Iconic Brands

Posted on by

When a brand becomes as iconic as Apple it can get away with potentially reputation damaging incidents which would tarnish a lesser brand.

This article on IPKAT  about how Apple has fared following news of its association with Foxconn, a Chinese manufacturer alleged to mistreat its staff,  is interesting for that reason.

According to the IPKAT last month This American Life, an acclaimed radio programme, focused on the harsh working conditions of employees at Foxconn.  The programme was widely distributed as the podcast of the show was downloaded by an extraordinary number of people.  Now it seems the story has been retracted and the parties concerned have given explainations as to why the topic should not have been aired.  In the meantime, Apple has declined to comment at all about the matter and the matter will probably go no further.

I’d love it if any readers know of an example where a brand’s reputation has not been strong enough to withstand the pressure of  an adverse media news report.


Hasbro Trade Mark Infringement Claim Stops Launch

Posted on by

Alleged infringement of the TRANSFORMERS trade mark recently sparked a dispute between the leading computer technology company Asus and Hasbro, a multinational games business.

Hasbro is the maker of a line of toy alien robots named Transformers, able to disguise themselves as automobiles. The Transformers universe features two warring factions of these robots: the Autobots and the Decepticons. First introduced in 1984 the robots have, in the course of nearly thirty years, spawned comic books, animated TV series and a live-action movie franchise.

Filing suit for trade mark infringement, Hasbro alleges that Asus’ release of the Transformer Prime laptop takes advantage of the trade mark in order to make money, a representative stating that ‘Hasbro continues to aggressively protect its brands and products and the specific actions we are taking today against Asus underscores yet again Hasbro’s willingness to pursue companies who misappropriate our intellectual property for their own financial gain.’

So, why is a toy company concerned about a consumer electronics business using the word TRANSFORMERS?  After all, there seems to have been no quarrel between Hasbro and Boots over registration of TRANSFORMERS for cosmetics. How likely are consumers to be confused into linking Asus to the Autobots?  Tablet devices and toys do seem quite far removed from each other.  However, the combination of TRANSFORMER and PRIME does offer some support to Hasbro’s case as discussed below.

Asus has used the word TRANSFORMER when naming its products in the past, releasing the Eee Pad Transformer tablet device at the beginning of January. However, this time round the addition of the word ‘Prime’ has given rise to suspicion, as the leader of one of the robot factions is a character called ‘Optimus Prime’. Hasbro is not sure that this is just a coincidence.

Included in Hasbro’s trade mark portfolio are registrations and applications for the trade mark TRANSFORMERS PRIME in various jurisdictions.  While not yet registered in the US, Hasbro does own UK and European registrations for these words, originally filed in June 2010.  TRANSFORMERS PRIME is clearly a much closer match than just TRANSFORMERS, but is not registered against tablet devices.  It remains to be seen whether the notoriety of the TRANSFORMERS brand will tip the case in Hasbro’s favour despite differences in the goods sold under the mark.

Techweek draws a parallel between the tablet and the robots, noting that ‘the major selling point of the Asus Transformer Prime is that it converts [transforms?] into a form that closely resembles a laptop when the keyboard dock is used’, so mimicking the Transformers’ ability to disguise themselves as vehicles.  Still, the word ‘transformer’ is somewhat descriptive in this context, arguably referencing the functionality of the product rather than ripping off the robot franchise.  Dailytech further observes that ‘The Transformer Prime doesn’t convert into a truck, and the Transformer toys don’t offer the Android operating system with apps and Web-browsing capabilities.’

Asus claims that internal studies have shown ‘no issues’ with its use of the Transformer brand indicating an intention to stick with the name, but if Hasbro has its way it could be some time before the tablet reaches consumers.

When to know you need to rebrand

Posted on by

The importance of the name you give your business was clearly brought home in an episode of Hotel Inspector about the Hotel Weyanoke in Eastbourne.

A name that is so difficult to spell, or to pronounce is surely a liability. Quite rightly, the owners were persuaded by the Hotel Inspector to choose some alternative names. Surprisingly, they were quite reluctant to do so.              

The owners eventually agreed to choose some new names.  Therefore, WEYANOKE was pitted against names like COAST and EAST BEACH.  People in the streets of Eastbourne were canvassed for their opinion as to which was the better name. WEYANOKE got just one vote, EAST BEACH 33, while COAST came in just behind EAST BEACH.

Being interested in trade marks, I naturally wonder whether trade mark searches affected the decision to opt for EAST BEACH rather than COAST. Did anyone even search the trade mark registers?  I’d love to know.

Interestingly, despite apparently turning around its fortunes since the Hotel Inspector’s visit, the hotel has not bothered to register its new name as a trade mark.

Twitter goes for TWEET!

Posted on by

We have written previously on this topic about Twitter’s bid to protect its trade mark and brand.  As Twitter co-founder Biz Stone said in a blog post in 2009,

“We have applied to trademark TWEET because it is clearly attached to Twitter from a brand perspective but we have no intention of “going after” the wonderful applications and services that use the word in their name when associated with Twitter. In fact, we encourage the use of the word TWEET”.

Ironically, their application was refused by the United States Patent and Trademark Office (‘USPTO’) in April 2009 and again in March 2011 due to the existence of the mark “LET YOUR AD MEET TWEETS” registered by an online advertising service provider called Twittad.

