There is no “bad cop” in a marketer & lawyer tandem.

Larisa Lysenko, an IP partner at ВКМР LEGAL, told how to protect a successful product from unscrupulous competitors and why a well-thought-out protection and promotion strategy could reduce the risk that a valuable asset might be illegally replicated or completely lost.

Any successful product is always in the crosshairs of an unscrupulous competitor. A well-thought-out protection and promotion strategy can reduce the risk that a valuable asset may be illegally replicated or completely lost.

As a lawyer practicing in IP protection for more than 20 years, when I receive another request from a client involving infringement on their rights, I wonder why today’s businessmen, who are well versed in IP protection mechanisms and have knowledge and practical experience in protecting their assets, are often unable to protect their businesses from gross encroachments by unscrupulous competitors?

The key to successful business is, first of all, experienced professionals who are able to assess and measure potential risks well in advance and promptly respond to the emergence of unforeseen ones.

In a marketer & lawyer tandem, the lawyer is often perceived as a “bad cop” who inhibits flight of imagination and forbids the marketer from taking risks.

The lawyer knows that this risk is not always justified and the use of a similar name by a competitor on its product will predictably cause the marketer’s dissatisfaction and give rise to a request seeking the legal team’s decisive steps to protect a successful idea stolen by the competitor. A lack of appropriate tools in the lawyer’s toolkit is not an argument for the marketer.

How to keep balance of interests and protect business from losses?

The name of the product as such, colour or font of its name, shape of the product or its packaging or individual genuine pictorial elements can contribute to the product’s success. However, typically success lies in unusual combinations of elements.

This can be exemplified by the packaging of Almette soft cheese produced by Hochland or the shape of unusual “barrels” or cosmetics produced by 21st Century Cosmetics featuring goat's milk: the shape of brown “vessels” resembles clay milk jars.

Marketers would lobby for a simple and concise name understandable for any consumer. For instance, such notions as “home-made bone broth”, “oven chips”, “a la grandmother's” can grab consumers’ attention. More complicated are scenarios where a product has an incomprehensible fanciful name that does not evoke any specific associations with the product.

Is a unique original fanciful name always a risk-free path?

There have been many precedents when the original name of a product turned into its name and the producing company lost its exclusivity. For example, medicines (Aspirin), moving staircase (escalator), packaging material featuring special properties (cellophane), type of household heat-insulating vessel (thermos flask), ointment (Vaseline), heating device (primus heater), sound reproduction devices (gramophone, tape recorder), flooring (linoleum), artificial fibre (nylon), writing pencil (felt pen), sports shoes (keds), cold treat (ice lolly, Eskimo), or SUV (jeep).

It is impossible to predict the future super-success of a name that can lead to the loss of exclusive rights. However, a strategy chosen correctly for promoting a product can at least significantly reduce risks of potential loss if not prevent it totally.

When Pampers, the manufacturer of waterproof baby diapers, approached the Russian market for the first time, its product was a novelty and consumers perceived its trade name as the name of the product itself. Pampers became the name for any waterproof panties that subsequently reached store shelves and customers might easily ask the seller about “Huggies pampers”. Xerox branded copiers, new gen office equipment, quickly enough settled in the minds of consumers as the name of the product itself and consumers started to call it ‘xerox’.

A timely and competent response to the situation allowed the copyright holders to retain their exclusive rights. Otherwise, both would have ended up in the list of companies that had lost their assets.

The world is rapidly changing and unusual names of new products quickly lose their individualizing function, giving businesses no chance to register exclusive rights to them.

For instance, attempts to register foreign words meaning certain types of products such as “nuggets”, “crisps” or “cupcakes” as trademarks have failed.

If the original name is also exposed to risks, wouldn't it be more logical to come up with a name that is quite original, on the one hand, and consonant with the word that conveys a message, on the other hand?

This can be exemplified by Magne B6. This name is understandable to the average consumer and is associated with a biological food supplement that helps replenish the deficiency of magnesium and vitamin B6 in the body.

Marketing experts are happy. What would lawyers say?

The consonant association and visual similarity of the fanciful word with the word “magnesium”, a lexical unit of the Russian language, makes this product name vulnerable to unfair competition where the use of the words “magnesium” and “vitamin B6” on the packages of similar products would be lawful and it would be impossible to prohibit the use of such names.

It turns out that it is impossible to protect yourself from bad faith actions of unscrupulous competitors, isn’t it? Is there a ready-made recipe that can secure 100% protection?

There are no ready-made win-win recipes; however, the involvement of experienced professionals, application of an integrated approach to registering rights and taking subsequent robust steps to identify and combat infringements allow protecting from the actions of unscrupulous competitors at an adequate quality level while retaining exclusive rights to proprietary assets.

Larisa Lysenko, an IP partner at ВКМР LEGAL, told how to protect a successful product from unscrupulous competitors and why a well-thought-out protection and promotion strategy could reduce the risk that a valuable asset might be illegally replicated or completely lost.