Infringement marketing: the art of defending your brand without damaging it
Fender is a brand that, for many guitarists, evokes far more than just a product name. Its most famous model, Fender Stratocaster, is part of pop history, played by generations of musicians and instantly recognizable by its shape.
Fender naturally wants to protect its iconic guitar model, but taking action against enthusiasts and fans is, of course, a delicate matter. The company recently attracted considerable criticism after sending strongly worded case-and-desist letters to builders of so-called ‘S-Type’ guitars (S for Stratocaster). According to Fender, the issue is the protection of the exact design, not an attack on all guitars with a similar basic shape. Even so, the reaction among enthusiasts was fierce.
From a legal perspective, sending a cease-and-desist letter is often a logical first step. You draw the other party’s attention to your rights and ask, usually with some pressure, that the use be stopped. This may involve ceasing production, sales or promotion, and sometimes also recalling or destroying products. But a cease-and-desist letter is not only a legal document. It is also a communication on behalf of your brand. And that is precisely where things can go wrong. Especially where the recipient does not appear to be a malicious copyist, but a small entrepreneur, maker or fan who operates within the very world of your brand.
This was also apparent in the case of Rituals, which recently objected to the use of the name House of Ayurveda by two ayurveda therapists. Rituals relied on its own trademarks, including house of Rituals and The Ritual of Ayurveda, but later withdrew its objection following media attention. Legally, such an objection may be understandable: a trademark owner must remain alert to confusion and the dilution of its brand position. At the same time, it jars when a large company appears to take action against a term that also has a broader cultural and descriptive meaning. At that point, the discussion quickly ceases to be only about trademark rights and also become one of the proportionality and sympathy.
It can be done differently. A well-known example of Jack Daniel’s, which in 2012 took action against a book cover that strongly resembled its famous whiskey label. The tone of the letter was friendly, almost courteous, and the company even offered to contribute to the cost of a new design. The message remained clear: our brand must be protected. But the manner in which that message was delivered generated positive attention.
The lesson? Protecting your trademark, design or product, and sometimes taking action against infringers, is necessary, certainly where the value of the brand is significant. But the way in which you act determines how your brand is perceived. A cease-and-desist letter to a sole trader who is not a repeat infringer does not need to be three pages of legal language. It can instead be an empathetic letter explaining the problem and suggesting a solution. As a trademark owner, you therefore need to think not only about your brand, but also about your image, how you come across, and the person receiving the letter. In the worst case, such a letter ends up in the media, so it helps if the company has a good story to tell.
Those who enforce their rights with an eye for context, tone and audience protect not only their trademark registration, but also something at least as important: the goodwill surrounding the brand.
Author: Arnaud Bos
Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.