Australia: A global meeting of the brands

Last month, I represented Swaab Attorneys at the 138th Annual Meeting of the International Trademark Association (INTA) in Orlando, Florida – the home of famous theme parks including Disneyworld and Universal Studios – businesses who clearly value a well-developed and well-protected brand. Over the course of the conference it became clear that an appropriate brand protection strategy is still fundamental to the success of any business, big or small and no matter where they operate around the world, given the ever increasing importance of the online world.

The conference saw around 10,000 brand owners, lawyers and innovators meet to discuss current intellectual property issues facing organisations around the world and to discuss innovative approaches to brand protection strategies. Throughout the conference I met with international clients, foreign associates and friends of Swaab to share ideas and hear from leading individuals on interesting topics including:

• strategic options to guard against trade mark infringement in the modern market;
• the rise of hashtags and their use as trade marks;
• the future of plain packaging legislation around the world given the recent Australian experience with the tobacco industry.
• recent changes to trade secrets law in the UK and US;
• ambush marketing and social media in light of the upcoming 2016 Olympics in Rio; and
• Chinese trade mark procedure in a world where many businesses are manufacturing in China or are increasing their market presence in China to target the growing middle class.

Innovation was a common theme across all discussions and in particular the role that it plays in shifting how we source, buy and sell products on a daily basis. While we all want to maximise the potential of the new opportunities presented by the 'innovation boom', brand owners should still ensure their businesses are well represented and protected on e-commerce sites or in non-traditional media outlets, as it can be difficult to control the information and products available to the public in an online world.

Brand owners need to be savvy when monitoring and protecting their brand online. If you are too relaxed, you will be seen as an easy target by infringing parties and you may weaken any intellectual property rights established over time. Alternatively, if you are too aggressive in your protection approach, you may erode the goodwill being developed in your brand by satisfied customers or brand loyalists through fan accounts or product endorsements.

However, be wary of the rise of trade mark infringement and damage to brands by users on social media behemoths like Facebook and Instagram. Instagram, the fun photo-sharing social networking service, has, over the last few years, become an avenue for fake accounts that offer cheap counterfeit products. This social media platform is not unique and similar acts can be seen across many other sites.

Brand owners at the INTA conference said they were conscious of the damage that these fake accounts cause to their brand not only in the obvious direct reputational damage or the reduced market share caused by the availability of counterfeit goods, but also the potential for brand fatigue, where your business simply becomes background noise in an over-saturated online market. However, more positively, businesses can utilise these platforms to establish the reputation of their brands in overseas markets, which can be very important when establishing first use of a trade mark.

Additionally, online marketplaces were a hot topic as they provide consumers with a huge range of products aggregated from a wide array of providers. The availability is higher, the selection is wider and the prices more competitive than traditional stores. The rise of eBay, Mercado-Libre, Alibaba and Tmall provide businesses with new avenues through which they can reach consumers and sell their products, often in markets previously unexploited by the business. The platforms, however, can also be leveraged by counterfeiters. Businesses must monitor and move quickly against infringers to protect their brands.

Removing listings from some sites can be achieved by utilising a site's existing take down procedures. However, sometimes smaller sites do not have a proper process in place or the existing process can be further complicated as the product description does not contain a brand name or trade mark but instead uses an infringing product image or logo. The listings become harder to find, and the procedure more laborious, as they are not easily searchable.

Likewise, businesses should be aware of any distributor or business partner who uses a trade mark beyond the scope of their licence or starts selling products online in breach of a supply agreement.

Overall, all delegates agreed that it was fundamental to consider and implement a strategic approach when developing and protecting your brand. This can be done by registering a trade mark or design, ensuring that you own the copyright in any key artwork or product images and enforcing those rights, and maintaining appropriate licencing arrangements with distributors, retailers or business partners.

We can work with you to tailor an appropriate strategy to protect your business and help preserve your brand's unique lustre. Make sure your business values its brands (read more here) and keeps its house in order (read more here) so that we can use the skills learned from our friends at INTA to help your business put its best foot forward in the online world.

For more information, please contact:

James Skelton, Solicitor
Phone: +61 2 9233 5544
Email: JAS@SWAAB.COM.AU

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.