Using Investigators for Brand Strategy
Read too: Corporate Spies & IP InvestigatorsEffective Use of Investigators for Brand Strategy
Graham Robinson, Managing Director of Farncombe International Ltd, a company that specializes in IP investigative work and acts for major law firms and brand owners, offers advice on the use of investigators to assist brand strategy. Graham is a former IP litigation solicitor.
Many brand owners do not appreciate the scope of assistance that investigators can provide to help exploit their intellectual property, writes Graham Robinson.
Brand owners can obtain valuable help from investigators at all stages of the brand creation process, from brand conception through development, launch and enforcement.
At the development stage prudent brand owners will take legal advice to ensure that the chosen name is available and will not infringe any existing rights. That process involves at least two phases of research. First, common law searches will identify pre-existing, non-registered rights. Secondly, searches of registered trade marks will identify existing marks that might prevent use of the new brand.
Investigators can help with both phases of research. The best investigative firms have access to a wide range of online and offline research tools to identify use of relevant marks globally. Investigators are also expert at conducting “in-use” trade mark investigations to determine the nature and extent of use of third party registered marks and whether they are subject to revocation.
Searches may identify existing trade marks, company names or domain names that would prevent use of a chosen brand. A brand owner has two choices – adopt an alternative name or acquire the third party owned names. Investigators are well placed to assist with any acquisitions.
Inflated Prices
If a brand owner tried to buy an IP asset directly the price might be inflated if, for example, the brand owner was a high profile company. If the approach comes from an anonymous intermediary, a lower price can often be negotiated.
These steps should be taken before a brand is launched. A premature launch can make any investigative work more difficult. If the brand owner launches a new product name before any pre-existing trade marks or domains are acquired, it will be harder for those assets to be acquired at a reasonable price.
The brand name Aviva was first created following the merger of CGNU and Norwich Union in May 2000. The group traded as CGNU until its re-branding to Aviva in July 2002. Prior to the group adopting the name Aviva it embarked upon an extensive global research project to clear the name for use - particularly in relation to the financial services industry. It also embarked upon an extensive programme to acquire identical and similar trade marks, domain names and company names. These efforts ensured that the launch of the new brand was a success.
Following launch, investigators help protect brands throughout their commercial life; several examples are below. Canny brand owners appreciate that a damaged brand runs the risk of being irreparable.
Investigators are commonly engaged to assist with the following tasks:
-
Proactive trade mark use enquiries – prior to the launch of a new brand to determine the nature and extent of the use of third party registered rights.
-
Common law searches – again prior to the launch of a new brand to identify the use of any unregistered rights in territories of concern
-
Anonymous acquisitions – to acquire contentious or problematic IP assets such as trade marks and domain names in order to secure or protect a brand
-
Reactive trade mark use enquires – in relation to brand protection, to determine the use of a trade mark applied for or registered by a third party that conflicts with a brand owner’s existing rights
-
Corporate activity investigations – to determine the nature and scope of activities of a target company, for example one with a problematic corporate title or suspected of using a particular brand
-
Individual activity investigations – similar to the above but in relation to individuals who are suspected of potentially infringing activities
-
Test purchasing – the acquisition of goods believed to infringe a brand owner’s rights to obtain evidence of that infringement
-
Anti-counterfeiting and grey market enquiries – to obtain evidence in relation to the illicit trade in branded goods.
Graham Robinson is the Managing Director of Farncombe International Ltd, a company that specializes in IP investigative work and acts for major law firms and brand owners. The company undertakes assignments around the world. Graham is a former IP litigation solicitor.
To Submit Content For Inclusion, Contact:
