UK: Creative Marketing Strategies And IP – Chicken, Burgers And Stranger Things

Last Updated: 23 April 2019
Article by Graeme Murray

This article first appeared in Advertising Week.

The protection and enforcement of trade marks is essential to all businesses. A trade mark is a valuable asset, and a trade mark registration will always put its proprietor in a strong position to prevent third party use of their brand.

However, in certain circumstances trade mark owners take a commercial decision to deal with infringing use in a creative way, in order to market their own products and services and strengthen the value of their brand.

The most recent example of this can be seen in a KFC campaign highlighting the many KFC imitators present on UK high streets, using them to seek to cement the fact that KFC is the original and best product on the market.

Rather than sending cease and desist letters seeking to enforce their IP, KFC has instead turned potential trade mark infringement to their advantage using the quirky phrase "Guys, We're Flattered" but sending the clear message that, in their view, their product and service offering is superior to that of the imitators.

This strengthens the KFC brand and distinguishes its goods and services further in the marketplace. The buzz generated by the campaign will drive sales and reinforce the value and goodwill of the KFC brand.

This kind of creative approach, linking IP to marketing, has become more prevalent in recent years as large brand owners are constantly seeking innovative ways to market their goods and services.

Another high profile example was the Netflix cease and desist letter sent in 2017 relating to an unauthorised Stranger Things themed bar.

Netflix sought to address the infringing use of its IP but the cease and desist letter written by its in house IP lawyer went viral due its non-threatening, amicable, and humorous tone:

"I don't want you to think I'm a total wastoid, and I love how much you guys love the show. (Just wait until you see Season 2!) But unless I'm living in the Upside Down, I don't think we did a deal with you for this pop-up,"

"You're obviously creative types, so I'm sure you can appreciate that it's important to us to have a say in how our fans encounter the worlds we build."

"We're not going to go full Dr. Brenner on you, but we ask that you please (1) not extend the pop-up beyond its 6 week run ending in September, and (2) reach out to us for permission if you plan to do something like this again."

Another innovative method of marketing was Burger King's response to McDonald's' loss of its EU trade mark registration for BIG MAC. Burger King's Swedish branches offered customers a range of "Like a Big Mac but..." options such as "The like a Big Mac but actually big". Burger King reacted to McDonald's' loss of IP and associated bad press and turned it to their advantage via a creative marketing exercise.

However, despite the success of these clever marketing exercises, the consideration of the legal issues around such activity should not be disregarded. If you are thinking of adopting similar creative approaches to marketing then you should always take the advice of a Chartered Trade Mark Attorney before seeking to create similar strategies or campaigns. In all of these examples it is clear that the legal implications of each course of action would have been considered in detail in advance of any activity.

KFC have no doubt taken a commercial decision to drive sales via the marketing campaign rather than attack the imitators directly. However, given the prevalence of the imitators, there is a potential argument that consumers are acutely aware that they are not KFC and therefore no confusion would occur. Confusion is an essential requirement of proving trade mark infringement and it is likely that this, and other issues, would have been discussed with IP specialists prior to the campaign.

There is also little doubt that before Burger King launched their campaign a full consideration of the legal risk would have been undertaken. It is potentially arguable that the use of BIG MAC by Burger King in the manner described would not lead to consumer confusion, as the consumer would immediately acknowledge that Burger King was not selling McDonald's goods, but there would also have been considerations concerning a possible claim from McDonald's based upon the reputation of the BIG MAC mark on the basis that Burger King was freeriding on, or causing damage to, that reputation, as well as any unfair competition action available to McDonald's in Sweden.

Finally, despite the tone of the Netflix cease and desist letter, a definitive legal requirement to cease and desist was still included, and consequently the goal of addressing the infringing use was achieved along with the benefit of positive press coverage.

If you do not consider the IP issues and risk associated with such marketing activity then your creative intentions could fall foul of the law and lead to a letter from a competitor with a more aggressive tone than the Netflix letter.

