{"id":8827,"date":"2020-04-07T11:18:32","date_gmt":"2020-04-07T15:18:32","guid":{"rendered":"https:\/\/www.cscdigitalbrand.services\/blog\/?p=8827"},"modified":"2020-04-08T09:42:20","modified_gmt":"2020-04-08T13:42:20","slug":"brand-protection-balance","status":"publish","type":"post","link":"https:\/\/www.cscdbs.com\/blog\/brand-protection-balance\/","title":{"rendered":"A Cautionary Tale of Reputation Damage: Striking the Right Balance with Brand Protection"},"content":{"rendered":"\n
\"\"<\/figure>\n\n\n\n
By Dr. David Barnett<\/strong>, subject matter expert, brand monitoring;
Lan Huang<\/strong>, subject matter expert, CSC Domain and Brand Abuse Enforcement
Alexandra Midgley<\/strong> subject matter expert, CSC Social Media Enforcement<\/i>

Share this post<\/strong> \n<\/a>\n<\/a>\n<\/a>\n\n\n\n

In early March 2020, a well-known\nEuropean fashion brand found themselves on the receiving end of a protest\ncampaign on social media. The background to the case was the fact that, in\n2019, the brand had launched a cease and desist (C&D) action against a small,\nU.K.-based company in response to their use of similar product names and sale\nof associated clothing merchandise. This resulted in significant legal and\nrebranding costs for the company and is just one of several cases where the\nbrand had targeted other small organizations.<\/p>\n\n\n\n

Many observers have viewed these actions\nas heavy handed, and the subsequent online commentary has generated a\nsignificant amount of negative press for the brand. The case \u201cshine(s) a light\non the potential negative PR implications when undertaking a brand enforcement\nprogram,\u201d an intellectual property expert commented. \u201cEven where a brand is\nlegitimately enforced, brand owners must be alive to where issues may arise in\nrelation to smaller businesses or individual use.\u201d<\/p>\n\n\n\n

This is not the only organization to take an (over) enthusiastic approach to their brand protection efforts. In 2015, the Millennium and Copthorne Hotels group sent a notice to the Village Association for Copthorne\u2014a small village in the U.K., and the company\u2019s founding location\u2014protesting against their infringing use of the Copthorne name in the association\u2019s web address. The hotel group eventually backed down, stating the letter was sent in error[1]<\/sup>.  <\/p>\n\n\n\n

In another case, Scottish brewery BrewDog issued a C&D against the owners of a pub planning to name it the \u201cLone Wolf\u201d \u2014one of BrewDog\u201ds product names. BrewDog also eventually withdrew the action, following a campaign accusing the company of behaving like a \u201cmultinational corporate machine.\u201d A branding commentator at the time indicated that the backtracking by BrewDog could ultimately work in their favor, stating, \u201cWe\u2019ve now got a business owner calling off his lawyers and favoring the underdog. That feels right for a challenger brand. Perhaps there\u2019s still a win available for them[2]<\/sup>.\u201d<\/p>\n\n\n\n

So how should brand owners address the issue\nof protecting their IP? Here are our top tips for getting it right.<\/p>\n\n\n\n

1.\nRegister your brand terms<\/strong><\/h3>\n\n\n\n

As a minimum, CSC suggests that brands\nregister all active brand terms in all relevant classes (i.e., product areas)\nand geographic jurisdictions. If a brand is able to achieve well-known\ntrademark status, this can also open up further avenues for enforcement, making\nit possible to defend IP rights even in product classes where trademarks have\nnot yet been registered. <\/p>\n\n\n\n

2.\nHave a clear set of goals for your IP protection program<\/strong><\/h3>\n\n\n\n

Just because you can<\/em> launch an action in a particular case doesn\u2019t mean you should<\/em>. In cases involving, for example, small companies operating in unrelated areas, with minimal risk of confusion, it may be advisable not to enforce. As with the case reported here, the risk is that an enforcement action can cause a large corporation to gain a reputation as a brand bully, and it\u2019s important to consider the risks of exacerbating an already inflamed situation. A brand owner should always be clear on the goals of their IP protection program, and be willing to answer the question\u2014in cases where an action results in backlash\u2014was it worth it?<\/p>\n\n\n\n

3.\nLook at potential infringements case-by-case<\/strong><\/h3>\n\n\n\n

At CSC, we advise against sending\nautomated C&D notices; every case is different, and it\u2019s important to\nconsider whether a notice is necessary and, if so, what the appropriate style\nof wording is. C&D language can be overly severe and may not be concise, leaving\nroom for dispute. In cases where notices should not have been sent, there\u2019s the\nrisk of counter-claims for groundless threat\u2014in these instances, the brand\nowner could then be liable for any damage and costs arising from the claim.<\/p>\n\n\n\n

Before taking any action on a potential\ninfringement, it\u2019s advisable to assess the case against the following\nquestions:<\/p>\n\n\n\n

  1. Is there prominent and unauthorized use of the trademark?<\/li>
  2. Is there a likelihood of confusion, i.e., is the disputed use likely\nto mislead a general consumer into believing that the products and services are\noffered by the brand owner who owns the trademark?<\/li>
  3. Does the use of the trademarked name constitute bad faith or piggybacking\non the brand owner\u2019s established brands and goodwill (i.e., unfair use for\ncommercial gain)? <\/li>
  4. Does the use of the trademark cause harm or damage to the brand?<\/li><\/ol>\n\n\n\n

    If the answer is \u201cyes\u201d to these four questions,\nit may be appropriate for a brand owner to take action. <\/p>\n\n\n\n

    4.\nPersonalize your C&Ds<\/strong><\/h3>\n\n\n\n

    If a potential infringement is\nidentified, but bad faith cannot be definitively established, it may be best to\ncontact the concerned parties using a personalized C&D. This should\ninclude:<\/p>\n\n\n\n