Zaheera Hashim of Procter & Gamble Asia stressed the need to have effective pre-entry plans and post-filing priorities, especially in a region where there are “diverse, complex languages.” For example, she said her company had decided to adapt its PERT haircare brand in different markets as its “pick-up-and-go, bouncy connotations” were lost in some cultures. But as the brand REJOICE, it has become number one in its sector in Greater China, and it has also enjoyed success as REJOY in Japan and WASH & GO in Europe.
Despite the different names used, Hashim said it is important “to make sure the brand position is the same throughout the region.” Betsy Bilus of PepsiCo also had some examples of local branding, such as PEPSI ICE CUCUMBER in Japan. “Japanese consumers are demanding and experimental with different colors and flavors,” she explained. In another “bold” move, she explained that Pepsi had launched a RED drink in China for the Olympics, despite its conventional blue branding.
Bilus said that such promotions can be risky: “It’s important for us as counselors to be involved in these decisions and make sure they don’t go too far.” David H. McDonald of Wyeth added that this meant the role of the in-house counsel involved more than just trademark advice: “So much of what we do is more than that. We have to help the marketing people highlight trademark and broader branding-related issues.”
McDonald emphasized that the different languages and characters in Asia present both opportunities and challenges to trademark owners. For example, trademark offices can be stricter about what is registrable as Wyeth discovered when looking to extend its CENTRUM SILVER brand to the region. Faced with the problem that “silver” could relate to the mineral rather than the color, the company changed the name to CENTRUM SELECT. But, to strengthen the branding, it retained silver in the color used on the pack, as well as in some of the translated wording.
Pepsi had a similar experience when extending its SOBE brand to Vietnam. Bilus said that, although the company was confident it could clear the mark, for commercial reasons it did not want to wait. Instead, it launched the brand as STING and, she said: “It was so successful it became a regional brand. So that had a happy ending.”
Unfortunately, some brands have had less fortunate experiences, particularly where they have not made local-language translations and consumers have come up with their own names. Examples are QUAKER (“Old Man Cereal”), KFC’s slogan Finger Lickin’ Good (“You can eat your fingers off”) and Pepsi’s COME ALIVE (“Pepsi will raise your ancestors from the dead”). Pepsi has also run into conflicts due to the resemblance between its globe logo and the yin and yang device that is popular in Asia. “That is simply something that we have to live with,” said Bilus. “We’re not going to win all oppositions. So we have to be more selective than we would like.”
Problems such as this reiterate the need for holistic protection, making use of rights such as designs and even U.S. registered copyrights, as well as different types of trademarks. McDonald said it is important to consider the differences between upper- and lower-case versions of trademarks, or the same mark in different colors, as Asian consumers might not regard them as the same. “The potential impact in China can be significant,” he explained. “We have had that problem. As a result, we over-file in China,” added Bilus, while Lee said that in Korea marks may be cancelled if they are not used exactly as filed.
The panelists also discussed some enforcement challenges in the region, including parallel imports and shadow companies. Bilus said Pepsi has had to challenge other companies that had registered marks very similar to its own, but for feminine hygiene products and real estate services, or in company names.
