Portugal: For Safe Marketing: The Influence Of Intellectual Property Rights On Marketing Strategies

Last Updated: 2 September 2018
Article by Vitor Palmela Fidalgo
Most Popular Article in Portugal, September 2018

Intellectual property rights play a crucial role in the marketing strategy of all kinds of an increasing number of companies, and it involves a set of processes, creations and communications offerings which have value for the clients, customers or society in general. Marketing necessarily generates intangible assets that may be protected by intellectual property rights. In fact, this is the first significative aspect of the influence of intellectual property rights on marketing strategies: the protection of intangible assets in a marketing campaign.

Notwithstanding the above, enthusiastically drawing the attention of clients or customers and attempting to outdo the competition, marketing campaigns sometimes exceed legal limitations, especially concerning the respect of intellectual property rights duly protected by law. In this sense, the compliance of marketing strategies to what is allowed by law is also a crucial aspect where marketing and intellectual property must go hand in hand. An unlawful campaign can conceivably effect the communication strategy itself and has strong legal consequences.

1. Types of intellectual property rights that may be involved in marketing campaigns

New commercial names, logos, domain names, product names, slogans, flyers, white papers, brochures, newsletters, landing pages or website designs are some examples which are part of the marketing communication and strategy. Whether they are protected or not, in the particular case, by intellectual property rights will depend on whether or not they fulfill the respective requirements for protection. However, at least in theory, they all can be protected. The extension and the way of protection will differ according to the kind of asset in question.

1.1. Trademark

A trademark is a sign (word or figurative), which identifies products or services of a particular source from those of others. In the marketing advertisement it is a common occurrence to see new signs launched in the communication. These signs are usually sub-brands which, together or not with the main brand of the company, emerge as a brand-new communication to launch a new product, service or advantage for the relevant public. Being distinctive signals and respecting the principle of novelty for marks, they should be registered as trademarks.

The same concept should be applied to advertising slogans. However, due to their nature, as has been shown in many European Court cases (see cases T-476/08 "Best Buy" or T-281/82 "Mehrfürihr Geld"), sometimes slogans have been refused as trademarks due to their lack of distinctiveness. In this sense, before trying to register a slogan as a trademark, it has to be ascertained whether there is a possibility of protection.

1.2. Industrial Design

Industrial designs protect the ornamental or aesthetic aspect of a product, including its color, shape or lines. Industrial designs may consist of three or two dimensional features. In this sense, provided that they are new and non-obvious, creative designs used in the marketing campaign should be protected by industrial design.

1.3. Copyright

The last relevant intellectual property issue that should be considered is the copyright. Copyright is an exclusive right that protects certain forms of original works. Under this intellectual property right can be included white papers or newsletters. Landing pages and website designs can be protected by copyright as well, however, in such cases there may be an overlap between a copyright and an industrial design which is not necessarily a bad thing since they complement each other. In fact, the copyright protection is, in most countries, longer than the legal protection offered by industrial designs.

Contrary to the other intellectual property rights, a copyright is protected automatically. In this sense, despite being highly advisable the registration of a copyright is no longer required. The copyright will be protected upon its creation, without any formalities.

1.4. Other IP right: the impossibility of protecting the marketing strategy itself

Other intellectual property rights can be mentioned, however they usually have minor relevance in the intangible assets launched in the marketing campaign.

This is the case of patents or utility models. Through these intellectual property rights inventions that are industrially applicable and that contain new and non-obvious technical advances can be protected. Considering the field and strict requirements involved, it is unlikely that inventions will play a role in a marketing campaign. The only foreseeable patentable invention that may have emerged through a marketing campaign is a software program, however this kind of protection is only possible in the US, since in Europe the software is protected by copyright.

It is also important to stress that the marketing strategy itself and the campaign methods used cannot be protected. These are ideas and, as such, are excluded from any kind of protection by intellectual property rights. Only the expression of those ideas, through the means mentioned above can be protected.

2. Intellectual property marketing compliance

As has already been mentioned, a variety of communication material is usually launched in the marketing process. Apart from the protection which can be obtained through the above-mentioned intellectual property rights, there is also a risk of infringement of someone's intellectual property rights.

Bearing this in mind, it is of the utmost importance to undertake a previous effective intellectual property conformity compliance, thus protecting your business against litigation, lost profits and a damaged reputation.

Here are some examples of behaviors or situations that should be taken into account.

2.1. Trademark clearance searches

Before using any name, logo or slogan in your marketing strategy it is highly advisable to do a trademark search in order to check if your trademark is available. I say "available" since it is not simply a matter of having your trademark registered. Even though you may not wish your new brand name to be registered as a trademark, it has to be ascertained if there is any possibility of infringing third party rights.

2.2. Carefully draw the line between competition and anti-competitive behavior

Everybody knows that fierce competition may lead to marketing exaggerations and distortions. Marketing departments use several means/methods to appeal to the clients and/or customers, and these means may sometimes exceed what is legally accepted.

In terms of intellectual property rights, there is a tendency today to use well-known trademarks without obtaining prior consent. Even where the business activity is not related to the company concerned, since there is no authorization this is considered an illegal use of a trademark. It does not matter if you did not intend to damage the trademark. Any use without consent of a well-known trademark should be considered unlawful.

Another issue is the use of comparative advertisement. Despite not being illegal, no company may use this strategy to take undue advantage of the reputation of a trademark, trade name or other distinctive sign of a competitor or the designation of origin of competing products. As was stated by the European Court of Justice in the case L'Oréal SA v Bellure NV (C 487/07) - an understanding which can apply in general not only for advertisement - when interpreting Article 5(2) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trademarks "taking (of) unfair advantage of the distinctive character or the repute of a mark (...) does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark (...). The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of that mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image". Actually this same understanding should be also be applied to trademark parody which is hardly acceptable nowadays under the European law.

And last of all, attention must be given to Keyword advertising. As was established in the well-known case Google France (C-236/08) the European trademark law allows proprietors of trademarks, considering under certain conditions, to forbid third parties from using signs which are identical with, or similar to, their trademarks for goods or services equivalent to those for which those trademarks are registered.

3. Final remarks

As we have seen, in terms of intellectual property rights, marketing campaigns have to be carefully delineated. In order to avoid troubles in the future it should be adopted a preventive legal strategy. In this strategy three main separated questions should be asked before launching a marketing campaign:

what should I protect to have exclusivity in my business and avoid copying?

What should I do in order to avoid any infringements of intellectual property rights?

How far can legally I go in my marketing campaign?

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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