Development of a brand through trade mark protection

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Branding of a product is important for both buyers and sellers. For buyers, branding reduces the random nature of product selection. It helps them to identify more easily products that may satisfy their needs and enables them to reduce time spent on evaluating alternatives. A brand also represents certain qualities and characteristics which they may use to develop a clearer picture of what the product offers.

Sellers also benefit from brands, particularly if they can develop the brand loyalty of the buyer, which leads to repeat purchases. New products which carry a familiar brand are more likely to be successful because consumers are aware already of that brand name. Branding also simplifies the process of promotion. The repeated exposure to the market of the brand name may help develop other products.

Brands are valued for reasons other than the profit they bring their owners. They are a property with legal protection and a value in the market. By valuing brands, a company's balance sheet is strengthened, its share price may rise and its vulnerability to predators decreased.

Product branding

Consumers identify products in a variety of different ways. A brand image comprises a range of features which identify the products of a particular organisation e.g. a name, sign, term, symbol or other creative elements. A trade mark provides legal protection of the brand for its owner, covering design, brand name and abbreviations. This protection can be extended to cover colours and shapes.

Branding provides unique selling propositions (USP) which help to differentiate the product from its competitors and, therefore, make it an essential item for retailers to stock. The creation of a brand image, which matches customer needs more closely than competitor products, is a function of product positioning. When consumers make purchases, they attempt to match brand image with self-image. The brand, the retail outlet from which it is purchased and its promotion will all have a symbolic value for the customer. How will the benefits of a brand and its protection by a Trade Mark work in practice?

The Dr. Martens Air Cushion sole was developed in post-war Munich for orthopaedic shoes by Dr. Klaus Maertens. With his partner Dr. Herbert Funck, they patented the soles which were the top sellers in the comfort-shoe market in Germany within two years and by 1959, were being exported throughout Europe. The Griggs family became involved in 1960 when the partners wanted to license a company to produce the soles for the British market.

Griggs, which was founded at the turn of the century, was already a manufacturer of army and work-wear boots with a comfort theme. It began to make footwear with the Doc Martens sole, which it branded AirWair and the group's success in selling the shoes led the partners to license Griggs to make the sole for the rest of the world. In the late 1960s no fashionable teenager was properly dressed without a pair of 8 eyelet “Doc Martens Cherry Reds”, but the boots were also being bought in their thousands by workmen and women, sold on their sheer practicability. The combination of durability, comfort and style has seen Dr. Martens footwear gain acceptance by all types of people - from bankers to policemen, rock-stars to nurses. According to a German magazine, Dr. Martens is amongst the 30 best known brands in the world. Despite the fashionable nature of the company’s products, about 30% of all Dr. Martens sold in the UK are sold as workwear.

In the UK the definition of a Trade Mark is: “any sign capable of being represented graphically, which is capable of distinguishing goods and services of one undertaking from those of other undertakings. A Trade Mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging” (Trade Mark Act 1994). This means that the name: Dr. Martens, Doc’s, DM’s, Doc Martens, Dr. Martens Air Cushion Soles etc., as well as AirWair, AirWair with bouncing soles (and device), are protectable as Trade Marks. Additionally, the overall configuration of the product, and the Trade Dress, may be protected through Three Dimensional Trade Mark and Design protection. New advertising slogans may also be regarded as Trade Marks - e.g. “Made Like No Other Shoe on Earth” and protected as such. Further protection can be gained for the following...

  1. Packaging and advertising literature are copyright works.
  2. New design and development in manufacturing processes may be protected through Patent Applications as Inventions.
  3. New elements appearing on the footwear e.g. New Sole Patterns, may be protected through Registered and Unregistered and Two and Three Dimensional Trade Mark protection.

The branding of the footwear was vital in establishing consumer recognition of the Company’s products and the name of AirWair and to indicate that the name could be associated with a reputation for hard wearing, good quality, value for money footwear. Over the years, the increasing importance and value of the AirWair marks as assets of the Company necessitated that Trade Mark protection for both the word and logo forms be sought. Initially, protection was applied for in the UK, but as export markets developed, so did the importance of protecting the AirWair marks internationally for Griggs’ exclusive use.

Now that the Community Trade Mark Office has opened in Alicante, it is possible to apply for a Community Trade Mark which offers protection through the European Union. In addition, the Madrid Protocol provides a means for a single international application to lead to multiple national registrations and the Paris Convention creates a right of priority for a short period after registration of a Mark in another Convention country.

History and protection of the dr. martens trade mark

The Dr. Martens Trade Mark is owned by the German families of the designers of the original Dr. Maertens Air Cushion Sole. The mark is licensed to the R Griggs Group Ltd for its world-wide exclusive use, and has been the subject of Utilisation and Licence Agreements between the respective companies since the 1960s. (Note that the original name Maertens was anglicised as pronunciation difficulties were anticipated in England.)

