This transcript is for the video IP & Business: Boost Juice - Amy Roy.
Amy Roy talks about Boost Juice’s international intellectual property (IP) strategy.
Boost Juice’s Business and IP Strategy
A bit of colour to brighten up the morning. My name is Amy Roy. I’d like to talk to you about exporting your business. At Boost Juice, for us, it’s been largely about international trade mark strategy. That’s been our core, our focus and our driver and that’s what I’ll focus on today. I am general Counsel and Company Secretary and have been for about eighteen months now. In Boost time, that’s about six years. I’d like to talk to you about our story, what to do when you’re thinking of exporting, a little bit about the importance of trade mark strategy- the types, the process, what’s involved, what you should do, what you really shouldn’t do and some strategies, some tips, a little bit of experience.
The Australian story. Janine Ellis founded Boost Juice in 2000. We’ve seen rapid expansion in the last eight years. One hundred and eighty stores later it’s been a great Australian success story. Registering our trade marks in Australia and internationally has been the key to this success, the key to marketing and the key to brand protection. We currently have eighty marks registered in Australia today.
The Global story. Eleven countries, hopefully next week it will be twelve. Again the rapid expansion is starting to be seen. It is a little bit slower on an international level than in Australia. If only all countries were as easy to deal with as Australians. We are registered in fifty-eight countries and we have 26 countries where we have ongoing applications. And the trade mark strategy has been key.
Now, whatever you’re thinking of doing in exporting, you might be a franchisor like us, looking at licensing. Perhaps you’re a manufacturer, you’re looking at China, you’re looking at Indonesia, you’re looking at perhaps a joint venture. US, retail UK, Europe, website, global, everywhere – whatever it is your IP is everywhere. It’s in your store, it’s in your graphics, it’s in your signs. It’s on your letterhead, it’s on your logos, it’s on your websites, it’s on your email signature, it’s everywhere. You must identify it, you must protect it, you have to capture it. I won’t go over too much of duplicate ground, we have looked at the three main types of IP.
For us, we grant a non-exclusive license to franchisees in Australia and to master franchisees in various territories around the world. And that is to use our trade marks, primary marks and also other sub-logo and product marks, our images, our designs, babies of the marketing department, very protective about those, and our systems.
Marks, registration, Boost Juice Bars, our primary logo. Key, that’s the main one.
Sub-brand logos – Love Life Boost.
Product names – Gym Junkie Boost.
Sometimes we would register product names in a territory, other times not – it depends. Each territory is different.
Colours and sounds. If someone down the road sets up Jimmy’s Juice Bars, doesn’t sound anything like Boost, in fact he has an entirely different logo – if he uses all of our colours which have become actually a big part of our brand that arguably is infringement. If we’d filed in black and white we’ve got greater protection for all colours but have we protected those colours? Sometimes colour is what you need to protect.
I won’t try to do the booooost that you hear on the radio but that one is important. Radio ads, TV ads, all of these have our marks through them.
You need to copyright your images, graphics, designs, uniforms.
And system protection. How are you going to monitor and protect your systems internationally if you’re not there? Operations manuals, training manuals, guidance manuals, write them, write them, write them, get someone else to write them. Marketing compliance – marketing guidance.
If you’re like us, you may have secrets. Recipes, very, very, important that you can protect these. Customer and supplier details need to be carefully handled.
Policies – create them. Create them for any kind of international scenario you consider may arise. If you work through it, it is likely you’ll come up with various explanations and resolutions that will become highly applicable at the time of crisis.
Legal sign off
Get it. If you haven’t got in-house counsel get an external lawyer relationship you know, can trust and can sign off things to remove that accountability from you.
Agreements – do them. Do them for everything. Relationships are lovely while they’re great. Often when money and goods and various dealings become involved they quickly become ‘ungreat’. Get those agreements in place now and get your confidentiality and your non-competition clauses in there. Your confidentiality will protect you for any kind of disclosure of information and your non-competition clauses will mean that if you have a wheeling, dealing discussion and it doesn’t go anywhere that they can’t go off, take your secrets and do what you were going to do anyway.
TM protection- domestic and international strategy.
So, copyright your artwork, register your trade marks, patent your designs, sign up the contracts, get your confidentiality agreements in place. They’re not always highly enforceable. Costly. How often I’ve been involved in litigation around a confidentiality agreement – very rarely. But they’re more of a psychological exercise than anything. And internal systems protect those.
