WHAT’S IN A NAME? –
BRANDING IN LAW AND PRACTICE
Michael Jewess, michaeljewess@researchinip.com
OIPRC seminar, St Peter’s College, Oxford, 5 February 2015
Michael Jewess
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JULIET:
What’s in a name? that which we call a rose
By any other name would smell as sweet;
So Romeo would, were he not Romeo call’d,
Retain that dear perfection .....
William Shakespeare (1564-1616), Romeo and
Juliet, Act II, Scene II
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What is branding for?...
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“Brand is a ‘reputational asset’ which has
been ‘developed over time so as to
embrace a set of values and attributes’,
resulting in a ‘powerfully held set of
beliefs by the consumer’ and a range of
other stakeholders.”
Urwin, Peter, Karuk, Valeriya, Hedges, Philip, and Auton, Frank,
Valuing brands in the UK economy, commissioned by the British
Brands Group (Westminster Business School, University of
Westminster, London, December 2008),
www.britishbrandsgroup.org.uk/upload/File/WBS%20VoB%20128.pdf
Less positive: Greenhalgh, Christine, Rogers, Mark,
Schautschick, Philipp, and Sena, Vania, Trade Mark
Incentives (Intellectual Property Office, Newport, Wales,
July 2011), available under www.ipo.gov.uk/
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Interbrand’s
brand
valuations
business
Coca-Cola
Shell
brand value
brand value/
business value
$ 71.9 bn
42%
$ 4.5 bn
3%
Shell, motor
vehicle fuel
sales to public
10%
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Millward Brown
Optimor
2011
Interbrand
2011
Coca-Cola
Apple
BMW
Colgate
Shell
$71.9 bn (no 1)
$33.5 bn (no 8)
$24.6 bn (no 15)
$7.1 bn (no 51)
$4.5 bn (no 74)
$73.8 bn (no 6)
$153.3 bn (no 1)
$22.4 bn (no 30)
$14.3 bn (no 55)
$15.2 bn (no 51)
Ratio of
16.0
Coca-Cola to
Shell
4.9
Ratio of
2.1
Coca-Cola to
Apple
0.5
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a legal practitioner trying
to act in the best interests
of a client engaged in
branding activity …
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Community trade mark (CTM) system has made it
enormously more difficult to pick a new brand that does
not significantly risk infringing existing third-party
rights:
applicants getting wider geographical coverage than
they need (and used to get before)
OHIM’s practice of granting registrations for an entire
class of goods
OHIM’s fee structure encouraging speculative
registrations in 3 classes
– leading to “cluttering” of the trade mark register
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Nice classification, class heading for class 9
“Scientific, nautical, surveying, photographic,
cinematographic, optical, weighing, measuring, signaling,
checking (supervision), life-saving, and teaching apparatus
and instruments; apparatus and instruments for
conducting, switching, transforming, accumulating,
regulating or controlling electricity; apparatus for
recording, transmission or reproduction of sound or
images; magnetic data carriers, recording discs; compact
discs, DVDs and other digital recording media;
mechanisms for coin-operated apparatus; cash registers,
calculating machines, data processing equipment,
computers; computer software; fire-extinguishing
apparatus.”
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a surveying system with data logging
PLACELIST
Case details for trade mark EU010806008
New Search Glossary of terms Print Friendly View
Trade mark
1 of 1
1 of 1
Trade mark
PLACELIST
Status
Registered
Relevant dates
Filing date
13 April 2012
Date of entry in register
22 August 2012
Renewal date
13 April 2022
List of goods and services
Class 9
Scientific, nautical,
surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching
apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording,
transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coinoperated apparatus; Cash registers, calculating machines,
data processing equipment, computers; Computer software; Fire-
extinguishing apparatus.
Class 38
Telecommunications.
Class 41
Education; Providing of training; Entertainment; Sporting and cultural activities.
