Today I had the privilege to provide a guest contribution to one of my favorite intellectual property blogs, The IPKat, on a story about the Canadian Olympic Committee’s unfair competition dispute with the The North Face over the U.S. clothing company’s International Collection. Check it out at http://ipkitten.blogspot.com/2014/01/friday-fantasies_24.html.
In recent months, there have been a number of stories from around the world about trademark applications, registrations and uses that have been critically questioned, and in some cases rejected, based on their offensive cultural or historical meaning.
Here are just a few stories that I have come across in the past couple of months. They highlight important country-specific cultural and historical sensitivities businesses should take into consideration when deciding how to brand, and register their trademarks abroad.
- The U.S. football team the Washington Redskins have been under growing pressure from Native American organizations, media and sport commentators, and even comments from President Obama, that their team name be changed, and their trademark registrations in that name cancelled, based on the team name’s insensitive characterization of Native Americans (FYI, The National Congress of American Indians came up with some model logos that give a unique and appropriate juxtaposition to show the degrading nature of Native American sport team names).
- Closer to my home, the Portland, Oregon-based Asian-American rock band THE SLANTS were refused trademark registration of their band name by the U.S. Trademark Trial and Appeal Board based on the name being a “derogatory reference to people of Asian descent.”
Similar trends are also happening around the world.
- Last week, the IP blog The IPKat had a great posting about how an Italian citizen living in Norway and an Italian regional wine industry association helped to put enough pressure on a Swedish wine producer selling under the mark MAFIOZO to stop using the mark. Beyond the winemaker’s alleged violation of European Union geographical indication protections, the producer was publicly criticized for using a mark that connotes historical and ongoing Italian organized crime that has resulted in thousands of deaths.
- Lastly, late last month, family members of the deceased Colombian drug lord Pablo Emilio Escobar Gavira submitted a trademark application to Colombia’s Commission of Industry and Commerce to register the full name of the former drug lord in International Class 41. The Commission rejected the application stating that granting the mark would be “immoral and subvert public order.” Although it was only one single trademark application, many world news outlets reported the story, even comparing the attempt to register Mr. Escobar’s name as registering Hitler as a trademark (Coincidently, I recently wrote about how a Thai fast food restaurant tried (and failed) to use such branding).
What’s the Takeaway? All of these recent stories highlight how a country’s historical and cultural sensitivities can not only prevent obtaining legal protections for a trademark, but can also cause additional unforeseen damage through negative public relations and rebranding costs. As a trademark provides a means for the public to identify a business’ goods and services, choosing a word, name or phrase that that is culturally or historically insensitive can almost guarantee negative outcomes, both at home and abroad.
In the context of developing foreign markets for goods and services, understanding and respecting the cultural and historical sensitivities of a particular country is essential to obtaining trademark protection in that country, and more importantly, helping to develop a successful international brand. As with all other aspects of entering into new foreign markets, businesses should do their homework and ensure the mark or marks they wish to register and use abroad are not offensive. Doing so is a relatively inexpensive insurance policy for businesses to prevent complications in expanding abroad.
What does your business do to protect itself from insensitive branding abroad?