All I Want For Christmas Is…Brand Protection

By Daniel Anti

09-2020

Many of us may remember from our childhood a Christmas toy or TV advertisement which will never leave our minds and which we associate with a particular company.

This year more than ever we need something to look forward to, and what is better than Christmas – and good news, it is coming and coming fast! It is no surprise then that many businesses will have already spent a significant amount of time preparing for the Christmas and New Year holiday season, which is a crucial period for sales.

However, Christmas is also a time when counterfeiters and opportunistic third parties are prevalent and when intellectual property ("IP") infringements are very common.

It is therefore important to ensure brands are thinking well in advance about protecting their existing IP and IP which will be created for the festive season through new products, one-off products and marketing campaigns.

Here are a few IP pointers for brand owners to consider when planning for the release of a new product or marketing campaign pre-launch and post-launch.

1. Pre-Launch

Choosing a name, tag-line or logo for a product or marketing campaign

Generally, when a brand is looking at launching a new product and/or marketing campaign for the festive season, it does so by using a distinctive 'hook', whether that be through a product name, image, song or otherwise . A key way of protecting the IP that exists in a product or marketing campaign is through trade mark, design and/or copyright protection.

A trade mark is essentially a sign (e.g. a word, logo, slogan, symbol, image or combination of those elements) that helps us as consumers distinguish a brand's products or services from those of other businesses.

During the Christmas season, businesses often adopt names or slogans which are descriptive of the goods or services, as it clearly tells consumers what they are offering (e.g. 'Amazing Christmas Crackers' for Christmas Crackers). However, registered trade mark protection in the UK and EU is not normally possible for such phrases, which would be classed as laudatory, descriptive and non-distinctive.

Instead, brands looking to obtain a long-term monopoly for a trade mark should think outside of the box and choose a sign which will help point to its origin (e.g. 'Krazy Kosmic Krackeroos' for Christmas Crackers – p.s. you can have that name if you want it).

Whilst the winter festive period unfortunately does not last forever, for brands looking to create a lasting product, the power of a registered trade mark going forward cannot be underestimated.

Clearance Searches

Once a distinctive trade mark has been chosen, before it is used brand owners should carry out clearances searches to find out if:

  • their trade mark is already registered in their chosen jurisdictions for the goods and services of interest; and

  • whether there is any unregistered use of the mark that might be an issue. 

These searches should be carried out in the initial stages of the marketing process to ensure a brand is not sued for using the trade mark by a third party with earlier rights and to save both time and money.

Copyright & Designs

What would a Christmas TV advertisement be without a catchy jingle? However, brand owners should still be aware in their choice of background music that copyright subsists in musical works for 70 years after the copyright owner's death, with songs such as "Rudolf The Red Nosed Reindeer" still currently having copyright protection. Brand owners should seek copyright licenses and/or pay the required royalties to make sure they are not infringing any copyrights.

It is also worth mentioning design law here. Design law protects how something looks, such as its shape and configuration. If, for example, a new toy is introduced during the festive period, unregistered design protection may subsist, however brands may want to consider registering the toy's design to have a full monopoly over the design and obtain rights which will last for a longer period than an unregistered design right.

Keeping a Product Secret

If a product is disclosed before it is officially launched, counterfeiters and copycats often rush-in to take advantage of the brand's reputation and goodwill by, for example, purchasing a domain name or registering a company name (which they do not intend to actively use) as a form of hostage in exchange for a payment.

It therefore may be in the interest of a brand to think about keeping the product hidden from the public until it is officially launched.

It is possible to file for a trade mark in a subsidiary's name in a country of interest initially, which is unsuspecting and not classed as having a large economy. The trade mark owner could then file for the mark in its key jurisdiction/s within six-months, claiming what is called 'priority' from the initial application, such that the trade mark rights in the new jurisdiction are backdated to the filing date of the initial application.

Design registration in the UK and EU has the benefit of 'deferred publication', where the design, even though registered, can be hidden from competitors and the general public for a certain period of time. After the product is launched, the design owner can request that the design be published for all to see. 

2. Post-Launch

For IP rights which brand owners wish to maintain after the festive dust has settled, there is a need to ensure that such rights are not infringed by any third parties. Watching services should be put in place so that any infringing design or trade mark applications can be picked up quickly and brand owners should monitor the relevant renewal deadlines so their rights do not unwantedly expire.

Final Word

As the Christmas period approaches and becomes increasingly important for brands, there is no better time for IP to be factored into the product development stage and marketing road-map, so brand owners do not get caught out (or end up on Santa's naughty list). Where possible, IP specialists should be involved at the early stages of planning.