Consumers first: GlaxoSmithKline on trademarks
In the UK, and in much of the rest of the world, GSK products are ubiquitous. And it’s not just patented pharmaceuticals you’re likely to have come across. British customers will be familiar with products as diverse as Lucozade sports health drink and Aquafresh toothpaste. In the US, stomach remedy Tums is a big seller, while malt powdered-drink Horlicks is India’s sixth-most trusted brand.
Managing and protecting the trademarks associated with these brands is Emma Stopford’s job. As GSK's vice president for Consumer Heathcare Trademarks, she manages a permanent team of three attorneys and seven paralegals, split between London and Philadelphia. They look after more than 25,000 trademarks for the consumer healthcare business.
Many are available over the counter (though some used to be prescription-only and others are available on both tracks) such as analgesics and recently, the weight-loss drug, alli.
Stopford’s team is not just responsible for trademarks, but handles other ‘soft IP’ issues too, such as copyright in R&D publications and licensing IP for adverts and the like, as well as providing support on corporate acquisitions.
Preventing infringement
“We come across all sort of infringement,” Stopford says. “We have a lot of anti-counterfeiting work in particular. The team work closely with other members of the trademark department. A key hotspot is China, and we have couple of dedicated trademark people based there to help with this. The Middle East is another big area, because of all the free ports in the Middle East, it’s easy for counterfeits to get into circulation.”
“GSK put things in place to try and prevent it, such as security measures on the packs. The trademark department also spends a lot of time training customs officials, and building up our contacts with them. GSK also makes customs recordals wherever it can around the world.”
Sometimes, it helps to have people on the ground from outside the company assisting with detection and enforcement. “GSK has an internal corporate security department and also uses private investigators”, she says. “If we ever get wind of anything we always investigate and take action wherever possible. Public health is our first priority.”
Tackling copycats
“We mostly do it through the administrative authorities in China. That works very well,” Stopford says. Where possible, GSK will organise seizures of infringing products. A recent case concerned ‘apreafresh’, an Aquafresh copycat.
While GSK’s strategy is largely effective, it does force counterfeiters to raise their game as well, making counterfeit products even harder to track. One such technique is to package products so they look like parallel imports.
And it’s not just China that occupies the team. GSK recently organised a sweep in Vietnam against various lookalikes and fake versions of its analgesic Panadol. The raids turned up millions of tablets. Such a crackdown sends a strong signal to customers and counterfeiters that GSK takes the issue seriously.
Closer to home
Anyone that has visited a European supermarket will be familiar with the fine line treaded by many products in terms of their trade dress and branding. Supermarket alternatives to popular products sometimes look perilously similar to the leading brand. Indeed, there have been several recent cases where brands have sued supermarkets alleging infringement by alternative products. This is a tricky issue for brands, and one that GSK monitors closely.
Stopford says: “Wherever we can take action, we will. Wherever we feel that the line has been crossed and the law allows us to enforce our rights, we do. We take it very seriously.”
Germany is a case in point. “In supermarkets in Germany in particular, we do see a lot of lookalikes,” Stopford says, “but thankfully, we can also take steps to prevent it in Germany.”
Nuts and bolts
The GSK trademark team is part of one of the larger in-house trademark departments in the business. In practice, that means apart from litigation, nearly all legal work on trademarks in the US and UK/CTM is handled in house. Stopford says co-operation with other areas of the legal department is constant, and the trademark team can be involved very early in a brand launch.
“We try and get involved as soon as possible,” she says. “We’ll advise the commercial teams on what might be protectable. In some ways, we’re constantly educating them, particularly on the marketing side where there may be personnel changes and people that don’t have much experience of dealing with trademarks.”
This is the process for brand development, but for copy approval, of adverts or publications, there is a central copy review system. The trademark team will only get involved near the end of the process, to give anything a once over before it is released.
Perhaps it used to be the case that trademark attorneys were seen as junior partners to patent experts, not just in-house but in the wider legal community. With the rise of the Internet, the increasing incidence of counterfeit products, and the preeminent value placed on brands, those times are well and truly gone.
Even for a company like GSK, which as a whole relies heavily on patents to drive its business, it is absolutely paramount to make sure that its brands are protected. For consumer healthcare products, that effort is even more important. So far, results have been good.
