Same product, different name: Should you harmonise your trademark portfolio?
This article is based on a blog originally created for the Chartered Institute of Trademark Attorneys (CITMA) in February 2022.
Businesses that are managing different brand names for the same products in different jurisdictions could save time and money by harmonising their trademark portfolio, says Luke Portnow.
Today, most companies prefer to use the same brand name for their products worldwide, but the extent to which trademarks vary around the world can still come as a surprise. Many businesses with portfolios of older ‘legacy’ brands are still managing multiple trademarks for the same products due to historic naming and trademark protection strategies, for example. Alternatively, they may be blocked in different markets by pre-existing third-party rights.
Why harmonise your trademarks?
While there are benefits to selecting different brand names to meet the needs of a specific country or language group, harmonising your approach to trademarks globally can bring many other long-term benefits. For example, uniformity in the naming of goods and branding worldwide results in stronger global brand identity and consumer loyalty. Consumers can be assured the goods or services they obtain will be the same quality, whether a business operates via franchising, or more direct overseeing of marketing and manufacturing.
Even where products have previously been traded under different brand names, it is possible to move to a more harmonised approach with a little foresight and planning. High-profile examples of this transition include Cif cleaning product and confectionary Snickers and Starburst. Both were rebranded in the late 1990s and early 2000s to bring the product names in line in most markets worldwide.
- Cif was originally launched in France in the 1960s when local naming policy was the prevailing marketing trend of the day. It was called Cif in France and other European territories, but Jif in the UK, Australia and New Zealand, and in the Netherlands, where it had orange and red (instead of green and white) packaging in honour of the Dutch royal family. Years later, Unilever decided to stop using different trademarks for the same product around the world and sought to align the brands.
- Around the same time, Mars harmonised the branding of its Snickers chocolate bars (previously known as Marathon in the UK and the Republic of Ireland) and Starburst sweets (previously sold as Opal Fruits in the UK and Ireland) in the late 1990s and early 2000s.
Avoiding trademark infringement
Trademark harmonisation is not a must-have or even possible for all big brands, and there are often good reasons for this. Even where a brand has used a trademark for years in one market, it doesn’t mean that it can automatically continue to use that name when it moves into another. There may already be a product marketed under that name in that territory, for example.
Rather than launch a brand with a potentially conflicting trademark (i.e. one that risks an action for trademark infringement), it may be easier and lower risk to simply start afresh. In other words, by launching with a very different trademark, while keeping that original and established trademark alive in your original home territory:
- Irish fast fashion chain Penneys is called Primark outside of Ireland because of earlier conflicting trademark rights used and owned elsewhere by the American retailer JCPenney.
- Large US-based discount chain TJ Maxx also changed its name when entering the UK market (to TK Maxx) to avoid confusion with the established British department store chain TJ Hughes.
- Burger King faced trademark issues launching in Australia. Today, it still goes under the trademark Hungry Jack’s.
- Unilever’s deodorant brand Axe is retailed as Lynx in most of Europe, Australasia and China owing to earlier blocking trademark rights.
- Depending on where you live, you might drive a Vauxhall (UK), Opel (Europe) or Holden (Australia) car model.
It goes without saying that it’s important to undertake a trademark and clearance search before extending an existing brand into new markets. For new brands, it would be similarly prudent and very beneficial to run some high-level screenings in other territories of interest. This should reveal if possible future expansion into new country markets under the same trademark could be prevented, owing to earlier registered rights.
The importance of local knowledge
Local knowledge is also a key factor to consider when choosing a brand name. A good example here is Dove chocolate, which is known and sold in the UK and Republic of Ireland by Mars as Galaxy, presumably not to draw to mind the soaps and personal hygiene products sold under that brand name in those territories. Likewise, in Québec, the fast-food chicken brand KFC is called PFK (‘Poulet Frit Kentucky’) to meet local language requirements.
Engaging a local marketing expert, for countries that do not speak your native language, is also recommended, even if just to sanity check that a trademark does not have any negative connotations. For example, the liquor brand ‘Irish Mist’ seemed harmless until it was noted that ‘Mist’ meant ‘Manure’ in German.
Many brand holders also choose to use different trademarks for an easy internal division of markets and corresponding local regulations, if relevant to the goods.
If it ain’t broke, don’t fix it?
Even for big brands and their holding companies that have to (or happily use) multiple trademarks for the same goods in different territories, there are steps that can be taken to harmonise IP protection and achieve the benefits of worldwide consumer recognition. For instance, logos and get-up (trade dress) can be very reliable indicators of quality and origin.
Take for example the packaging of Lay’s crisps/chips. Although the trademarks differ vastly (Walker’s in the UK, Tapuchips in Israel, Chipsy in Brazil, Sabritas in Mexico, etc), they still look the same everywhere. The same applies to Wall’s ice cream, which is called Ola, Frigo or Lusso outside of the UK, yet all have the same uniform spiral heart logo.
For more advice on choosing the right trademark strategy for your business, speak to your Novagraaf attorney or contact us below.
Luke Portnow is a Trademark Attorney at Novagraaf in the UK.