Close up of confectionery chocolate
21 March 2016

As one of the giants of the confectionery sector, the Mars brand is valuable intellectual property (IP) and is fiercely protected by its owner, Mars Incorporated.

It helps that the company has the former president of the International Trademark Association (INTA) Rhonda Steele as its Marketing Properties Director.

An expert in IP strategy, Rhonda was responsible for the establishment, maintenance and enforcement of Mars’s various IP rights.

‘Mars is a company which invests in brands and has a policy which clearly states that the brand names are the basis on which its consumer franchises are built and, as such, are among its most valuable assets. Whether it’s the trade mark chosen for the product, the pack design for the product or the advertising which communicates the product’s benefits to the consumer - they all deserve and require protection,’ says Rhonda.

Monitor the marketplace

The company monitors its markets all over the world for any misuse of its IP, including similar names or pack designs - which happens quite often.

For example, since launching a block chocolate product in China under their market leader trade mark 'DOVE', Mars has dealt with numerous and varied infringements of the DOVE trade mark and pack design.

‘In the early days there was very little sophistication when it came to trade mark infringement and infringers used the identical mark. Subsequently, infringers have started to use different words but in the same type style and colour scheme.

‘The two wavy lines and the lozenge device are inevitably always copied, as is the placement of the Chinese character brand name for DOVE. More recently, we’ve had a horse device and a rabbit in place of our Dove device but the overall similarity of the labels is still designed to cause deception and confusion. We have persisted in enforcing our rights and I’m pleased to say that the Chinese authorities have been very receptive to our submissions, with the result that we win many more cases than we lose,’ says Rhonda.

The lesson: be pre-emptive, not reactive

‘Before we launch a new product we talk to our consumers first and find out what they think about both the product itself and the name we are proposing to give it.

‘Once we have that feedback we proceed with trade mark searches through our professional advisers, as we need to be sure that we’re not going to be launching something with a name which is the same as, or similar to one already in the market. This is a vital step and can avoid problems down the track,’ Rhonda adds.

Former principal consultant on IP and technology management at Sydney law firm Gilbert + Tobin, Sharon Ch’ang says that carrying out a search of the trade mark register is sound risk management for anyone releasing a new product for sale.

‘Failure to do your basic homework can jeopardise your entire marketing campaign and, if timing is important, even the success of your product in the marketplace.

‘For example, if you neglect the simple trade mark clearance procedures before you enter a market and someone else is already using an identical or substantially similar trade mark, you can easily end up having to withdraw your press and advertising and re-do product labels, packaging and brochures to ensure you do not infringe the other trade mark,' Sharon explained.

‘Practically speaking, this takes time and delays getting your product onto the shelf. If you end up in this situation, one solution may be to purchase or perhaps license the use of the pre-existing trade mark rights from the owner.

‘This has been done many times when an eleventh-hour discovery is made that someone else has a product of similar name. But obviously you are at the mercy of the trade mark owner. The ransom they demand for your use may be far more than you are willing to pay. Armed with the knowledge of the importance of intellectual property clearances, it may be more expedient to start again.’  

Establish a portfolio of IP protection  

For companies like Mars Incorporated, registering a brand name is extremely cost effective. For smaller companies, it's important to do a sound cost-benefit analysis to make sure that the expected returns justify the cost of the initial investment.

Be prepared to fight for your IP

Sharon advises brand owners to be prepared to fight for their IP rights if and whenever they are infringed.

‘Unless you’re prepared to put a stop to any infringement, you will quickly lose your competitive advantage. If you suspect someone is infringing your rights, such as copying a pack design or creating a logo similar to yours, investigate immediately and take action if necessary,’ says Sharon.



Registering your IP