Brand protection: when is the right time to take legal action?

An effective enforcement strategy is a crucial part of protecting any brand. Being over-zealous in the pursuit of infringers can, however, sometimes harm as much as it helps.

UK brewing company BrewDog recently found this out to its cost, when it pursued two small, locally owned pubs for infringement of its trade marks.

The crowd-funded company prides itself on its “non-corporate” ethos and having close links to its customers; in the past it has been critical of large, “faceless corporations”. So its perceived overreaction to small businesses infringing its intellectual property rights drew criticism from the public as being excessive and contrary to Brewdog’s stated values.

The outcry was such that BrewDog was forced publicly to apologise for their lawyers’ “trigger-happy” approach to brand protection.

This case highlights the difficult balance between pursuing an effective brand protection strategy without being seen as overbearing and unnecessarily stifling.

David and Goliath

Stories of well-known brands pursuing smaller companies for infringement regularly hit the press, but some are handled more successfully than others.

A notorious example of over-zealous brand protection came in 2012 when a small, Middle-earth themed pub in Southampton called The Hobbit, received a letter from SZC, owner of the worldwide rights to several brands associated with author JRR Tolkien, demanding an immediate rebrand.

Public outcry grew to over 57,000 supporters of the pub on Facebook, and garnered support from Sir Ian McKellen and Stephen Fry who criticised SZC and offered to pay the licence fee for the pub.

Another, possibly more unexpected, uprising against a big corporation’s attempt to protect its brand came in the face of a cease and desist letter from the US Olympic Committee (USOC), directed at an online social network of knitters, Ravelry.com. The smaller company had decided to host the “Ravelympics” to coincide with the international Olympiad.

USOC was forced to apologise publically for their derogatory tone and belittling of the knitting community when their complaint was made public.

Admittedly neither of these instances appears to have caused a long term negative effect on the famous brands. However, it is a risky strategy and a growing brand will want to avoid alienating potential customers.

There are a number of brands handling these potentially tricky situations in a way that increases their reputation.

Jack Daniel’s demonstrated enviable poise when they sent what was dubbed the ‘most polite cease-and-desist letter ever’ to an author whose book’s cover artwork infringed Jack Daniel’s’ trade mark style. Their request that the art work be changed for the next edition of the book, and alternatively offering to cover some of the costs of a redesign if the books were pulled immediately, garnered positive attention from the media.

Jack Daniel’s were able to protect their brand, without evoking the negative ‘David and Goliath’ narrative of corporate bullying that so often accompanies instances of brand protection.

Practical Considerations

How any brand responds to infringement of its intellectual property will depend on the company: size, resources and ethos can all impact on the actions a company will take.

Famous fashion brands, for example, which frequently suffer from counterfeit and poorly made replicas, will need a rapid response with strong follow through to protect their luxury brand across a range of platforms, both online and on the ground.

Smaller companies, or those that produce goods where cheap knock-offs are easily identifiable and undesirable, may prefer to take a case-by-case approach to brand protection and assess whether an infringer is worth pursuing, and what the best approach.

Responses generally fall between a bespoke response to each instance of infringement, or a reporting mechanism with a pre-prepared response ready to go.

Where infringement is carefully assessed on a case-by-case basis it will be easier to identify whether it is appropriate to pursue it, and also whether there are alternatives which could be explored before threatening legal action. However, this can be time consuming and expensive.

Many companies retain investigators to search for and report instances of infringement to a legal team that are fully briefed and ready to pursue those responsible.

This is undoubtedly a more streamlined process, and for large corporates who regularly encounter multiple instances of infringement, it may be logistically be the only option.

However, it can lack flexibility and many of the instances that do become public are a result of this “shoot first ask questions later” approach.

Conclusion

There is no one-size-fits-all approach to brand protection.

It is undoubtedly true that the potential for infringement should be considered by businesses at an early stage, and a proportional and considered strategy agreed upon to ensure a consistent approach. Any potential fall-out from over-enthusiastic enforcement should be escalated and dealt with swiftly, to minimise bad press.

A company’s approach to brand protection is a difficult balancing act, and the priorities of any business will change throughout its corporate life.

Vigorous pursuit of infringers may be necessary to protect a distinctive and iconic brand, but bear in mind the potential for public criticism against over-zealous action.

First published in MarketingTech, May 2017

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Tom Lingard , Grace Merry

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