Any marketing strategy of this nature should therefore always be approached with caution and the choice of language and activity should be undertaken only once a thorough review of your intentions has been discussed with a Chartered Trade Mark Attorney.

The protection and enforcement of trade marks is essential to all businesses. A trade mark is a valuable asset, and a trade mark registration will always put its proprietor in a strong position to prevent third party use of their brand.

However, in certain circumstances trade mark owners take a commercial decision to deal with infringing use in a creative way, in order to market their own products and services and strengthen the value of their brand.

The most recent example of this can be seen in a KFC campaign highlighting the many KFC imitators present on UK high streets, using them to seek to cement the fact that KFC is the original and best product on the market.

Rather than sending cease and desist letters seeking to enforce their IP, KFC has instead turned potential trade mark infringement to their advantage using the quirky phrase "Guys, We're Flattered" but sending the clear message that, in their view, their product and service offering is superior to that of the imitators.

This strengthens the KFC brand and distinguishes its goods and services further in the marketplace. The buzz generated by the campaign will drive sales and reinforce the value and goodwill of the KFC brand.

This kind of creative approach, linking IP to marketing, has become more prevalent in recent years as large brand owners are constantly seeking innovative ways to market their goods and services.

Another high profile example was the Netflix cease and desist letter sent in 2017 relating to an unauthorised Stranger Things themed bar.

Netflix sought to address the infringing use of its IP but the cease and desist letter written by its in house IP lawyer went viral due its non-threatening, amicable, and humorous tone:

"I don't want you to think I'm a total wastoid, and I love how much you guys love the show. (Just wait until you see Season 2!) But unless I'm living in the Upside Down, I don't think we did a deal with you for this pop-up,"

"You're obviously creative types, so I'm sure you can appreciate that it's important to us to have a say in how our fans encounter the worlds we build."

"We're not going to go full Dr. Brenner on you, but we ask that you please (1) not extend the pop-up beyond its 6 week run ending in September, and (2) reach out to us for permission if you plan to do something like this again."

Another innovative method of marketing was Burger King's response to McDonald's' loss of its EU trade mark registration for BIG MAC. Burger King's Swedish branches offered customers a range of "Like a Big Mac but..." options such as "The like a Big Mac but actually big". Burger King reacted to McDonald's' loss of IP and associated bad press and turned it to their advantage via a creative marketing exercise.

However, despite the success of these clever marketing exercises, the consideration of the legal issues around such activity should not be disregarded. If you are thinking of adopting similar creative approaches to marketing then you should always take the advice of a Chartered Trade Mark Attorney before seeking to create similar strategies or campaigns. In all of these examples it is clear that the legal implications of each course of action would have been considered in detail in advance of any activity.

KFC have no doubt taken a commercial decision to drive sales via the marketing campaign rather than attack the imitators directly. However, given the prevalence of the imitators, there is a potential argument that consumers are acutely aware that they are not KFC and therefore no confusion would occur. Confusion is an essential requirement of proving trade mark infringement and it is likely that this, and other issues, would have been discussed with IP specialists prior to the campaign.

There is also little doubt that before Burger King launched their campaign a full consideration of the legal risk would have been undertaken. It is potentially arguable that the use of BIG MAC by Burger King in the manner described would not lead to consumer confusion, as the consumer would immediately acknowledge that Burger King was not selling McDonald's goods, but there would also have been considerations concerning a possible claim from McDonald's based upon the reputation of the BIG MAC mark on the basis that Burger King was freeriding on, or causing damage to, that reputation, as well as any unfair competition action available to McDonald's in Sweden.

Finally, despite the tone of the Netflix cease and desist letter, a definitive legal requirement to cease and desist was still included, and consequently the goal of addressing the infringing use was achieved along with the benefit of positive press coverage.

If you do not consider the IP issues and risk associated with such marketing activity then your creative intentions could fall foul of the law and lead to a letter from a competitor with a more aggressive tone than the Netflix letter.

Any marketing strategy of this nature should therefore always be approached with caution and the choice of language and activity should be undertaken only once a thorough review of your intentions has been discussed with a Chartered Trade Mark Attorney.

