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Jean-Yves Gilg

Editor, Solicitors Journal

Protecting brands 'in the 'age of you'

Protecting brands 'in the 'age of you'


Phil Sherrell, Hilary Atherton, and Daisy Dier advise on how brands can safeguard their IP rights and brand image while meeting customer demand for personalised goods

The brand consultancy Interbrand has observed that we are in the 'age of you' - an age of personalisation of products and experiences and an age where the consumer is at the centre, controlling
their own 'brand'. In other words, it is an age of seven billion individual human brands. But how, in this age
of personalisation, can brands control and protect their intellectual property (IP)
rights and brand image?

The personalisation of
tech products is relatively straightforward as, by their
very nature, they facilitate customised experiences: navigation software that predicts your destination;
video streaming services that recommend titles; smartphones which allow you to choose
your apps and the order in
which they appear. This level
of configurability creates, at least in the mind of the consumer,
the impression that tech brands personalise their offerings and adapt to their customers' needs.

The challenge for brands that produce tangible goods is to make the same impression on users so that they can compete in the 'age of you'. The consistent number one, Coca-Cola, lost its top spot on Interbrand's most valuable brand list in 2013, and now ranks behind tech giants Apple and Google.

Recently, and indeed not so recently (Louis Vuitton has been creating personalised luxury luggage since the 19th century), traditional producers of tangible goods have provided for
and actively encouraged
the personalisation of their
goods. Personalisation in the market comes in two distinct forms, and it is important to recognise which is at play
when considering the potential impacts of the personalisation on IP rights.

The first form comes
where a consumer is allowed
to personalise an item in a way that does not interfere with
the overall appearance of the product or the trade mark, for example allowing the consumer to add their initials or choose colours from a restricted
colour palette. This form of personalisation is popular in
the luxury leather accessories and sport shoe market (see,
for example, the Nike ID programme).

One might describe this as 'dual branding', allowing the consumer to mark their own brand (being their name or initials) alongside another
brand. This brand association can then be shared on social media outlets to communicate the association, to the mutual benefits of brand and consumer.

As the design and trade mark are not altered in this form of personalisation, there is little concern for the protection of
IP rights. However, companies should be alert to the risk
that a consumer (knowingly or unknowingly) could create IP rights in a design if they have been given artistic free rein.
To avoid this, it is advisable for companies to include provisions in their terms and conditions that any IP rights created in the design or creation of a product vests in the retailer.

The second form of personalisation, very much in vogue, goes a step further and can have wider implications for IP rights. This is where a brand's trade mark is removed from the product entirely (or at least from its normal place) and is replaced with another name or word.

Coca-Cola is a case in point.
In 2013 it launched its 'Share a Coke' campaign, which was credited with the brand's first rise in sales in over a decade.
The campaign saw the familiar 'Coca-Cola' branding replaced by names or words like 'Sister', 'Dad', and 'Love'.

By removing the brand name and replacing it with names and words in the same font, style, and colours, Coca-Cola has arguably actually increased its recognisability. It could argue that any bottle in its style is now recognisable to consumers as a Coca-Cola product, even when its core brand is absent, and hence IP protection is broader
as a result (at least in the form of unregistered goodwill). But note, of course, that a campaign such as this could have the opposite effect if the brand was not sufficiently well known in the first place.

With both forms of personalisation there are brand protection issues to consider.
A company's brand is often
its most valuable asset and companies should avoid
diluting it by allowing unrestricted personalisation.

There are also good reputational reasons for brands to think carefully when ceding control to the consumer. The Nike ID programme fell foul of this when customers discovered that they were not allowed
to put 'Islam' or 'Muslim' on
their trainers, but could have 'Christian'. Nike quickly rectified the situation when it was
picked up widely by social and mainstream media but some
of the brand-building benefits
of the programme will undoubtedly have been lost.

The personalisation of tangible goods to meet the consumer demand for 'control' and individual products in the 'age of you' is possible with only limited risks - and indeed even potential advantages - to trade mark and other IP rights, but it is important that the overall brand strategy is carefully considered in advance.

Phil Sherrell, pictured, is a partner at Bird & Bird. Hilary Atherton is an associate member of the Institute of Trade Mark Attorneys and an associate at Bird & Bird. Daisy Dier is a trainee solicitor @ITMAuk