I’m going to focus on trade mark registration and strategy today. Why is it so important? Australia, as much as we would like to think it is, is actually a long way away. We’re not the financial or the business centre of the world. It’s not London and it’s not New York. The reality is, as much as your brand might be known here and loved here, actually in various places around the world it’s quite possible they’ve never heard of you. trade mark registration is absolutely fantastic for marketing. Getting your logos out there and using them as a tool is a brilliant way of creating awareness on a public level and a business level for your business interests, generating business interest.
Protecting your brand – imperative to your business systems.
If you’re like us and you’re licensing, it’s your core IP, it’s your asset. If you don’t protect your logo and protect your brand and protect your image, you’re not protecting your business partners and you are going to lose them. It is your asset and you must do everything you can to protect it and for your business partners to monitor it. Reserves the right to your name, prevents infringers, prevents copycats. If you get your registration in, if you get your filing in early, you reserve the rights to your name and you will save yourself a lot of trouble down the road.
We touched briefly on common law trade marks. Now you do have common law rights, passing off. If Jolly Juice decides they would like to set up a juice bar down the road from us in Kuwait, we have rights, certainly. You were trying to pass off your brand as ours and the public would be confused and think that you were us. It’s a good argument. You’d probably win when you get there two years later and twenty grand later so get your mark registered.
And finally, marketing tool. Can’t reiterate that enough. The process, what’s involved. Choose your logo. Do you want a logo, perhaps words? Perhaps both. In Hong Kong and Macau they’re very conservative. If you want to register your business, your business name must be identical to your trade mark registration. A lot of other territories aren’t so concerned about that. In which case, register the logo, register the words.
Colour, again we’ve touched on that. Think about whether you should register in black and white for more protection, to deal with all sorts of situations of colour or is the colour the key? Perhaps you want to do both.
Choose your class carefully
Don’t be greedy but be careful, be prudent. Class forty three –services. Twenty nine and three – food. Five – supplements. Thirty five – advertising. Twenty five –clothes. Perhaps you want to choose a few of those. Be careful of your class descriptions. It is no good putting down everything including the kitchen sink if you’re not going to use it and you’re not going sell it. You’ll be vulnerable to cancellation actions, vulnerable to non-validation actions. If you’re going to register your mark and you’re looking at descriptions don’t file for a range of products you’re not going to sell just because you might down the track. You do need to think about what your company is going to do and think about the future, but if you say that you are going to use your mark for a range of cakes and cereal products you might get the angry attention of Kellogg’s who will not be impressed. You will have to deal with them, and if you don’t use them you’re vulnerable to your cancellation, and you’re vulnerable to your validation action so take advice on that.
Get your mark filed. Your filing date is critical if disputes will arise. In certain areas of the world, more critical. Again take advice. Your mark will proceed through to examination. The examiner will consider what are your competitors, what are your threats, what are the similar marks. You might receive a letter about a range of similar marks that prevents the registration of your mark and you will have to deal with that. You may have to adjust your classes, you may have to adjust your descriptions, adjust your logo and examiners tend to be quite helpful in some areas and not so helpful in others. Again, take advice. Once your mark is accepted it will go into opposition period and your competitors will have a chance at that time to oppose you if they have similar marks and have grounds for doing so. If you manage to wear off your opposition threats, your mark will proceed through to registration.
Three main types of international trade marks. Local registration by your national registries. Madrid Registration. World Intellectual Property Organisation in Geneva. European trade mark Registration.
OHIM – that’s our new system. Local registration is the way you will go in areas like Taiwan, other Asian countries where they’re not part of the European community mark system and not part of the Madrid protocol. Use a good trade mark attorney; establish a good relationship with one here that can recommend a good one over there. They’re not all good. So that question’s very valid. Some of them are excellent though and some of them are very commercial and will get you, and will help, help you sort of stay ahead of the game.
Every country is different and don’t presume to think otherwise. Some countries, South Africa, South America, you may be waiting five years for a very random decision that you have to challenge anyway. So be patient. You can’t rush trade mark registrars, they don’t like it. The US is quite complicated. It’s different, it’s a different system. There’s a lot of common threads but take advice. But time your phone calls. They’re not cheap. Iraq, Cape Verdi, new systems. We were delighted to get a letter a few months ago to say that now there was a cease-fire, our trade mark would proceed to registration which was wonderful. Whether or not we actually want to go there is another question. Cape Verdi were most excited when we applied. They didn’t actually have an office and I think we were the first application and they’ll set one up and they’re ready. Turkey, Dubai and other parts in the Middle East, you know, expect the unexpected. Decisions can be unfair, they can be arbitrary and if you wish to challenge them, good luck. You might win but then again, it takes a long time.
