The session was moderated by Sven Klos of Klos Morel Vos & Schaap, who noted the relevance of the topic at hand to the city of Berlin’s history, which is forever tied to the “archetypal border,” the Berlin Wall.
Panelists included in-house IP counsel Anamaria Cashman of Playboy Enterprises and Jennifer Powers of Red Bull, as well as Paul Rawlinson, head of IP at Baker & McKenzie.
Rawlinson kicked the session off by reading from Monday’s edition of the INTA Daily News, which quotes INTA President Rhonda Steele addressing the importance of adapting to the demands of a global marketplace during Sunday’s opening ceremony.
Rawlinson pointed to marks like MCDONALD’S, LIPTON and STARBUCKS to illustrate brands that have been accepted into the fabric of society across many different cultures. But achieving such recognition requires anticipating all of the obstacles, said Rawlinson.
One major obstacle to building a global brand involves navigating the various complexities linked to registering a mark in other languages. Rawlinson used the examples of Russia and China, which are especially problematic jurisdictions for Western trademark owners, since they use non-Roman alphabets and have distinct cultural approaches to IP protection. “Don’t assume that what works at home will work in these countries,” said Rawlinson.
Rawlinson provided examples of global branding pitfalls in these and other countries, including a Russian registration for OBSERIN, which translates to the name for an unpleasant bodily function.
Rawlinson said: “The key thing to remember is that you’ll be better brand managers and lawyers if you have an awareness of the idiosyncratic nature of brands in other cultures. Don’t assume anything and you can maximize the potential for your brand.”
Ana Cashman of Playboy Enterprises, which today sells products in 130 countries, recounted the company’s struggle to obtain trademark rights in China, where the translation of PLAYBOY carries negative connotations of deception and dishonesty. Although the mark was initially rejected by the trademark office on moral grounds, Playboy eventually obtained rights by educating government officials about their intentions and working actively with local counsel. Cashman said that “it’s absolutely critical to invest in skilled local partners” when registering or enforcing a brand in another country.
“As trademark lawyers, it’s incumbent upon us to step outside our boundaries and provide effective advice to clients, so that when you obtain a trademark registration you’re actually able to enforce it,” said Cashman.
Jennifer Powers of Red Bull, which has a brand presence in 146 countries, added that tools such as keeping internal databases, identifying the core, important and peripheral countries in which you want to register the mark and conducting annual market surveys are all essential tools for maintaining a global brand.
