre-existing trademark for its other services, will be unlikely to attract costly lawsuits over trademark infringement.

Google’s brand strategy

It is not just with Google Plus that Google has used this lower cost more straightforward approach to its new names.  It has launched other products under the GOOGLE brand name such as Google News, Google Translate, and Google Chrome.

As well as this, alongside the introduction of Google Plus, two of its existing services are also getting a rebrand. The names for Google’s longstanding products Picasa and Blogger are going to be retired.  Picasa will become ‘Google Photos’ while Blogger will become ‘Google Blogs’.

Brand unification

Ben Parr of Mashable states that this ‘brand unification effort will be the largest in the company’s history’. By bringing more of Google’s products under one brand name, this will help to strengthen and solidify the Google brand. Over the past few years Google has managed to be a consistently highly rated brand, meaning that any new products will benefit from using the company’s name.

However, despite the fact that Google’s strategy of launching its social networking site under the existing brand name has some upsides, its decision has come under scrutiny, mainly because some think that the name ‘Google’ is associated with a search engine rather than a Social Network, so that when they hear the name Google, ‘social’ does not enter their heads.  Therefore,  some have criticized Google for not launching its social media site under a different brand name

Brand extension

Is it really going to strengthen Google’s brand to extend the original brand name to other areas? Or is the power of a brand in its ability to pinpoint a specific service to one name? Whereas before, the word ‘Google’ was synonymous with its search engine service, extending this meaning to cover social networking as well could weaken or strengthen the power of this brand.

Rather than trying to launch a new service, separate from its search engine one, what Google is trying to do is to make Google more ‘’people centric”. Vic Gondotra, the leader of Google’s social efforts, statedWe’re transforming Google itself into a social destination at a level and scale that we’ve never attempted — orders of magnitude more investment, in terms of people, than any previous project”. Rather than trying to provide just a social media service, Google itself wants to become more social.

So when branding products, it seems Google’s approach is one that might eliminate lawsuits over trademark infringement, and also help to strengthen the brand as a whole. As the web becomes more social, and Google is in danger of being taken over and replaced by sites such as Facebook, Google’s decision to rebrand itself as ‘social’, bringing the company name into this brand, will help it to redefine itself in accordance to the changing nature of web usage.


One problem Google has been facing is the increasing tendency for people to use its name as a verb.  In recent times people have talked about ‘goggling’ or ‘facebooking’. While it may be flattering for a brand to gain such recognition this could be disastrous for its trade mark rights.

Take for example ASPIRIN.  It used to be a trademarked name for a pain reliever medicine made of acetylsalicylic acid which was made by only one company.  Now it is synonymous with that type of pain killer and made by many companies.

Many other once famous marks are now only generic words and no longer trademarks including CATERPILLER, HOOVER, THERMOS and WALKMAN while XEROX and KLEENEX have gone dangerously close to losing their marks.

When a mark is generic it means the trade mark is synonymous with all versions of that product.

There are steps you can take to prevent this from happening. One way to reduce risk is to use generic descriptors to clearly differentiate the trade mark and the product.  That is, Xerox copier or Kleenex tissues, and to ensure everyone else does likewise.

If a mark becomes generic it is almost impossible for the mark to be registered again. It will be deemed to lack distinctiveness and then everyone will be able to use it.

By choosing to stick with its existing brand name, for Google Plus is Google helping or hindering itself?  Will Google’s decision to use its name with brand extension descriptors put it in a better or worse position to avoid genericity?   What do you think? I hope to hear readers’ thoughts.

Louboutin’s trademark – Red Soles

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Louboutin shoes

Image from Wikipedia

The Paris based designer, Christian Louboutin sued Yves Saint Laurent last week for using their trademarked red soles on its shoes. The purpose of the red sole in Christian Louboutin’s design is branding – to help distinguish their shoes from those of other designers. The designer claims that Yves Saint Laurent’s use of the red soles is trademark infringement.

Reuters reported that the trademark infringement lawsuit filed in the Manhattan Federal court said ‘Mr. Louboutin is the first designer to develop the idea of having red soles on women’s shoes.’ and the use of red soles on other designer footwear may cause confusion amongst the public. Louboutin wants Yves Saint Laurent to pay $1 million in damages and to stop producing similar designs. The lawsuit said ‘The Red Sole has become synonymous with Christian Louboutin and high fashion,’ and added that the design had been trademarked since 2008.

Less than a week after Christian Louboutin sued Yves Saint Laurent, they have moved to sue another shoe designer, a Brazilian label Carmen Steffens. However, Carmen Steffens insists that it had been using red soles on its shoes since 1996, whilst Christian Louboutin had only registered the trademark in 2008. The brand’s international developer states: ‘We are ready to provide unassailable evidence that we have been using colored soles, especially red, before Mr. Christian Louboutin popularized his.’

The president of the companies US operations Mark Willingham stated ‘Of the 250 styles in Carmen Steffens France’s current collection, only three styles utilise red tones on their soles.’ The label finds it surprising that Christian Louboutin has tried to claim rights over a particular colour.

Although claiming rights over the colour of the sole of a shoe might seem surprising, in the fashion world it is common knowledge that a shoe with a pair of red soles is a Christian Louboutin design or at least a knock-off. According to the lawsuit ‘Mr Louboutin is the first designer to develop the idea of having red soles on women’s shoes. The location of the bright colour on the outsole of a woman’s pump is said to provide an alluring “flash of red” when a woman walks down the street, or on the red carpet of a special event

If the red sole really does act as a method of branding in the fashion world, then it might seem understandable that the designer wants to protect and limit the use of a red sole on other shoes as it would be much like protecting any other sort of brand. However, there is still the question over

whether one designer should really be able to prevent the use of a particular colour being used on the soles of a shoe?

Under trade mark law, ultimately the question turns on whether consumers would be confused into believing that a pair of shoes bearing red soles emanate from Louboutin (at $1000 a pair) or from another source.