Madrid – this is your preferred method in my view. Madrid’s great. You get on the IP Australia site, you’ve got your checklist of boxes of countries, tick which ones you want, get advice on your classes and you file it. You might file it for sixteen countries. It’s certainly a lot more cost efficient. As it was raised before, if there’s issues down the track, which actually quite often can be the case you will have to pay local attorneys to deal with those. Don’t try and contact WIPO by fax, email, phone or any other method. They won’t speak to you unless you’re bigger and more important.
After eighteen months WIPO will send your application through to the various national registers and if they don’t have a problem with it, you would have heard from them if they do after eighteen months, it will be deemed registered. You must base it on an Australian application. It doesn’t have to be a registered Australian trade mark but it has to be accepted if you like. If you try to change your Australian application, for instance the classes aren’t accepted because Cadbury has a problem with your intention to sell various chocolate goods. If that happens and you have to change your Australian applications, you then have to change your Madrid applications. So get it sorted here first. The good thing with Madrid is it allows for subsequent designations. You’re in Europe, you want to go to Asia, you can go back to your IP Australia site, tick a few more boxes and send off another application.
The new European CTM system, it’s great, it’s new, it’s very fast but there’s always a catch with these such things. There’s no consideration of prior third party rights. So instead of very high, due diligent investigation into who you might be too similar with and or might be too close to your and deceptively too similar to the public, you will instead find you are registered within a couple of months. Great. But you may then receive notice from some of your international competitors or threats that in fact, they were registered first and in fact they want you to do X, Y or Z or they’re going to file a cancellation action. Also be aware with the European trade mark CTM, it’s one big bulk application. If it gets knocked out in one country it gets knocked out in them all. You can convert them to national applications but that’s costly and timely.
Tips for navigating the international marketplace
What should you do now? Plan. Identify your IP, protect it. Establish a relationship with a good IP Attorney here who knows your brand, knows your vision and can advise you on different jurisdictions or liaise with agents to advise on those jurisdictions. Find out about likely enforcement. Some countries again I think – I’ve had a recent issue in Hong Kong/Macau which jumps to attention. They are very pedantic in the initial phases and getting everything right and filing it all, it’s very important. Likely enforcement of those decisions is actually quite low. So, get some good commercial advice on that.
Create an individual IP strategy plan for each territory. Talk about it at the boardroom. Talk about it at the start of the deal. Get it on the agenda, get it in there. Get the marks filed. Talk about your products, talk about your designs, talk about, you know, your sub-brand logos, talk about your patents, your copyright. Get it all on the boardroom table at the start so it’s part of the deal and there are no nasty surprises down the track.
Brand protection and enforcing your IP rights.
Brand protection which is why we’re here. You need to create systems to protect against the dilution of your brand from internal and external threats. Create a fanciful mark, something unique, out of the box. Don’t go with a generic word like ‘boost’. That will cause you all sorts of fun problems. Think of something a little bit different, not descriptive. File your mark, use it. Put it on your email, put it on your website, use it in your communications, use it in your marketing, use it as you intend to register it. Get it out there. And create a culture of compliance. If you insist with your employees, with your third party suppliers, with anyone you deal with that your IP is to be represented in a certain way, as it is registered or you intend it to be registered and you create that culture of compliance, they will follow that. It may become incredibly important down the track if you find yourself in litigation that you have used your mark as you intended to use it and a lot of that publicity, a lot of those advertisements or, you know, manuals, , international communications, PR, PR material, a lot of that can become highly, highly relevant in litigation to show use of your mark, and declarations of uses are actually quite common now in most territories.
Search territories, know what’s going on, search in advance, get your trade mark attorney to do you a little synopsis. Google it. You can find out a lot about Mexico by googling it. So watch your competitors, know your threats. Know what’s out there before you file your marks and know what’s going to be a problem. Watch them, the big ones and the small ones, even the little small companies that you are so proud of, you think ‘ahh fellow Australian, aren’t they doing well’, watch them. Small ones get big. Stop them now. Don’t be nice.
Create a media crisis response. It’s a very scary phrase but have one. Have a PR person or a lawyer with media experience to think about what you’re going to say when the Age rings because so and so in Paris has just started selling your product and he’s doing incredibly well and is now patented it or trade marked it or what have you – what are you going to do? What is your response? How are you going to deal with it? You need to start thinking about that. It might be as simple as preparing a list of Q&A’s.
