Think before you sue: why brands are rethinking trade mark enforcement strategies

Once the purview of rightsholders and their lawyers, trade mark disputes now often play out in the public eye, subjecting the concerned parties to a new level of scrutiny from the media - both mainstream and social. In our viral age, the court of public opinion has become an inescapable and powerful second forum for many trade mark disputes and, unlike in a court of law, you cannot appeal.

 

For rightsholders, getting ahead of the potential issues this can cause is crucial to avoid falling foul of severe consequences. Given how quickly negative publicity can undo the benefits of legal remedies, rightsholders faced with the prospect of IP litigation must now weigh up not only how strong their legal claim is, but also how the public will react if they pursue it.

 

New risks for rightsholders

Until recently, cease-and-desist letters tended to be confidential communications exchanged between parties and their lawyers. Legal custom largely dictated the content and tone of these exchanges, which were rarely ever seen by anyone other than lawyers and judges. It was also rare to see press coverage extend beyond courtroom reporting.

 

In an age of social media, disputes that may previously have gone unnoticed outside of legal circles now garner significant attention in the news. Legal letters are frequently published online, and the companies that send them are often publicly accused of enforcing their legal rights with too heavy a hand. 

 

The recipient of a cease-and-desist letter can now share it with their whole network, potentially millions of readers, with a simple social media post. Before engaging with a potential infringer, rightsholders must therefore consider what, if any, the media and reputational damage might be before engaging in such correspondence. The media presence of a potential infringer has become increasingly relevant - a popular defendant with a large social media following can inflict reputational damage which may well vastly exceed the compensation mandated by the court. 

 

Brands must now face these new challenges head-on. They must fight two battles simultaneously - one in court, and the other for public perception. Unlike a specialist judge, the public can be unpredictable. Rather than assessing a dispute on its legal merits, their opinion is shaped by narratives driven by power dynamics, fairness, and corporate responsibility. These risks must be adequately assessed, considered, and weighed against other considerations such as the merits of an infringement claim.

 

In light of these new pitfalls, how can rightsholders navigate the potentially diverging narratives of law courts and the court of public opinion?

 

The power of an underdog

Rightsholders must consider how the press and social media will characterise the dispute. A multinational company that is about to threaten legal action against an independent, family-run business must consider the risk of falling into one of the most common and damaging tropes - the “David versus Goliath” narrative. The public may consider that the large corporation is bullying or ‘picking on’ a smaller business. This framing intuitively appeals to the general public and is difficult to overcome once it gains momentum. The underlying legal merits of a claim often become a secondary consideration. Regardless of the outcome of the legal process, the reputational damage is done.

 

Unfortunately, simple narratives make for the most attractive headlines. This risk must therefore be taken into consideration when considering legal action against a smaller organisation.

 

Faced with criticism of this type, some rights holders seek to engage with the press and adjust their approach, in the hope of mitigating the reputational harm, but in most cases, by that point, the damage has been done. Little is left to be gained by issuing a statement that risks further amplifying the media coverage of the matter. It is, therefore, important to consider the risks posed by the potential “David and Goliath” narrative early in the dispute, before deciding to engage and threaten legal action.

 

But what more can brands do to protect both their IP and their image?

 

Redefining rights protection

Rightsholders are adapting their enforcement strategies and are exploring more creative ways to enforce their rights.

 

One notable trend is the rise of legal letters drafted in clear anticipation of the correspondence being made public. A number of well-known brands have recently attracted positive media coverage for sending humorous or polite, conciliatory cease-and-desist letters to potential infringers, rather than the more traditional legal methods. 

 

Despite their jovial, often unserious tones, these letters will have been carefully constructed to adequately assert the legal rights of the rightsholders. However, the method of delivery does reflect a recognition that neither party can guarantee that legal correspondence will remain private, and that where once these documents were drafted strictly in pursuit of minimising negative press, they now have the potential to be an active source of positive coverage.  

 

The power of PR

As the challenges to trade marks and intellectual property evolve, advisors must evolve with them. Where household name brands once left trade mark disputes exclusively to their legal teams, communications and PR advisors are now playing an increased role, particularly at the early stages of a potential dispute. Allowing such specialists to be involved from the outset, not just as ‘damage control’ when things go wrong, allows brands to stress-test their legal plans against the narratives most likely to spark a media storm, and reduce the likelihood of turning the public against them.

 

As the requirements for effectively protecting a brand’s rights evolve rapidly, every legal enforcement decision must bear in mind the fact that actions will be shared and scrutinised by a public that plays the judge, jury and, in extreme cases, the executioner. 

 

There is no doubt then that responses to IP infringements must be well-considered. Analysing the traditional legal merits of a trade mark claim and acting accordingly remains critical, of course, but an equal weight must now be given to whether the issue can be resolved in a way that protects not only the intellectual property of the brand, but the reputation that it has spent years nurturing.

 

A failure to effectively manage the reputational risks of a public trade mark battle can cause unforeseen and enduring damage to a business. The brands that learn to negotiate winning not only in court, but in the minds of the masses, will be the ones that thrive.

 

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Joshua Schuermann is a Senior Associate at Reed Smith LLP; Gabrielle Butler and Camille Pellicano are Trainee Solicitors at Reed Smith LLP

 

Main image courtesy of iStockPhoto.com and Tatiana rico