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19 May 2017Trademarks

Keeping the spirits up

“We know where we’re going; take a closer look at how far we’ve come,” says Scotland-based spirits company Edrington on its website, in what may also encapsulate the company’s approach to protecting and maintaining its brands.

Edrington makes The Famous Grouse, Cutty Sark, Highland Park and The Macallan—all Scotch whiskies—as well as Brugal Rum and Snow Leopard Vodka, and distributes them internationally.

The company’s heritage dates back to the mid-19th century in Glasgow, where Fraser Morrison, brand protection manager at the company, is based.

Morrison has worked at Edrington for nearly 28 years and in brand protection since 1998.

“I manage all aspects of brand protection for all brands, but obviously focus on the six international brands.”

“If your brand is strong in a market which has an infringement culture, then that’s a market you need to focus on."

Edrington’s brands are protected by “a mix of word marks and devices or logos”, he adds.

One of Edrington’s best-known brands is Cutty Sark, a Scotch whisky that was first created in 1923.

“There are three key elements in its protection, the first being the name ‘Cutty Sark’,” Morrison explains.

“It’s a good name because ‘Cutty’ and ‘Sark’ are old Scots words and they are not in common usage.

“With our other brand, The Famous Grouse, people know what a grouse is, they know what famous is, but for Cutty Sark, they say ‘oh, that’s the ship’.

“However, the brand has a much deeper meaning than that. When you combine the word with the ship itself in the case of Cutty Sark and the colour yellow, those three elements work together.”

Morrison approaches brand protection in a variety of ways.

“I start by doing brand and market assessments with respect to risk,” Morrison explains.

“The world’s a big place, there are so many market channels. If you tried to protect your brand in a systematic way and you tried to cover every market in the world, you’d have to expend a great deal of resources in getting there,” he adds.

“I look at where our brands are strong, because if you have a strong brand and you’ve got good volume, you may have a good market share; you may be in the top five brands in that particular country or territory.

“Then you’re clearly at risk, because someone can try to make money off the brand.”

He adds that counterfeiters are “rarely going to do that in a market where your brand is small because they can’t hide, and the opportunity to sell a counterfeit is limited”.

“Next, you have to look at the market and determine whether it is what I call a risk market,” Morrison says.

A risk market includes places where infringement, copying, passing off and counterfeiting are “ingrained in the culture”.

“If your brand is strong in a market which has an infringement culture, then that’s a market you need to focus on,” he explains.

Four strands

Morrison focuses on four brand protection areas: registration, authentication, surveillance and enforcement.

“Registration includes a whole heap of things, such as filing customs registrations so you can intercept goods going across national borders and through customs, where customs exists,” he says.

“Registration is not just about filing a trademark—it’s more about using the registration proactively, making it work for you rather than sitting on the shelf waiting to be used for defence or attack.”

And he makes sure to authenticate a product.

“You do that by putting overt and covert devices onto your product which allow me to quickly identify whether the packaging is genuine or not.”

On its whisky bottles Edrington has a number of readable devices, such as QR codes, that can be applied to packaging on the cap, glass or label of the product.

“You can read quite quickly with your smartphone, get an identification of where that product was supplied to, which market it was supplied to and a whole heap of information,” Morrison says.

The company can also undertake tests of the contents to identify a fake or genuine product.

For surveillance, “there’s physical surveillance, that’s employing people out in the market to gather intelligence, as well as watching markets and monitoring markets and trade channels”.

Morrison adds that his job increasingly requires internet and digital surveillance, using technology to enhance surveillance to the company’s advantage.

“As to enforcement, if you catch somebody, make sure you follow through on the action, and take as severe an action as you can against any infringer,” he says.

“That’s the four actions—registration, authentication, surveillance and enforcement. If you’re doing all those things adequately, it goes a long way to preventing or mitigating infringement and counterfeiting,” he adds.

Extra protection

Geographical indications (GIs) can be an invaluable source for brand owners. This is true for Edrington.

Morrison says that “GIs afford very valuable protection to Scotch whisky as a product with a knock-on effect for Scotch whisky brands. This helps to fight products which masquerade as Scotch whiskies but are not Scotch whiskies.”

He adds: “Often we don’t have to fight with our own brand protections as the Scotch whisky GI does the job for us. The GI allows us to action against a product which is not Scotch whisky (an easy test determines whether the product is Scotch whisky or otherwise) because it infringes the GI.”

Morrison explains that he once encountered a look-alike product with a similar phonetic name, and “proving the infringement was made easier by fact that the product was clearly not a Scotch whisky, so we used the GI to enforce the action”.

However, he says that “without the GI and in cases where the infringement of our brands is alleged based on opinion rather than obvious infringement, providing ‘proof’ is usually more involved and can take longer”.

Colouring the map

Across the company’s six brands, Edrington owns somewhere north of 1,000 trademarks in total.

Morrison admits that he doesn’t count them. “It’s not that I don’t like counting them, but I have world maps for each trademark or type of trademark and I have a map of the world which I colour in.

“There’s a day I expect to see that world map fully coloured in,” he adds.

In his role, Morrison assesses what markets to register in.

“If I see any white spaces on the map, I don’t have a trademark in that particular country. I then have to ask myself, ‘do I do anything about that?’.

“It may be somewhere like North Korea—do I want to have a trademark in North Korea for Brugal Rum? Probably not, because it’s probably not a market we would explore,” he says.

The company’s brand designs and packaging are covered by copyright, including label art for Cutty Sark and The Famous Grouse.

“When we first did Cutty Sark, an artist who was with us at the time drew that label,” Morrison explains.

Edrington adopted the same approach for The Famous Grouse label.

“Wildlife artists, Stanley Todd, and later Rodger McPhail, were commissioned for a range of artworks which were used for our labels and other packaging.

“They were asked to create works in oil or watercolour and we would buy the painting from them with worldwide copyright in perpetuity signed by the artist at the time they were commissioned,” says Morrison.

However, Morrison adds that copyright protection is “not a huge concern” for the company as it is for designs and packaging.

Evidently Morrison is a stalwart of protecting IP at Edrington. The company’s comprehensive protection strategies have ensured that its brands remain robust.

Edrington knows how far it has come, but the question is, how much further can it go?

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