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HG News: Technology, IP and Outsourcing - Brand Protection - May 2009

The Value of Your Brand

How much is your brand worth?

The fourth annual BrandZ Top 100 Most Valuable Global Brands ranking was published by Millward Brown Optimor on 29 April 2009.

The “world’s largest brand equity study” seeks to put a monetary value on the most important brands in the global market by using economic and market data in combination with research on consumers and business-to-business users.

Millward Brown Optimor is one of the world’s largest research agencies with expertise in brand equity research and its BrandZ Top 100 is considered one of the most comprehensive and authoritative brand valuations available.

The study found that the dollar value of the Top 100 brands in the world is currently at around U$1.95 Trillion (AU$D 2.63 Trillion).

Google was ranked the number one brand with a value of U$100 Billion (AU$D135 Billion), followed by Microsoft (with a monetary value of U$76.2 Billion (AU$D103 Billion)) and Coca-Cola (with a monetary value of U$67.6 Billion (AU$D91.35 Billion)) in second and third places respectively. The full BrandZ Top 100 ranking can be viewed at www.millwardbrown.com.

The study shows that brands can be given a monetary value, which will enable the assessment of a business brand influence and strength in comparison with its competition. The results confirm that a brand is, in many cases, the most valuable asset on a company’s balance sheet.

Strong brands provide business value in many ways, including consumer fidelity, business risk reduction and even staff loyalty (by assisting in retaining talented staff). Investing in and protecting the brand will add value to a business even at a time when global prices of other personal and company assets are falling.

Twitter and Your Brand

There has been significant discussion in relation to the impact of the Internet on trade marks and brand protection, with every “next big thing” posing new challenges to brand owners.

The challenges began with issues such as unauthorised trade mark use in domain names (‘cyber squatting’), and then the use of marketing tools using third parties’ brands to attract customers through the use of ‘adwords’ and ‘metatags’.

The current hot topic is the Twitter network, which is increasingly becoming the new paradigm of social networking in the Internet. Developed from the concept of a simpler and quicker way to be in touch with friends and the world at large, Twitter is quickly becoming an important marketing tool to businesses, as an obvious consequence of its increasing success.

Companies are realising the importance of protecting their brands in the “Twitter world”, to anticipate cyber squatters who, more easily then ever, can use this new social network concept to take advantage of other parties’ trade marks.

While Twitter’s terms of use contain provisions to prevent the violations of law in any jurisdiction, they may be of limited efficacy when it comes to unauthorised use of someone else’s trade mark.

Coca-Cola recently illustrated its might against “Twitter squatters”, when it received a positive reaction to a complaint of trade mark squatting through the Twitter network and successfully persuaded Twitter to trigger its right to terminate accounts which were using Coca-Cola’s brands without its authorisation.

However, it remains to be seen whether the same reaction can be expected in relation to similar issues involving trade marks which do not carry the same weight as the Coca-Cola brand.

Except for Twitter’s own initiative, it is virtually (no pun intended) impossible in a practical sense for an Australian company to prevent third parties anywhere in the world from using its brands to their own benefit.

Anyone can open an account in Twitter and name it in any way they like. The registration process is in practical terms anonymous and free of charge, which makes it very difficult for aggrieved parties to effectively identify Twitter’s account holders and enforce their rights against them.

In the murky waters of brand protection in the Internet, a proactive approach is necessary to protect your brands. This of course should not be limited to seeking registered trade mark protection. It is also strongly recommended that companies which value the integrity of their brands take steps to secure the accounts in Twitter and other such sites using their brands, which may be necessary to obtain brand protection in this increasingly important space. Such steps can help prevent unnecessary damage to your brand.

Brand Protection Under New Generic Top-Level Domain Names

The World Intellectual Property Organisation advocates new dispute resolution procedures for alleged infringement of trade marks under the new Generic Top-Level Domain Names to be released in 2010.

As recent media has reported, the organisation who administers the Internet’s system of unique identifiers, ICANN, (Internet Corporation for Assigned Names and Numbers) is proposing to expand the Internet’s addressing system to a large number of new Generic Top-level Domain Names (gTLDs), which are expected to become available for registration in 2010. This means there will be much greater scope for the creation of domain names outside those with the more common domain names ending in identifiers such as .com, .gov, .org and .net.

In this context, the World Intellectual Property Organisation has been providing advice to ICANN on the protection of legitimate interests of trade mark right holders which will be adversely affected in both the “pre-delegation” (when the application for the gTLD is filed) and “post-delegation” phases (when the new gTLDs are delegated to domain name registrars and offered to the public).

The World Intellectual Property Organisation already administers disputes arising out of current gTLD applications which infringe third parties’ trade mark rights, through its Uniform Domain Name Dispute Resolution Policy (the UDRP).

The UDRP is currently available for disputes concerning an alleged abusive registration of a domain name, and provides an alternative to court proceedings and a quicker and more cost effective way to enforce trade mark rights in the Internet environment.

Importantly, the UDRP’s decisions can be enforced regardless of where the registrar, the domain name holder, or the complainant are located and the choice to use the UDRP does not prevent a party from going to court before or after filing a claim under the UDRP system.

In light of the potential for a significant increase in cases of alleged infringement of trade marks with the introduction of the gTLD program, the World Intellectual Property Organisation is now advocating new pre-delegation and post-delegation dispute resolution procedures.

The pre-delegation dispute resolution procedure

This new independent dispute resolution process is still being developed by WIPO. It is proposed to be a preventive measure through a system of formal objections which can be made during the evaluation of new gTLD applications.

One of the four grounds to file objections will be the Legal Rights Objection, which will allow for parties with existing legal rights (such as trade mark rights) that can be potentially infringed by a new gTLD application to object to the infringing application.  The Legal Rights Objection will be administered by the Arbitration and Mediation Centre of the World Intellectual Property Organisation. The findings of the panel deciding a dispute will bind ICANN and if the panel finds that a new gTLD infringes an objector’s trade mark, the gTLD application will be withdrawn.

The post-delegation dispute resolution procedures

In addition to the pre-delegation DRP, the World Intellectual Property Organisation has strongly advocated a separate dispute resolution procedure of a “curative nature” to administer disputes arising after the delegation of a new gTLD has been granted and to help ensure the ongoing protection of trade mark rights within the new gTLD program framework.

The post-delegation DRP will focus on conduct of domain name registries which “cause or materially contribute to trade mark abuse” and will be built on existing pre-delegation Legal Rights Objection proposed criteria, the World Intellectual Property Organisation’s UDRP jurisprudence and “accepted rules or principles of law”.

The new gTLD registry agreements will bind gTLD registrars to the proposed post-delegation dispute resolution procedure, which will oversee compliance and ensure the security and stability of the Domain Name System.

Proposed remedies under the post-delegation DRP include transfer or cancellation of domain name registrations and termination of contracts with selected registrars which repeatedly abuse third parties’ trade mark rights.

The latest input from the World Intellectual Property Organisation was provided on 13 March 2009 and discussions are ongoing with a view to have a consistent dispute resolution framework running by the time the new gTLD program is operational.

For further information regarding brand protection, please contact HopgoodGanim’s Intellectual Property team.