Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Sponsored content

Avoid legal risks when pushing the boundaries of brands

Sponsored by


Emma Green of Bird & Bird provides four tips on successfully embracing environmental, social and governance (ESG) values in branding in the UK

Long gone are the days when ESG was a tick box exercise: operating a successful brand in today’s social climate means having a strong ethos, clear principles and even a drive to inspire change.

However, getting the attention of your audience can carry legal risks. Brands need to exercise caution to ensure the headlines they are making are the right ones and to avoid going viral for all the wrong reasons. Four key considerations are:

1. Use of third-party brands carries infringement risk:

Advertising to inspire activism usually means the content needs to be provocative. The temptation to call out big brands on their failures can be significant, especially for growth-stage challenger brands or competitors who think they are doing a better job. However, commercial use of a third-party brand name or logo that is registered as a trademark in relation to the same goods or services is, most likely, still going to be an infringement.

In the absence of registered rights, such use may also be an actionable passing off in the UK. This triggers a significant risk of legal action, in particular injunctive relief to stop such use, regardless of the length of the campaign or how honourable the motivation.

Costs awards for the losing party can be significant, with liability arising for the other side’s costs as a minimum. Take specialised legal advice on any particularly incendiary advertising to avoid campaigns backfiring in unwanted public relations and legal costs.

2. Be mindful of the regulatory environment:

Doing good does not give brands carte blanche on the statements they make. In the UK, the Advertising Standards Agency (ASA) supports the legislative framework and regulates comparative advertising claims and adverts targeted at specific demographics. It also enforces the prohibition on political advertising under the Communications Act 2003.

The ASA has the power to ban adverts and seek amendments to claims, and can even apply pressure to have advertising space revoked and request that search engines discontinue paid-for ads or display a notice when someone searches for the sanctioned brand.

3. Substantiate claims:

Promoting a specific value of your brand can generate consumer interest but those claims need to stand up to scrutiny. Avoid the temptation to exaggerate: do you have evidence to support the claim you want to make, is it sufficiently objective, and is it free from misleading statements?

Particularly topical is the field of sustainability: allegations of greenwashing can quickly undermine the good work a brand is actually doing to improve its ecological credentials, so make sure claims can be supported.

4. Exercise caution with partners:

Working with third parties and influencers can help push a brand message to a new audience. Draw up a clear framework on permitted statements and agree on any topics and messaging which is off limits.

In the current cancel culture climate, a faux pas with one partner can have a significant knock-on impact with other sponsors or clients, so choose collaborations wisely and make sure contracts are in place to document each side’s responsibilities.

more from across site and ros bottom lb

More from across our site

Counsel are eying domestic industry, concurrent PTAB proceedings and heightened scrutiny of cases before institution
Jack Daniel’s has a good chance of winning its dispute over dog toys, but SCOTUS will still want to protect free speech, predict sources
AI users and lawyers discuss why the rulebook for registering AI-generated content may create problems and needs further work
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
A technical effect must still be evident in the original patent filing, the EBoA said in its G2/21 decision today, March 23
Brands should not be deterred from pursuing lookalike producers, and an unfair advantage claim could be the key, say Emma Teichmann and Geoff Steward at Stobbs
Justice Mellor’s highly anticipated ruling surprised SEP owners and reassured implementers that the UK may not be so hostile after all
The England and Wales High Court's judgment comes ahead of a separate hearing concerning one of the patents-in-suit at the EPO
While the rules allow foreign firms to open local offices and offer IP services, a ban on litigation and practising Indian law could mean little will change
A New York federal court heard oral arguments this week in a copyright case pitting publishing giants against a digital library