Think commercially. Litigation is not fun. Anyone here who’s been part of any sort of litigation I’m sure you would agree with me. It is costly, it is painful. Whoever came up with the idea should be shot. But it is the end resolution to a matter that you wish to avoid so pursue commercial arrangements. Look at excluding goods or services. You don’t need to register your marks in every class for every good or service and you’ll just find yourself in a pot of hot water if you do anyway. So look at your competitors, you may have to look at them if they oppose you anyway and raise problems and be commercial about it. ‘Yeah actually I could agree to that. I could exclude all of those goods because they’re your primary product and actually we don’t need them’. Or ‘I’ll exclude that service, sure. But only in these circumstances.’ Sometimes it’s good to be selective, sometimes better to be broad. But your Attorney will be able to give you very good advice about that depending on what sort of jurisdiction you’re in.
Letters of consent. You might find that actually, the big, bad competitors that want to get rid of you, don’t want you to register are actually not so bad and might consent. Maybe they’re not bothered about your co-existence with them. Maybe your marks are really different. As long as you do X, Y and Z or stay out of a certain area or what have you but often if you ask, you get. Look at purchasing existing marks. In some territories, filing date is absolutely key so, you know, buy an earlier mark. And look at acquiring new competitors. That can often be the best way of getting rid of your competition and making the most of it.
Think ahead. Collate evidence of your media, your publicity, your advertising. Keep everything. Keep records, your litigious victories. They become very relevant in any disputes you might have with the commercial or litigation down the track. Local decisions are very persuasive in certain regions. In Asia you’ll find that the Thai trade mark register will be very interested to know what the Indian trade mark register thought about a mark or an issue. They’re not very bothered about what the American register thought, but they’ll be very interested to know what Hong Kong thought as well. Certain areas like to keep some consistency and uniformity and that’s similar in Europe as well. You might find adverse decisions in Asia help you in America. Often you’ll be arguing the same thing that’s been argued against you elsewhere. So just keep a record of all those decisions, they might help you.
Do not enter a market blind
Do not go in arrogant and cocky thinking that you will be fine. You’ll find yourself the subject of infringement litigation. So do your due diligence. Work out in Australia, use is big, using your mark is big, that’s what’s important. In Europe, not so important. Filing date’s big. Get it filed or buy an earlier mark. Don’t take on the multi-national companies. They have much more money and they probably have much less reason to back down. More money means much greater passion to go to court. Avoid the fights. And don’t miss your deadlines. You can often get extensions as long as you get in early.
Just a couple of experiences
We had a situation in South Korea where the trade mark registrar was most upset when I attempted to register Love Life Boost. ‘Well’ he said, ‘I can’t believe that you’re attempting to suggest that if I drink your drink I’ll increase my performance in the bedroom.’ So that wasn’t actually what we meant. So often you’ll have language problems that really you’ve just got to work through and you’ve really got to write simple explanations and get a local Attorney to help you ‘cos often it’s just a cultural matter that does need explaining. In Dubai you need to file in Arabic and if you’re like me and you didn’t know it went backwards, learn. Get someone else to do it.
Aim to be first in time. In Europe it’s big. We had an experience of buying an earlier mark that has proved to be highly, highly beneficial and valuable. So do consider those options, they’re costly but you will get benefit, later down the track.
Australian friends are often open to co-existence. Australian companies have a huge amount of comradeship internationally and as long as you don’t, you know, take over the chocolate from Cadbury or take over various drinks from, yeah, from Fosters, they’re actually quite, you know, they want you to do well. So, they’re often quite open to co-existence, keep away from their big sellers, be commercial, ask and you might get.
Make sure you’re patient in Asia. It can take ages for things to happen especially if it’s the King’s birthday in Thailand or the King’s not well or its King Day or the King’s son’s started University – these cultural matters require great respect from you. You can’t change them, you must respect them. Things operate very differently there. So, be patient, write courteously but start using, get out there. Actually, by the time they look at your mark in about three years time, you’ve got four stores and in fact that use is quite persuasive.
So, how do you get your mark through? Non-generic word. Fanciful, out of the box. Steer clear of main marks. Don’t be greedy. Restrict your classes and your services appropriately. Take advice. And think about the future; think about where your company wants to go.
trade mark registration for Boost has given us market power in Australia and internationally. It’s been key in increasing our global presence, in advertising our brand and in getting business partners and increasing the strength of the brand as a whole. If you adopt a knowledgeable commercial approach, you will be the one laughing, not your competitor.