Opportunities, values and a proportional response: six enforcement tips from award-winning in-house experts
- This week we have been publishing interviews with the WTR Industry Award winners
- New Balance reveals liaison with commercial teams when targeting infringers
- External counsel urged to take a “proportionate view” on enforcement measures
Over the past week, World Trademark Review has been publishing a series of exclusive interviews with this year’s WTR Industry Award winners, presenting exclusive insight into the creation and protection of market-leading brands.
During the course of the interviews, these award-winning in-house counsel have shared best practice tips for establishing and evolving enforcement programmes, creating meaningful relationships with external partners and ascertaining when brand misuse is actually beneficial.
Know who you are acting for
In terms of building an enforcement strategy, the first step is to know what your ultimate aim is and – importantly – on behalf of whom you are acting. In these times of public cynicism towards IP, trademark enforcement is often regarded as a symptom of big companies looking out for themselves, but the reality is that the interest of consumers and brand ‘customers’ are fundamental to decision-making around enforcement. At Amazon.com, for example, Dana Brown Northcott, associate general counsel, intellectual property, explains: “One of our company philosophies is to ‘start with the customer and work backwards’, and that’s how we approach IP as well. We think holistically to be sure we’re considering the customer impact of the decisions we make.” Additionally, customer safety is a critical consideration, with David Lossignol, global head of trademarks at pharmaceuticals giant Sandoz International, noting: “As patients are at the centre of all we do, we ensure that we prioritise actions which are the most impactful for patients.” While enforcement actions are undertaken to protect a company’s intellectual property, it is clearly important to have in mind the ultimate beneficiaries of brand integrity.
Enforcement must serve the wider organisation’s mission
For non-profit Rotary International, which brings together a global network of community leaders, members and causes also figure into the equation. Jomarie B Fredericks, Rotary’s deputy general counsel and chief IP counsel, explains: “We need to be aggressive enough to preserve our rights but we also need to recognise that we are a member association and our primary role is to serve our members… The IP team’s success in enforcing trademark rights is [therefore] driven by a clear focus on our organisation’s mission and the impact of the trademarks. We follow a carefully developed plan, while at the same time remaining nimble as circumstances and priorities change.”
Concentrated enforcement can be more effective than a blanket approach
An evolution of strategies alongside business focuses is reported by many of the counsel we spoke to. For instance, considering New Balance’s approach in China, Angela Shi, manager of brand protection, states: “Rather than simply enforcing upon the largest volumes of counterfeits per raid, we’ve been working with the commercial team in designating geographic locations that we want to ‘own’. In particular, every quarter we select a few key markets that we will enforce exhaustively in an attempt to flush that market of parasite brands. This strategy will allow us move with might inside designated regions as opposed to taking a larger shotgun approach that, in the past, concentrated more strictly on enforcement by sheer volume.”
A targeted approach has also now been adopted by Velcro Companies, with Alexandra DeNeve, senior counsel, trademarks, reporting: “When I started here over two years ago, we were focused on what I call a ‘wading in and start swinging’ approach for lack of a better term – assess what a particular region, country or market looks like for your marks and start enforcing to take down as much as you can. We made a significant difference in certain markets with that approach. We are now starting to focus our budget more on the ‘big swings’ – are there particular persistent infringers on which we should focus a bigger litigation, for instance? Is there a particular region or market that we should laser focus on with a targeted strategy using outside counsel?”
The latter are key partners in enforcement efforts. Importantly, they need to have a nuanced understanding of their client’s objectives in order to be truly successful.
Ensure outside counsel convey your values
While knowledge of the law is, of course, a fundamental perquisite of outside counsel, what sets the best apart from the rest is a truly nuanced understanding of the brand’s philosophy, identify and character. Michael Graham, group director, intellectual property, at Expedia Group explains that his team works closely with outside counsel “to convey our values”, while Linda Heban, vice president and chief trademark counsel at Harley-Davidson, says that enforcement success relies upon “a network of talented legal professionals who understand the business and the business’ challenges and priorities”.
Sandoz International’s Lossignol, adds that it can also prove a strategic advantage: “Having outside counsel who are real business partners is an essential component of a successful enforcement. We have successfully defended or won some litigations in some countries partly thanks to the disconnection between the other party and their outside counsel.”
Superdry senior IP counsel James Sweeting concurs, adding: “We rely on advisors to properly understand the brand and our portfolio of rights, and to think about outcomes and objectives. We always appreciate robust advice on the merits but also a sensible and proportionate view on enforcement measures. Evidence and preparedness are [also] extremely important – especially in copycat cases where we might be relying on a patchwork of rights. We love it when our outside counsel give us very clear guidance on evidential standards and volumes of evidence as this varies hugely from country to country. If we get the right guidance, we normally get the right result.”
Implement a proportional response
As Sweeting suggests, though, proportionate enforcement is important, particularly in an environment that can see cease-and-desists quickly go viral and cause reputational damage. This is something that has had a tangible impact on decision-making, with Lossignol observing: “In terms of evolution, we are thinking twice before any enforcement initiative and we are taking into account more and more the potential bad reputation that an enforcement may lead to in case it is not properly handled and/or is not justified (eg, unnecessary aggressive cease and desist letters).”
Annabelle DanielVarda, Google’s legal director, trademarks, observes that the search giant also takes “a balanced enforcement approach”, focusing efforts specifically on damaging misuses of its brands: “To best leverage our resources and to avoid overreaching enforcement, we focus on the uses that cause confusion or could harm our users”. Similarly, Batur Oktay, director and expert senior counsel, Starbucks, explains: “We have developed a reputation as vigilant enforcers of our brand rights. But we temper our enforcement with soft approaches in most cases. Most infringement can be resolved amicably in our experience, and a soft approach helps.”
Look for opportunities in unauthorised brand use
As well as protecting the company’s IP, a softer approach can sometimes lead to positive coverage for a brand – with a well-known example of this provided by Netflix. A cease-and-desist letter sent by the streaming giant to a pop-up bar in Chicago that used the theme of popular TV show Stranger Things received widespread acclaim for the good-humoured tone the letter adopted, which empathised with the infringer’s love of the brand and cannily used references to the show’s characters when asking them to desist.
For Jeremy Kaufman, senior counsel, intellectual property, Netflix, a key takeaway is that not all brand use by third parties is negative. He concludes: “Not all unauthorised uses of a brand harm a business. Indeed, in this technological age in which consumers can play with, manipulate, and publish brands, I think the vast majority of unauthorised uses are beneficial to brand owners. Brand owners should be delighted to be relevant enough to have consumers playing with their brands. In my view that's free marketing that should be encouraged rather than stamped out. So before reflexively enforcing, consider what is the actual harm that is being caused. For some industries, like pharmaceuticals and airplane parts, the harm is obvious and very serious. But if there isn't a concrete harm, consider moving along and saving your resources.”
The series of award winner profiles and interviews will continue through the coming few days but to date we have featured American Airlines, Apple, Google, Grupo Televisa, Netflix, New Balance, Rotary International, Sandoz International, Starbucks, Superdry, Velcro Companies and Visa, as well Inhouse Counsel of the Year Award winner, Elena M Grimme of Microsoft, and the recipient of the Lifetime Achievement award, J Thomas McCarthy.