From the smallest brands to the industry giants: no one is immune to mistakes in intellectual property. “Intellectual property aims to protect intangible assets,” summarizes Anca Draganescu-Pinawin, intellectual property advisor at Novagraaf. Companies have every interest in educating themselves and thinking about the right procedures to protect the brand and its products.
“When you launch your business, you have to think directly about this budget,” insists Anca Draganescu-Pinawin. She recognizes that it is impossible to do everything: procedures and registrations have a cost. “You cannot protect an idea” recalls the expert. We must therefore target intelligently. Patents are more the prerogative of engineers, while trademark protection can relate to the name or even the logo. To summarize, there are different records:
Mistake number 1: too late
You have a great idea for the name of the company. You will see a graphic designer who suggests a logo for you, and you start to make yourself known. You will then see advisers, for example those cited on the Federal Institute of Intellectual Property (IPI). Unfortunately, it may already be too late. “Customers are sometimes surprised and annoyed, and I break their joy. They come to me with a great brand but it is not registrable, ”says Anca Draganescu-Pinawin.
There are many examples in the industry. In November 2020, the business of Formula 1 driver Lewis Hamilton was dismissed by the European Intellectual Property Office (EUIPO). He asked that the watch brand Hamilton International Inc. could no longer sell timepieces. The court ruling ruled that the Swatch Group, which bought the company in 1974, has every right to sell watches under that name. The fact that the mark is “Hamilton” and not “Lewis Hamilton” does not lead to unfair competition. In addition, the watch brand has been marketing and defending its products for a long time, before the birth of the British pilot. Finally, an important parameter in the registration of trademarks is that it is necessary to specify the sector in which it operates. The laws and rules in place aim to avoid confusion and the fact that some take advantage of the notoriety of others.
Brands with large resources demand changes directly from the companies involved. This is the case of Instagram – which is owned by Facebook – which asked the founder of the Littergram app to change the name of the company. Later, the social network’s lawyers agreed to keep the app’s name, but gave themselves the right to act in the future. Still, he was not sure that their complaint would succeed.
As in the case of the Hamilton brand, many protests or threats end without real consequences. “The big brands have a policy of careful and systematic monitoring” confirms Pascal Weibel. They try to prevent competitors from wearing overly similar names, products or slogans.
Mistake number 2: too descriptive
Apple sells computers and phones, not apples. “The terms should not be descriptive,” explains Anca Draganescu-Pinawin. The rules allow a company to take the name of an everyday object if it is in a sufficiently different sector. “The idea is that we cannot appropriate a term in the public domain in relation to the sector concerned,” explains Pascal Weibel, responsible for examining patents at the Swiss Federal Institute of Intellectual Property.
The purely descriptive is to be avoided. In some rare cases, the name of the product enters everyday language and loses its distinctive brand character. For example, brands like “walkman” or “frigidaire” are now part of the common vocabulary, following their intensive use as a generic term adds Pascal Weibel. An article describes the evolution of the term walkman, and how it lost its protection in Austria.
Sony protected the name of the PlayStation under the name PS. Fun fact: The electronics giant waited until the year 2000, six years after the first PlayStation was released, to protect its name.
Mistake number 3: too stingy
Protecting a brand is expensive. We must regularly renew registrations or even think about extending intellectual property in the different markets by getting started. In the long run, however, this protection helps prevent other companies from making money on the success of others. “There is a lot of surveillance work. You also have to know how to attack when necessary, ”insists the head of the online trademark protection service. She refers to recordings “in bad faith”.
The practice is scarce in Europe, and remains difficult to prove. It consists of registering a trademark only for the purpose of owning it and being able to resell the rights to a company that actually intends to use it. This could for example be an entrepreneur trying to reserve the “PlayStation 8” sign before Sony. The various companies have become accustomed to these practices, and those who have the means are trying to arm themselves as much as possible in the area of intellectual property. “Sony does not necessarily need to register each variant of the sign” PlayStation “one by one, but protects itself more effectively”, explains Pascal Weibel.
Registration is done on a territory. Often, companies act at the national level, where they are located. As they develop in other countries, they must think about increasing their intellectual property protections. They will be able to do so if the name is not already in use. This is why you have to think carefully about your product and communication strategy upstream. All the more so since the issue of networks is added to that of intellectual property alone. “If you take the name of one of the giants of the web and buy the .ch domain, you run the risk of disappointment. The key is to check beforehand, ”notes the Institute’s intellectual property expert.
For names on social networks, each has a charter. Names which lead to confusion with a known brand are prohibited. On the other hand, if it is a name or pseudonym that does not lead to confusion, the company will have to come up with another idea. The Chipotle restaurant chain in the United States, for example, had to settle for @ChipotleTweets since @Chipotle was already taken. This is what prompted accounts to acquire an additional suffix to dissociate themselves from names already taken. One of the common practices on networks is to add the word “official” and have the account verified.