LAW: Brand Protection

John Plummer

The retailer had adapted the charity's slogan 'A dog is for life, not just for Christmas' to suggest its Rampant Rabbit vibrator would provide pleasure long after the festive spirit had sagged.

It was not the most original line. "Every Christmas we fire out 30 or 40 letters to companies who use the slogan," says Adrian Burder, marketing executive at Dogs Trust. Nor was it Ann Summers' to use. Invented by the charity's chief executive Clarissa Baldwin in 1978, the slogan was first registered as a trademark in 1995 and again in 1996 and 2001.

It prohibits others from using the slogan to sell veterinary services or paper goods such as calendars, or to run fundraising campaigns. "It's a great slogan for dog welfare, but the more other people use it, the more our message is weakened," says Burder.

Mindful of appearing prudish, the trust allowed Ann Summers to finish its campaign in return for it agreeing to promote the charity to its online supporters, which probably led to a seasonal upsurge in interest from dildo-buying dog lovers.

'A dog is for life' is an example of how a catchy marketing phrase can "acquire distinctiveness", enabling the owner to trademark it. To prove a slogan has acquired distinctiveness a charity has to demonstrate it is indelibly linked to them.

"Our legal team had to provide a lot of documents proving it was our slogan, that we used it and had spent a hell of a lot of money promoting it," says Burder.

Burder says the charity only goes to court to protect the slogan as a last resort. "If another animal welfare organisation uses it, good luck to them, but when you have people using it to say 'a no claims bonus is for life' or 'God is for life' that's a different matter," he says.

"Some companies and ad agencies use it and frankly, I would expect them to be a bit more original. If our agency just ripped off other people I'd be disappointed."

TOP TIPS FOR COPYRIGHT

- If you trade, registering your name at Companies House is not enough to protect it. Get a trademark at the UK Patent Office

- Beware of TM. The initials denote an unregistered trademark, which offers no protection above the common law

- Act fast. If someone steals your name, the longer you leave it the more difficult it could be to prove your intellectual property rights have been infringed

- If you have a cause-related marketing partner liaise with them to discuss who takes responsibility for registering campaign names

- Think beyond your charity's name: you can trademark campaign names, logos, domain names, jingles and even smells.

The Dog Trust's recent run-in with retailer Ann Summers over the use of its slogan has again highlighted the need for charities to protect their identity, says John Plummer

Not many people take on troupes of near seven-foot tall American wrestlers and live to tell the tale. But in 2001, in one of the voluntary sector's most celebrated legal cases, environmental charity WWF put such a tight squeeze on the World Wrestling Federation in the High Court that it forced it to change its identity.

The case centred on an agreement signed by the two parties in 1994 that limited the ways in which Vince McMahon's sports entertainment network could use the initials. McMahon's business - now known as WWE - was found to be in breach of contract and ordered to pay yet-to-be determined costs.

WWF succeeded largely because it had taken legal precautions. Yet many voluntary organisations are less vigilant, doing little to prevent other people seizing on an identity they have worked hard to promote - even though a charity's name is widely regarded as its most valuable asset.

Dominic Farnsworth, a partner in the intellectual property team at lawyers Lewis Silkin, claims charities think less about brand protection than companies because it is less ingrained in their thinking. "It is part of the commercial psyche to protect the brand," he says. "Many people in charities have come from non-executive backgrounds and are less aware of it."

Joe Saxton, co-founder of not-for-profit think tank nfpSynergy, goes further. "For many in the charitable sector, the term brand is offensive and trivialising, even distasteful," he wrote in the 2002 report Polishing the Diamond. The report accuses even such charitable behemoths as Oxfam, Save the Children and the RSPCA of "missed opportunities" by not having a strapline on their logo outlining either their mission or values.

If brand values aren't fully appreciated it's not surprising that brand protection gets overlooked. Saxton describes the voluntary sector's approach to guarding its intellectual property as sloppy. But charities that fail in this area could be guilty of far worse, according to Robert Porter, head of charities group at lawyers Harbottle & Lewis.

"If trustees fail to protect their brand they could be in breach of trust for not protecting their assets," he says. "A charity's name is its badge of integrity and probity that tells people whether or not they will spend money wisely."

Bound by duty

For the WWF, not taking legal action could have had implications beyond lost merchandising or missing out on internet domain names. Had it allowed the WWE - the organisation that delivered the likes of The Rock and Stone Cold Steve Austin - to carry on flaunting the terms of the agreement, the charity's international office in Switzerland could have been accused of neglecting its duty to member states. "It could have been argued that it wasn't taking its brand seriously," says Porter.

Brand protection became a significant issue for the voluntary sector in 1994 when the Trademark Act allowed charities to register their names and services with the UK Patent Office. But in recent years, the stakes have got higher.

