Stop playing Russian roulette with your brand

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As somebody who ensures brands are legally protected for a living, my position is obviously going to be that companies must invest correctly and thoroughly in the legal protection around every brand offering. However, particularly with the growth of personalisation in the food and drink sector, and the surge in limited edition food brand offerings, this has created a legal dilemma for many companies as they consider whether it is really worth investing in registered trade mark protection for a product which is only going to be available for a limited time.

If correctly handled, the process of clearing and registering a brand is a straightforward one, but if problems arise, it can be a slow process, which potentially takes longer than the limited edition will be available. So how can companies marry together the need to have legal certainty around the brand with the fast moving pace of the industry?

My suggestion is that even if a company decides not to proceed with the legal registration of a brand, giving it monopoly rights to the term, it must not skimp on conducting clearance searches prior to the launch of any new product. Clearance searches can be turned around quickly in most countries and so can be built into the timeframe for any launch. If thorough and correct due diligence work has been undertaken, a company can take a limited edition product to market, safe in the knowledge that there is not a competitor that can call for the product to be removed before the end of the planned life cycle. Consideration, however, must be given to the limited edition offerings which, through the product success, becomes part of the main product line. In these instances, a decision not to seek legal protection around the brand at the point of launch could be detrimental, as a competitor may have jumped on the register first with a similar or identical brand, thus potentially preventing your own continued use of the limited edition. As with any business decision, it is a case of evaluating the risks.

Similarly, it is not always obvious what is going to be the element of the branding that is really going to take off or pique the consumer’s interest. As we know, a brand offering is not limited to the particular brand name, but distinctive packaging or the shape of the product or packaging themselves can also qualify for protection of IP rights. Any due diligence work must consider not only the actual brand offering itself, but any associated packaging that will be produced and even marketing copy to accompany the promotion; point of sale (POS) material, TV advertising campaigns and social media strategies all need to be considered and cleared from an IP perspective.

For those who are embarking on the trade mark registration route, it is important to understand exactly the extent of the right that that trade mark registration gives you. The UK office in particular, is accepting registrations for terms which in isolation would be considered either generic or descriptive, but are allowing the registrations on the back of the particular stylisation of the font or colour combination. For example, Indian Street Food is a generic term widely used to denote food that would be considered traditional to India. A cursory glance at the UK IPO register shows that there are numerous granted registrations which contain Indian Street Food, all of which are able to co-exist due to the specific stylisation and get up of those marks, not because they grant any one company the right to monopolise the term.

So before thinking about running a limited edition of a product, regardless of the planned life, conduct full IP clearance searches. It is also important to identify what is unique – is it the brand; the packaging; the concept? Once the associated marketing promotion material has been agreed, a decision should be made whether or not registration is needed. If the decision is taken not to register businesses must accept that, potentially, in the future it may be harder to enforce the brand.