The protection and enforcement of trade marks is essential to all businesses. A trade mark is a valuable asset, and a trade mark registration will always put its proprietor in a strong position to prevent third party use of their brand.

However, in certain circumstances trade mark owners take a commercial decision to deal with infringing use in a creative way, in order to market their own products and services and strengthen the value of their brand.

The most recent example of this can be seen in a KFC campaign highlighting the many KFC imitators present on UK high streets, using them to seek to cement the fact that KFC is the original and best product on the market.

Rather than sending cease and desist letters seeking to enforce their IP, KFC has instead turned potential trade mark infringement to their advantage using the quirky phrase "Guys, We're Flattered" but sending the clear message that, in their view, their product and service offering is superior to that of the imitators.

This strengthens the KFC brand and distinguishes its goods and services further in the marketplace. The buzz generated by the campaign will drive sales and reinforce the value and goodwill of the KFC brand.

This kind of creative approach, linking IP to marketing, has become more prevalent in recent years as large brand owners are constantly seeking innovative ways to market their goods and services.

Another high profile example was the Netflix cease and desist letter sent in 2017 relating to an unauthorised Stranger Things themed bar.

Netflix sought to address the infringing use of its IP but the cease and desist letter written by its in house IP lawyer went viral due its non-threatening, amicable, and humorous tone:

"I don't want you to think I'm a total wastoid, and I love how much you guys love the show. (Just wait until you see Season 2!) But unless I'm living in the Upside Down, I don't think we did a deal with you for this pop-up,"

"You're obviously creative types, so I'm sure you can appreciate that it's important to us to have a say in how our fans encounter the worlds we build."

"We're not going to go full Dr. Brenner on you, but we ask that you please (1) not extend the pop-up beyond its 6 week run ending in September, and (2) reach out to us for permission if you plan to do something like this again."

Another innovative method of marketing was Burger King's response to McDonald's' loss of its EU trade mark registration for BIG MAC. Burger King's Swedish branches offered customers a range of "Like a Big Mac but..." options such as "The like a Big Mac but actually big". Burger King reacted to McDonald's' loss of IP and associated bad press and turned it to their advantage via a creative marketing exercise.

However, despite the success of these clever marketing exercises, the consideration of the legal issues around such activity should not be disregarded. If you are thinking of adopting similar creative approaches to marketing then you should always take the advice of a Chartered Trade Mark Attorney before seeking to create similar strategies or campaigns. In all of these examples it is clear that the legal implications of each course of action would have been considered in detail in advance of any activity.

KFC have no doubt taken a commercial decision to drive sales via the marketing campaign rather than attack the imitators directly. However, given the prevalence of the imitators, there is a potential argument that consumers are acutely aware that they are not KFC and therefore no confusion would occur. Confusion is an essential requirement of proving trade mark infringement and it is likely that this, and other issues, would have been discussed with IP specialists prior to the campaign.

There is also little doubt that before Burger King launched their campaign a full consideration of the legal risk would have been undertaken. It is potentially arguable that the use of BIG MAC by Burger King in the manner described would not lead to consumer confusion, as the consumer would immediately acknowledge that Burger King was not selling McDonald's goods, but there would also have been considerations concerning a possible claim from McDonald's based upon the reputation of the BIG MAC mark on the basis that Burger King was freeriding on, or causing damage to, that reputation, as well as any unfair competition action available to McDonald's in Sweden.

Finally, despite the tone of the Netflix cease and desist letter, a definitive legal requirement to cease and desist was still included, and consequently the goal of addressing the infringing use was achieved along with the benefit of positive press coverage.

If you do not consider the IP issues and risk associated with such marketing activity then your creative intentions could fall foul of the law and lead to a letter from a competitor with a more aggressive tone than the Netflix letter.

Any marketing strategy of this nature should therefore always be approached with caution and the choice of language and activity should be undertaken only once a thorough review of your intentions has been discussed with a Chartered Trade Mark Attorney.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions