The protection and enforcement of trade marks is essential to all businesses. A trade mark is a valuable asset, and a trade mark registration will always put its proprietor in a strong position to prevent third party use of their brand.
However, in certain circumstances trade mark owners take a commercial decision to deal with infringing use in a creative way, in order to market their own products and services and strengthen the value of their brand.
The most recent example of this can be seen in a KFC campaign highlighting the many KFC imitators present on UK high streets, using them to seek to cement the fact that KFC is the original and best product on the market.
Rather than sending cease and desist letters seeking to enforce their IP, KFC has instead turned potential trade mark infringement to their advantage using the quirky phrase “Guys, We’re Flattered” but sending the clear message that, in their view, their product and service offering is superior to that of the imitators.
This strengthens the KFC brand and distinguishes its goods and services further in the marketplace. The buzz generated by the campaign will drive sales and reinforce the value and goodwill of the KFC brand.
This kind of creative approach, linking IP to marketing, has become more prevalent in recent years as large brand owners are constantly seeking innovative ways to market their goods and services.
Another high profile example was the Netflix cease and desist letter sent in 2017 relating to an unauthorised Stranger Things themed bar.
Netflix sought to address the infringing use of its IP but the cease and desist letter written by its in house IP lawyer went viral due its non-threatening, amicable, and humorous tone:
“I don’t want you to think I’m a total wastoid, and I love how much you guys love the show. (Just wait until you see Season 2!) But unless I’m living in the Upside Down, I don’t think we did a deal with you for this pop-up,”
“You’re obviously creative types, so I’m sure you can appreciate that it’s important to us to have a say in how our fans encounter the worlds we build.”
“We’re not going to go full Dr. Brenner on you, but we ask that you please (1) not extend the pop-up beyond its 6 week run ending in September, and (2) reach out to us for permission if you plan to do something like this again.”
Another innovative method of marketing was Burger King’s response to McDonald’s’ loss of its EU trade mark registration for BIG MAC. Burger King’s Swedish branches offered customers a range of “Like a Big Mac but…” options such as “The like a Big Mac but actually big”. Burger King reacted to McDonald’s’ loss of IP and associated bad press and turned it to their advantage via a creative marketing exercise.
However, despite the success of these clever marketing exercises, the consideration of the legal issues around such activity should not be disregarded. If you are thinking of adopting similar creative approaches to marketing then you should always take the advice of a Chartered Trade Mark Attorney before seeking to create similar strategies or campaigns. In all of these examples it is clear that the legal implications of each course of action would have been considered in detail in advance of any activity.
KFC have no doubt taken a commercial decision to drive sales via the marketing campaign rather than attack the imitators directly. However, given the prevalence of the imitators, there is a potential argument that consumers are acutely aware that they are not KFC and therefore no confusion would occur. Confusion is an essential requirement of proving trade mark infringement and it is likely that this, and other issues, would have been discussed with IP specialists prior to the campaign.
There is also little doubt that before Burger King launched their campaign a full consideration of the legal risk would have been undertaken. It is potentially arguable that the use of BIG MAC by Burger King in the manner described would not lead to consumer confusion, as the consumer would immediately acknowledge that Burger King was not selling McDonald’s goods, but there would also have been considerations concerning a possible claim from McDonald’s based upon the reputation of the BIG MAC mark on the basis that Burger King was freeriding on, or causing damage to, that reputation, as well as any unfair competition action available to McDonald’s in Sweden.
Finally, despite the tone of the Netflix cease and desist letter, a definitive legal requirement to cease and desist was still included, and consequently the goal of addressing the infringing use was achieved along with the benefit of positive press coverage.
If you do not consider the IP issues and risk associated with such marketing activity then your creative intentions could fall foul of the law and lead to a letter from a competitor with a more aggressive tone than the Netflix letter.
Any marketing strategy of this nature should therefore always be approached with caution and the choice of language and activity should be undertaken only once a thorough review of your intentions has been discussed with a Chartered Trade Mark Attorney.