An increasing number of charities that trade now need to protect their products so, for example, chancers can't start marketing fruit cake under the National Trust brand.

The rise of cause-related marketing, in which charities endorse products in return for royalties or a fee, has added to the trend. It probably wouldn't go down well at Shredded Wheat manufacturer Nestle if the British Heart Foundation, its cause-related marketing partner, hadn't registered its name, and another breakfast cereal manufacturer had used it to claim that the charity endorsed its product.

"Companies are more sophisticated about what they expect from charity partners," says Porter. "They expect brands to be properly policed and protected."

Charities are also more wary of threats from within the sector. "In an increasingly crowded market it's important that charities differentiate themselves and know their message and core values. Once they have done this they can encapsulate them in their brands," says Porter.

The most common way charities protect themselves is through trademarks - a symbol or sign that distinguishes a product or service. When you register a name you have an identity in the market and once you have an identity, you can build a case showing that reputation and goodwill are invested in it. If someone treads on your toes, there is a better chance of proving your intellectual property rights have been infringed than if the name had not been registered.

There are two kinds of trademark: registered and unregistered. An (R) denotes a registered trademark and the initials TM denote an unregistered trademark.

Only registered trademarks afford protection above common law, a fact that is often overlooked. "The joke is that the initials TM stand for 'totally meaningless'," says Dr Jeremy Philpott, marketing executive at the Patent Office.

"You can stick TM on anything as a means of scaring off a competitor.

But an unregistered trademark has no significance under the Trademark Act."

Charities wishing to defend an unregistered trademark through court, a process known as 'passing off', have to prove that people assume the name is identified with them and that by copying it the other party is causing confusion.

"An unregistered trademark leaves you open to so much more hassle," says Philpott. "If you register a trademark you have a certificate saying who you are, what your rights are, and your rights to an injunction against anyone trading under a similar name, selling similar goods."

A single trademark doesn't provide universal protection: the Patent Office has 45 classes of services and goods covering everything from scented candles to funeral services. You specify which categories you want to trademark and pay accordingly.

It costs £200 to register a trademark in one class and £50 for each subsequent class. The certificate lasts for 10 years and the holder has the opportunity, ad infinitum, of renewal. You can cover all 45 classes, but have to prove that you are active in each one. Charities might opt to register their name in class 16, which covers paper goods such as calendars, and class 36, which includes fundraising.

The more distinct a name, the likelier the Patent Office is to accept it as a trademark. The chances are that a charity called 'Animals' would not be given sole rights to such a generic word.

Intellectual property protection extends beyond charity names. Campaigns, slogans, emblems, jingles and even smells can be registered. But they can be trickier. For example, it could be argued that pink ribbons and red ribbons have become more synonymous with causes (breast cancer and HIV) than particular charities, preventing them from being trademarked.

It's also difficult to register a campaign name until it becomes a success.

Nike's 'Just Do It' began life as just another marketing slogan, but as it entered people's consciousness, it was said to "acquire distinctiveness", allowing Nike to prevent others from using it. "Charities may start a campaign with something undistinctive, but if it acquires distinction they may consider marking it," says Philpott.

Copyright is an automatic right that doesn't involve registration. Another point worth remembering is that being registered at Companies House as a business doesn't protect your name - you still need a registered trademark certificate from the Patent Office.

Globalisation and the internet have made brand protection even more critical.

Charities can now buy trademarks that cover the entire European Community.

They can look even further afield by trademarking their name with the 60 countries worldwide that have signed the Madrid Protocol, an international trademark agreement policed by the World Intellectual Property Organisation.

Internet issues

"If you are looking at protecting your name in more than three or four countries, it is generally more cost-effective to look for an international option," says Philpott.

As the United Nations agency dealing with international intellectual property issues, WIPO also settles internet name disputes. Charities register domain names ending in .co.uk with Nominet UK (nic.uk) and domain names ending in .com with Icann (icann.org). But name disputes, or issues such as cybersquatting - when someone registers a name they don't intend to use but refuse to give up without a fee - are referred to WIPO.

"The internet gives brands more worldwide significance," says Stephen Lloyd, head of the charities and social enterprise department at lawyers Bates, Wells & Braithwaite.

Charities can hire trademark agents to do their groundwork. Those that travel alone in cyberspace continue to be tripped up by the first hurdle.

"Rule number one is check the name is available," says Lloyd. "I have clients that employ expensive design consultants but don't check the domain name hasn't been taken."

Lloyd says his intellectual property workload has "developed significantly" over the past decade. There are few signs of that trend changing.

CASE STUDY - DOGS TRUST

When Dogs Trust got involved in a trademark spat with sex toy retailer Ann Summers in November, the media yelped with delight. But for the dog welfare charity it was an all too familiar tale.

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