INTA 2014: The battle between brands and private labels

In-house counsel at Mars and Red Bull today, May 12, urged trademark owners to “act quickly” when trying to enforce rights on private-label products.

Speaking at the annual INTA meeting in Hong Kong, the increasing difficulties of how and when to enforce rights on private labels, those that are sold using another company's brand name, were discussed.

Ann Chen, legal counsel for multinational confectionery and beverage company Mars International, said failure to act quickly on potential infringements and look-a-like products would be detrimental to brand owners.

“The longer you leave it, the harder it will be to distinguish yourself and stop other competitors from copying your brand. Once you allow one, you allow a lot,” Chen said.

One option used successfully to Mars's benefit when tackling an infringing product was obtaining an ex parte injunction.

Chen pointed to a Dutch product called Choco Crunchies, small round circles of chocolate in red packaging, that she said infringed Mars's established Malteser brand.

“Through the use of an ex parte injunction, obtained in Germany, we were able to get them to change the packaging,” Chen said.

Jorge Casals, legal counsel for energy drink Red Bull's European division, said “more and more” companies were offering their own private labels as well as products belonging to established brands.

“Often these products will imitate the market leader,” said Casals who added that taking a “direct and friendly” approach would be more likely to be successful.

“Find out who is the responsible legal counsel and go straight to them,” said Casals, adding that right holders should provide “convincing” third-party material, including consumer surveys and examples of previous amicable solutions to support the initial warning letter.

INTA runs from May 10 to May14.