When production of Dr. Martens began, Trade Mark protection for this mark - as with AirWair (and variants) was required and the German company applied for protection of this mark. All Dr. Martens Air Cushion Soles have borne this Trade Mark. As international markets have been developed, so has the necessity for adequate Trade Mark protection for the core footwear product in the form of word mark protection for the basic and variant marks. Apart from the word mark Dr. Martens, there are other variants such as

Doc’s, DM’s, Doc Martens and the Dr. Martens Resistance Rectangle, which are registered marks. Most of these have been adopted because of the consumer referring to the product under these variants and in the case of the Resistance Rectangle this mark has been applied to many of the classic Dr. Martens footwear styles since 1960.

Griggs wanted to protect its ability to invest in the development of its business through advertising its brand and this investment was secured through the relevant Trade Mark protection. Without protecting and policing its Trade Marks, Griggs would have little security that the AirWair marks could be used exclusively by itself, leading to competitors branding their products using these marks, leading to consumer confusion.

Dr. Martens footwear has a number of distinctive product features, which in Intellectual Property Terms are called the “Get-up”, or more commonly the “Trade Dress”. Trade Dress features are used in much the same way as Trade Marks, in that they are an indicator to the consumer that the products emanate from a single source, giving the consumer certain quality and perception expectations and also evoking the image of the brand. Some of the footwear features which are jealously guarded are, for example:

  • YELLOW WELT STITCH - By using a distinctive yellow thread in the manufacture of Dr. Martens “Z” welt footwear, the consumer has grown to associate this feature with the Trade Marks and therefore the Yellow Welt Stitch acts as a distinguishing feature.
  • GROOVED SOLE EDGE - This appears as horizontal lines around the PVC sole, creating a ridged design and has become another Trade Dress feature.
  • TWO-TONED SOLE EDGE - Found at the point on the sole edge where the welting material meets the PVC sole. This has been used consistently over the years.
  • DMS SOLE PATTERN - The DMS sole pattern has been used since the 1960s.
  • OVERALL CONFIGURATION OF THE 1460 BOOT - The eight eyelet boot with the Trade Dress features outlined above, was initially produced on the 1 April 1960. Its style number refers to the initial production date of 1.4.60.

Problems without protection

Problematic is the issue of copying, a practice that results in the production of a look-a-like product by an unauthorised third party. The copies are usually products, which in the case of Dr. Martens footwear may use dissimilar word and logo markings, although using an identical or confusingly similar Trade Dress to the original. This has become a major issue for the company as its product is associated with fashion and the footwear is sold internationally. The Company enforces its Intellectual Property Right in all countries.

Operating on a global scale produces added complications when attempting to protect Marks in countries not using the Roman alphabet. If the local population cannot read the mark, or pronounce it, a suitable translation into the local language has to be found. It is important to make sure that the translated mark works in the relevant country and not rely only on a translation service to provide a new Trade Mark without testing its reception in the market.

In order to keep a Trade Mark valid, it has to be used regularly and use has to be proved in many of the markets in which application and registration have been filed or granted. There are, however, instances when the brand owner wishes to secure Trade Mark protection in markets where trade is not anticipated. This course of action is in order to prevent third parties from using or applying to register the mark.

Brand extension

As a brand grows in popularity so do the opportunities to license the Trade Mark to third parties, providing permission to another company to produce goods bearing the marks, which the consumer associates with the 'core' products. Licensing allows companies to offer a wider range of products under their Trade Marks, presenting the consumer with a selection of new goods, under the familiar mark. Griggs jealously protect their brand by ensuring careful quality control of the products produced under their Mark is carried out. Griggs began to offer licences for its Trade Marks in 1994, due to high demand for the footwear - brand extension was considered and various product options assessed. Research indicated that the consumer associated the Dr. Martens and AirWair Trade Marks with products such as clothing and accessories, as well as bags, stationery and watches.

After entering into licensing agreements with various companies, Dr. Martens bags, watches and stationery ranges became available. Brand extension though can both enhance the core product through greater consumer allegiance and confidence and can springboard additional sales of the core product. Conversely, if managed badly, the core product may be severely damaged through alienation of the customer if the brand extension goods are of a poor quality or if they do not reflect the values/images of the brand.

The purchase of footwear in the UK reaches nearly £5bn per year, with a large proportion of shoes being imported from low cost producers outside the EU. Competition from these producers has resulted in many UK shoe manufacturers going out of business or seeing their markets gradually eroded.

R Griggs Group Limited, through the successful production of a high quality product that appeals to both the fashion conscious and those seeking comfortable footwear, has survived and prospered. Employing 3,000 in the UK alone and producing 200,000 pairs of shoes per week (10 million pairs per year), the company sees its future as offering further opportunities for growth.

It has done this through a successful branding strategy and the protection of the brand through Trade Marks. This has kept the product distinct in the mind of consumers who recognise it and understand the underlying quality associated with it. Other UK shoe producers have not generally found the same route to success. Moving into international markets and opting for brand extension, the company will be presented with new challenges, which will require the same innovative response as has been seen in the past.