Name and Address details
Holder's name
The Coca-Cola Company
One Coca-Cola Plaza, Atlanta, United States Of America, 30313
Representative
SIMMONS & SIMMONS LLP
CityPoint One Ropemaker Street, London, United Kingdom, EC2Y 9SS
Publication details
First advert
Journal : 2012/090 Date of publication : 15 May 2012
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Coca-Cola, Spotify Launch Ground-Breaking Social Music App
By: Jan Moy June 11, 2013
http://www.coca-colacompany.com/coca-cola-music/every-song-has-a-place-coca-cola-spotify-launch-groundbreaking-social-music-app
“We want to combine the physical experience of drinking a Coke with the virtual
experience of listening to, discovering and sharing music,” explains Joe Belliotti,
Coke’s director of entertainment marketing. “Our ambition is to have a Placelist
associated with everywhere Coca-Cola is enjoyed.”
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Advice to client wanting to launch a new
product with a protectable name especially in a
cluttered class such as class 9
1. The client should devise half-a-dozen or more marks –
(i) none of which are unregistrable on absolute grounds (in
particular descriptiveness),
(ii) most of which are invented words so as to improve the
chances of surviving clearance searches for third-party rights,
and
(iii) none of which have negative or undesired associations.
No positive
aesthetic
criterion here!
2. All the marks should be searched, and if one or two are clear
of third-party rights in the relevant territories, he should think of
that as a good outcome.
3. The client should be prepared for this low survival rate on
search and to have to adopt his personal least favourite.
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Brand “architectures”
“one product, one brand”
“monolithic branding”*
* Olins, Wally, The brand handbook (Thames and
Hudson, London, 2008), pages 44-53.
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“one product, one brand”, FMCG
and alcohol
Unilever (FMCG)
Diageo (alcohol)
Hellmann’s
Smirnoff
Knorr
Guinness
Vaseline
Johnny Walker
Dove
Persil
OMO
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“One product, one brand” for a product so
innovative that it is hard to describe
WORKMATE
trade mark
EU006145528
Specific goods
within classes, 6,
18, 19, 20, 21
Workmate® Dual Height
Tough Workbench
WM626
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“One product, one brand” for an innovative
pharmaceutical product: no longer possible
Analgesic:
acetylsalicylic acid
registered trade mark Aspirin
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“One product, one brand” for an innovative
pharmaceutical product: current regulation in most
territories
Product effective against erectile dysfunction:
(as the citrate)
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“One product, one brand” for an innovative
pharmaceutical product: current regulation in most
territories
Product effective against erectile dysfunction:
1-[4-ethoxy-3-(6,7-dihydro-1-methyl-7-oxo-3-propyl1H-pyrazolo[4,3-d]pyrimidin-5-yl)phenylsulfonyl]-4methylpiperazine citrate
Viagra (Pfizer trade mark, EU 233890, class 3)
sildenafil citrate (generic name)
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Brand “architectures”
“one product, one brand”
good for FMCG, mass-produced alcoholic
drinks, innovative products (incl. pharma but
advantages are restricted by regulation)
“monolithic branding”:
combining the corporate mark with descriptive
or semi-descriptive words or characters
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“Monolithic” brand architecture for a
product range
BMW 530d for a 5-size, 3.0 litre,
diesel car, etc.
GUCCI, “soft stirrup black
brocade leather shoulder bag”, etc.
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“Monolithic” brand architecture for
diverse but legally connected
businesses
VIRGIN ATLANTIC
VIRGIN MONEY
VIRGIN TRAINS
etc.
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If customers are major organisations
whose purchases (usually through a
professional procurement function) are of
individually expensive items (eg IT
systems, defence systems) or else are bulk
purchases (eg raw materials, utilities),-
then monolithic branding is a “no brainer”.
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Corporate or “house” branding
“ ‘Corporate personality’ is the soul, the
persona, the spirit of the organization
manifested in some comprehensible
way….. The tangible manifestation of a
corporate personality is its corporate
identity.”
* Olins, Wally, The brand handbook (Thames and
Hudson, London, 2008), page 21.
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“a human symbol of achievement,
especially individual achievement, which
was considered to be a core value of the
company”
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With 90 subjects, the symbol did not
convey the intended notion without
supporting verbal information.
Green, David and Loveluck, Valerie [error for “Valeria”],
“Understanding a corporate symbol”, Applied cognitive
psychology, 8, 37-47 (1994)
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WHAT’S IN A NAME? –
BRANDING IN LAW AND PRACTICE
Michael Jewess, michaeljewess@researchinip.com
OIPRC seminar, St Peter’s College, Oxford, 5 February 2015
Michael Jewess
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