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Being smart about global brand development

In an increasingly globalized marketplace, companies need to learn to pick their battles and conserve their resources. That’s the message from yesterday’s panel, The Essentials of Managing a Worldwide Trademark Portfolio Companies.

Companies often instinctively feel the need to secure the maximum level of protection for all of their brands. However, Denise Yee of Visa International says that brand development requires a nuanced approach.

“At Visa, it seems like every client wants to name everything, all the time. And sometimes it makes sense, but a lot of times, for a particular service, it may not need a special name,” Yee explains.

Instead, she says that when discussing with partner companies about a new service, the first question is whether it needs a name at all. Several factors need to be considered, such as the product’s expected shelf life and whether there is will be significant marketing behind it. Other considerations include how many countries the product will be deployed in, whether the targeted audience is aimed at general consumers or other financial institutions.

Daniel Zohny of the Fédération Internationale de Football Association (FIFA) also stresses the need for a considered approach to brand protection. FIFA has its brands divided into several types, including the FIFA brand itself and the trophy.

There are also the event-related brands, such as logos, slogans and mascots for specific tournaments such as the 2014 FIFA World Cup. In this category, the size of the tournament also helps to determine the brand protection strategy. For example, while marks associated with the World Cup will be registered in many jurisdictions, for a smaller event such as an under-17 tournament, the brand protection will be focused on perhaps just on the host country.

Thomas Zutic of DLA Piper gave the outside counsel’s perspective. He says one of his main objectives to obtain strong protection for his client’s core trademarks.

“Many times, there will be tons of sub-brands, so you really got to make sure that you understand what is the core brand, what are the core marks and make sure that you are putting the appropriate resources behind that and not for something that’s just a one-time thing for three months,” he says.

In the end, building a brand is about careful weighing of a mark’s value. Even the Visa brand, judged by some to be the ninth most valuable in the world, does not indiscriminately register for the sake of getting a mark.

“We put a lot of thought into what we file, if we file at all.” Yee explains.

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