Most Read Contributor in South Africa, September 2016
We live in a brand-obsessed and brand-dominated world. The
brands we use say all sorts of things about us –
we're fun (Kulula), we're politically
aware (Nando's), we're environmentally
conscious (Woolworths), we're fashionable
(Gucci), we can finally afford the toy that we wanted so
desperately twenty years ago when we would have looked far
less ridiculous in it (Porsche).
Winning brands enjoy the sort of loyalty that political
parties and even religions can only dream of - indeed, it has
been said that in an increasingly secular world , brands have
taken the place of religion for many people. This loyalty is
in some cases prosaic, being based on nothing more than habit, lack
of differentiation, and the sheer hassle of changing –
think banking and cell phones. Yet in other cases it is firmly
rooted in emotion. Whatever the reason for loyalty, successful
brands are extremely valuable. Indeed, for many companies the brand
is the most valuable asset. And it has never been truer than now in
the post-brick and mortar business world – think Google,
Twitter or Facebook.
Is it any wonder, therefore, that the owners of winning brands
take their brands very seriously? And that they involve
intellectual property lawyers every step of the way? For
Brand generation - although this will
normally be a name, it can, of course, also be a logo or a slogan.
They obtain advice as they know that only distinctive marks can be
registered. They know too that, although a weak mark that over time
becomes distinctive of one company can be registered, a
registration for a weak mark will never be as effective as one for
an inherently distinctive mark. So yes, Google or
Apple rather than South African Airways.
Searching , which is critical if you want to avoid getting
slapped with an infringement suit. And no, it does not only apply
to new brands, it applies equally to brand extensions and, of
course, to exports. Which itself raises all sorts of issues,
such as, what happens when you put your brand on your website, and
should you search Chinese translations and transliterations of your
Registration, and all the options available, such as combining
different brands in one registration, and using regional
registration systems like the one that applies in the EU, and the
international registration system (Madrid system) which is
available to certain South African companies.
Enforcement against a host of nasty characters, including
chancers, counterfeiters and cyber-squatters.
Licensing and co-branding, where the critical issues are
to ensure consistency of product or service, and to avoid
reputational damage. Yes, this does include those valuable, but
sometimes risky, sports sponsorships!
All those difficult practical questions. Can we use our
competitor's brand in a comparative ad? Can we buy our
competitor's brand as an Adword? Are we at risk of
being hauled before the ASA if we refer to our competitor's
brand? What are the restrictions on ambush marketing in the
post-World Cup South Africa?
Brand valuation, critical in any commercial negotiation.
ENS is a winning brand in the area of legal services in Africa,
and proudly boasts a full-service intellectual property law
department. A department that takes your brand every bit as
seriously as it takes its own.
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.
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It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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