I recently attended a colleague’s wedding, which, despite my inherent detestation of attending weddings, I found quite delightful. I was particularly touched by the lovely speech given by the bride’s father. Speaking from experience, the man had this to say to his new son-in-law, “a man who gives in when he is in the wrong is a wise man; a man who gives in when he is in the right is married.” True enough, we like to get our own way, especially if it is within our rights to do so. Many companies do this too, they zealously guard their rights and their possessions from being infringed or appropriated by others. But sometimes, a company’s troll-like possessiveness and over-the-top aggressiveness in pursuing the infringer may put the company in a bad light and ultimately its actions may affect the image of the company and the goodwill of its brand.
Before I go any further, I would like to make one thing clear. I do not harbour any proletariat sentiments of common ownership. Quite the contrary, I verily believe that companies should enforce their rights against any infringing parties. Nevertheless, companies should do so carefully and their actions should be proportionate to the severity of the infringement.
“Do not use a cannon to kill a mosquito” is a saying allegedly attributed to Confucius which basically means “don’t overkill”. Ironically, the “nine familial exterminations”, the most severe capital punishment in Ancient China, where the family of the criminal will be executed to the 9th degree of relations is said to have stemmed from the Confucius principle that one shames the whole family. Recently, LVMH, the owner of Louis Vuitton, incurred the wrath and ridicule of angry netizens for demanding a HK$25,000 (RM10,000) compensation from a hair salon owner in Hong Kong for using an adjustable stool and a reclining shampoo chair which were covered in a fabric that closely resembles LV’s iconic chequered pattern hence infringing LV’s trademark. The general sentiment of the netizens was that the compensation requested by LV amounted to “overkill” in a situation where LV could have simply requested the owner of the hair saloon to remove the offending article or to hand them over.
“Never kick a dog because he’s just a pup” sang Gavroche in Les Misérables. In two separate incidents a while back, a pub in England and a pizza takeaway in Carnoustie, Angus, were told by KFC to remove the words “family feast” from their menus. KFC insisted that the company had registered the wording as a trademark, and the use of “FAMILY FEAST” amounted to trademark infringement. Eventually, KFC backed down on both occasions amidst calls of boycotts by various angry members of the public, but not before the news of their “bullying” antics was picked up by the press and blown out of proportion. Closer to home, the drawn out legal battle between fast-food juggernaut McDonald’s and local mamak restaurant McCurry over the use of the prefix “Mc” (one which McDonald’s eventually lost) is another example that every dog has its day. In most of these cases, the public will be behind the underdogs, and the trademark owners enforcing their rights will be vilified in the press and the blogosphere as the despotic bully. This is especially the case if the trademark owners are perceived to have overstepped their marks, like the above cases where KFC and McDonald’s tried to claim ownership over words that are common to the English language.
Hell hath no fury like a fan scorned. If you think about it, where would Star Trek be today without its pointy-eared fans in tight pantone-coloured pyjamas? Or Star Wars without its cape-clad Jedi-wannabes? In a time where collective fan reactions can dictate the running of a company, fans can be a company’s greatest assets or its worst enemies, and the last thing you would want to do is to antagonise them. However, this was exactly what Ferrero SpA (manufacturer of Nutella) did. If there were a book titled “How to Lose Fans and Alienate People” it would be written by the lawyers of Ferrero. Since 2007, fans of the hazelnut chocolate spread have celebrated World Nutella Day every year on 5th February. However, fans were sorely disappointed when they were informed that the fan-announced international holiday would not be happening next year. Apparently, Ferrero had issued a cease and desist letter to the creator of Nutella Day requiring her to take down any websites or social media sites in connection with Nutella. Shortly after the news was announced, thousands of angry Nutella fans took to the Facebook page of Nutella Day in a show of force to protest against the closing down of their sites and the termination of their holiday. Finally, unable to deal with the publicity nightmare, Ferrero caved in and the World Nutella Day was saved with next year’s holiday anticipated to go on as usual.
I must reiterate again the purpose of this article. It is not to dissuade companies from taking legal action against another party who is infringing their trademark rights, but to approach the matter with care and delicacy. Companies should make sure that their legal advisors are working together with the PR/marketing team to curtail the possible fallout of their legal action. To illustrate my point, Jack Daniel’s legal team scored major brownie points by sending the “world’s most polite cease and desist letter” to the author of a book where the front cover looked very similar to Jack Daniel’s black and white label. Here are some excerpts from the cease and desist letter, “we are certainly flattered by your affection for the brand, but while we appreciate the pop culture appeal of Jack Daniel’s we also have to be diligent to ensure that Jack Daniel’s trademarks are used correctly“, “As an author you can certainly understand our position and the need to contact you. You may even have run into similar problems with your own intellectual property.” And instead of demanding that the author should cease the sale of the books, they simply requested that the cover design be changed when the book is reprinted. They even offered to contribute to the redesigning of the cover if the author were to decide to change the design sooner. Bless them!
The above examples show that when it comes to IP rights enforcement, there is no one-size-fits-all solution. And most often, like the lyrics of a song by the 80’s pop band Bananarama, “It ain’t what you do, it’s the way that you do it, and that’s what gets results.”
Note: The views expressed in this article are the author’s own, and need not reflect the views of KASS nor of its clients.