|OK, well if that headline doesn’t grab your attention then I don’t know what will!
I have a theory about the attitudes often displayed by famous brands. I developed the theory while we were working on behalf of our client Monsta Pizza, who were fending off a challenge from Monster Energy Drinks. In case you don’t recall that one, Monster claimed that MONSTER was a famous brand, that MONSTER and MONSTA were similar, and therefore Monsta Pizza was an infringement. Our argument was that MONSTER was a common word in the language, so whilst their stylised Monster logo was a famous mark, the plain word MONSTER was not, and that consumers of my client’s pizza would not make an association with Monster’s range of caffeine-laden energy drinks. The Registry agreed with us, of course.
In another case of mine, a client who supplied plumbing components had a bright idea for a promotion - they would include a free gift in every single order they dispatched. The gift might be trivial – a branded pen, say, or it might be substantial. There was no link between order value and gift value, you might order enough kit to plumb an office block and get a free bookmark, or you might order a few brass fittings and get a free leather jacket. The idea was to generate a bit of excitement when the package arrived so that people would jump on it to find out what had been included. Their name was “Watts industries”, so they developed a “Watt’s Inside?” logo which they stuck to the packaging.
The question mark of “Watt’s Inside?” kind of curled around the words within. They wanted to protect the logo so we filed a trade mark application for it. It was opposed – by a certain microprocessor manufacturer who I shall refrain from naming but who requires all PC manufacturers who use their processors add a sticker to the casing which announces “XXX INSIDE!” within a generally round swirly logo. There, no names given and I’m sure there’s not enough intel there to let you work out who it is. We obviously argued that plumbing supplies and microprocessors are a bit dissimilar, certainly not interchangeable (tip: don’t try substituting one for the other, it ruins your laptop), but that’s not relevant to a “famous marks” challenge. The question is (roughly speaking) whether the use brings to mind the famous brand – whether there is a “likelihood of association”. Eventually we got Watt’s Inside? safely home and dry but it took some work.
More recently, a small British gardening supplier has been on the receiving end of Louis Vuitton’s legal muscle. Named Lawrence and Victoria, they adopted the LV BESPOKE moniker for their gardening kit, which did not endear them to France’s leading supplier of expensive brown handbags. That’s now gone through the Registry’s opposition process and the decision is in LV’s favour. No – I mean Lawrence and Victoria, not Louis Vuitton, don’t get them mixed up.
So why do big brands do this? I said I had a theory, and here it is (at last). When you work in a big brand, the brand identity is all-consuming. Everything you do is aimed at enhancing that brand and its recognition. Most of the things around you are branded. Someone very close to me used to work for a Disney business, so I’m familiar with this. So, when you see something that resembles your brand, for you it immediately brings your brand to mind. Working at Louis Vuitton, you see an LV mark, of course it makes you think of your LV-branded goods. Similarly, at Monster Energy, if you see a Monsta brand, it make you think of your own brand.
Then you look at the Trade Marks Act. It says that, as a famous brand, you can object to marks that invoke an association with your brand. Applying that test, you reach a very obvious answer that yes, you can object to that. And why would you not – the law says that this is an infringement of your legal rights in the brand?
Of course, that works fine if the brand you’re protecting is an invented or unusual word – Disney, say, or Nike, or Google.
It’s less reliable if your brand is less inherently distinctive - a word that’s in common usage like Apple, or Monster, or ‘Inside’, or maybe just two letters long. That’s where a reality check is needed. The third-party mark might create an association with your brand in your mind, but it won’t necessarily do so in the mind of the average consumer, which is why Monster and Louis Vuitton both failed. For a reliable reality check, you need an independent-minded outside counsel who will question you and your conclusions, and who is willing to warn you off a proposed course of action (no matter how profitable it might be for them).
And that’s why I’ve assembled a small team of difficult people around me. We’re all willing to give a client the advice they don’t want to hear – but do need to hear.
Until next time.