IP Litigation & Enforcement: Sky’s former IP head offers branding tips
The former head of intellectual property at telecoms company Sky has offered advice to brand owners about launching and enforcing brands.
Simon MacLennan said brand owners should communicate with senior management, purchase minor rights and also have a “plan B” in place when approaching litigation.
MacLennan, now an IP strategy vice president at technology company Rovi, was speaking at the IP Litigation & Enforcement conference taking place in London today, July 2.
He referenced two trademark cases involving Sky--its fight against Microsoft over the SkyDrive online storage system and its dispute with Hong Kong-based company Starbucks (no relation to the coffee business) over the online TV service NowTV.
Sky was victorious in both cases.
Microsoft was forced to rebrand SkyDrive to OneDrive in 2013 and, in a judgment issued by the UK Supreme Court in March this year, Starbucks’s NowTV was found to infringe Sky’s trademark for its online television service of the same name.
During the trial with Microsoft, Sky defended claims by Microsoft that the term ‘Sky’ was descriptive and that it had amended the goods and services that its ‘SkyDrive’ trademark covered to include online storage.
Both of Microsoft’s claims were rejected by the English High Court.
In the Starbucks case it was established that the Hong Kong based company had not established a reputation in the UK.
“It goes without saying that the closer a mark gets to being descriptive, the greater risk it runs [of being rejected],” said MacLennan.
He added that other difficulties could be overcome by purchasing minor rights, such as small companies’ use of a name or a registered domain name, to avoid potential clashes.
“When a marketing department comes up with ideas for brands there are often a number of potentially objectionable minor rights but in some cases you can purchase those rights,” he said.
He added: “Invest in external advice as well as discussing the issue with senior management. You should be prepared to fight side by side as a unified company.”
The IP Litigation & Enforcement conference runs from July 2 to 3.