Now, Twitter has finally decided to sue the third party developer over the use of the word “TWEET” in Twittad’s trademark – “LET YOUR AD MEET TWEETS”.  The mark was applied for back in July 2008, thereby blocking Twitter’s own application to trade mark the word TWEET.  So, Twitter now wants to own the mark.  It believes it has more legitimate right to use the mark TWEET.  Its legal filing says “The defendant’s registration unfairly exploits the widespread association by the consuming public of the mark ‘TWEET’ with Twitter and threatens to block Twitter from its registration and legitimate uses of its own mark.”

Twitter contends that Twittad has used the strap line ‘LET YOUR AD MEET TWEETS’ solely as a generic phrase in advertising itself in connection with Twitter. Therefore it is not a trade mark within the meaning of trade mark law and thus, renders the mark subject to cancellation. Alternatively, they contend, even if Twittad is successful in establishing the strap line as a mark, then the mark should be cancelled due to Twitter’s pre-existing rights in the mark.

Twitter comments, “Twitter’s organic growth has taken many forms, including a widespread, dictionary-documented association of the word ‘TWEET’ with the use of Twitter. It is in the best interests of our users and developers for the meaning of ‘TWEET’ to be preserved to prevent any confusion, so we are taking action to protect its meaning.”

On the other hand, Twittad founder James Eliason said “We firmly stand by our position of the legitimacy of the trademark due to the fact that our mark was cleared by the Trademark office in 2008.”

Twitter already owns trade marks ‘COTWEET’ and ‘RETWEET’, however, in this case they were beaten by the third party developer Twittad who filed their trade mark application for the mark ‘TWEET’ earlier than them.

Twitter is not only determined to defend its brand name in the trade mark area, but also to third party app developers using Twitter site to aid their businesses. Generally, in such cases, Twitter either acquires these applications or suspends their use on its site. For example, Twitter has acquired TweetDeck, an application for organizing the display of tweets, for more than $40 million.

In the meantime, Twitter has suspended the twitter account of Twittad.


Painkillers and Product Recall

Posted on by

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

Posted on by

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

Posted on by

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

Posted on by

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 theRegister.co.uk, 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.

How Fragile is Reputation

Posted on by

The recent closure of the News of the World is an example of how quickly brands that are unmasked on social media can lose their reputation and brand value.  Where previously a brand could use a considerable marketing budget to drown out any negative voices, now as Interbrand puts it “people take to Twitter and Facebook to dismantle all the hard work and equity a brand has built up in a matter of hours”.  

But if your brand has wrongly suffered and lost its reputation can you ever be properly compensated for a ruined reputation?

I came across this disturbing story about Elle MacPherson’s IP strategist.

Mary-Ellen Field was a successful IP Strategist until her career was abruptly ended following stories about Elle in the News of the World.  She was a victim of phone hacking and at that time did not know what we now know, so had no way to fight back.

She is currently suing News Corporation in a bid to have her name cleared.

The IP Finance article Civil Action for Phone Hacking: How Much Is It Worth has an interesting overview of the civil actions available to victims. 

Interestingly Mary-Ellen has so far refused a settlement, so it may prove to be a case that leads to a court decision.  If so, I’ll be watching with interest.

Microsoft En-Trench-ed In Trade Mark Tussle

Posted on by

Trenched, a video game developed by Double Fine and produced by Microsoft, has had its European release date set back, potentially indefinitely, following a dispute over the name.

The European Community Trademark TRENCH, filed in 2009 by the board game designer Rui Alipio Monteiro, is registered against both board games and computer games. The designer also invested in registration of a number of designs, protecting aesthetic aspects of the board game.

Perhaps as a result of poor due diligence, Trenched the video game was announced in March, and released by Microsoft and Double Fine on the Xbox Live Arcade in North America on June 22, without cooperation from Monteiro who now appears set to fight Microsoft for exclusive use of the brand.

Speaking about the dispute to Eurogamer, the Portuguese company Criações a Solo explained that they intend to “defend all their author’s copyright and intellectual property against any infringements”, and stated their goal as “putting Trench in the international Hall of Fame of both classic electronic and board games”.

Double Fine’s Trenched not only shares elements of its name with Monteiro’s board game – they are both military-themed, and set in or around the time of WW1. Double Fine designer Brad Muir told Destructoid ‘This entire process has been very frustrating to us and it makes us sad that the people of Europe can’t play our game. Microsoft owns the IP for Trenched and they are working to resolve things as quickly as possible’.

Mark Methenitis at Joystiq offers some explanation of complications with the position in the US – namely that both the application for the logo shown here on the left, and Microsoft’s application for the mark TRENCHED, have so far been filed as intentions to use. This means that it might be some time before either are granted, however, should Monteiro’s application succeed, his rights will extend back to June 2010, nearly a year before Microsoft filed their own applicatio. In that case, an important question will be whether Microsoft’s use of the word mark TRENCHED could be confused with the Trench logo.

Some cite their investment in marketing as motivation for sticking to their guns, and it will be interesting to see whether Microsoft and Double Fine can come to some arrangement for coexistence with the board game designer or whether they will dispute the scope of their rights.

Alternatively, it is possible that media attention (such as this blog post) generated by the dispute might create enough buzz to offset the loss of investment in marketing should Microsoft persuade Double Fine to re-brand.

In the meantime, Microsoft’s line is:

‘We don’t have an update on the distribution of Trenched in Europe yet… We’re working to resolve the matter as soon as possible and will keep you posted’

Irrespective of the eventual outcome, this dispute is another very public example highlighting the importance of early clearance of brand names; and in particular international trade mark searching when products or services will be sold abroad.