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The Trademark Protection of Country Brands: Insights from New Zealand

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The Trademark Protection of Country Brands: Insights from New Zealand The current issue and full text archive of this journal is available at www.emeraldinsight.com/1753-8335.htm JPMD 1,3 The trademark protection of country brands: insights from New Zealand 292 Magdalena Florek Department of Trade and Marketing, Poznan University of Economics, Poznan, Poland, and Andrea Insch Department of Marketing, School of Business, University of Otago, Dunedin, New Zealand Abstract Purpose – The purpose of this paper is to present the opportunities for and challenges of the trademark protection of country brands. Design/methodology/approach – Insights into the challenges and possibilities of country brand trademark protection are identified using New Zealand as a case study. This evaluation is divided into four sections. In the first section, the relations and differences between brands and trademarks are discussed in the context of the country trademark. Then, possible sources of country trademarks are identified. Next, the benefits and challenges of creating and managing country trademarks are discussed based on the case of the New Zealand Fern Mark. The final section addresses the determiners of country trademark implementation and offers recommendations for country brand managers. Findings – This study makes the case that a nation’s heritage is a rich source of country trademarks. The selection of country trademarks must ensure that the chosen symbol conveys meaning and associations that serve a country’s often broad range of offerings and resonate with a diversity of stakeholder audiences. Practical implications – Governance structures need to be established to manage a country trademark to ensure the country brand’s integrity. This includes a licensing system and protocols to prevent successive governments from altering the brand’s essence which would destroy its equity built up over time. Originality/value – This paper extends the concept of trademarks, once the domain of products and service brands, to the emerging field of place brand management. Keywords Brands, Governance, Trade marks, New Zealand Paper type Case study Introduction Nation brands, images and reputations are of great interest to many countries’ stakeholders. As Anholt (2006) argues, whatever the reason given, most places seem to believe they have an image problem and they often believe creating a brand will solve it. According to Papadopoulos and Heslop (2002, p. 295), a key feature that distinguishes place brands from “traditional” brands is that “those of nations and other Journal of Place Management and places are not directly under marketers’ control” since a country is a public domain. Development “Place brands incorporate no clear ‘ownership’, and hence lack of ownership delimits Vol. 1 No. 3, 2008 pp. 292-306 possibilities for brand management” (Blichfeldt, 2005, p. 399). Therefore, controversy q Emerald Group Publishing Limited surrounds whether it is possible to turn a country into a brand (Blichfeldt, 2005; 1753-8335 DOI 10.1108/17538330810911271 Anholt, 2006), and what is more, whether the country brand in a symbol can be legally protected as a trademark. The aim of the paper is thus to present the possibilities of Trademark trademark protection as a mechanism for enhancing country brands. To achieve this protection of aim, the first part of the paper discusses the relations and distinctions between the commercial and legal concepts of brands and trademarks in the context of country brands country trademarks. Then, various sources of national symbols for constructing a country trademark are presented. Next, the challenges of creating and managing country trademarks are identified based on the case of the New Zealand (NZ) 293 Fern Mark. In the final section, practical implications for decision-makers managing country brands are offered and recommendations are made to improve the effectiveness of this ongoing process. Trademark versus brand Brands and trademarks are terms that are often used interchangeably. The American Marketing Association (AMA, 2006) defines a brand as “a name, term, design, symbol, or any other feature that identifies one seller’s good or service as distinct from those of other sellers. The legal term for brand is trademark”. A trademark is therefore, foremost, a legal concept. The law considers a trademark to be a form of intellectual property while a brand is a much broader marketing concept. According to the OECD (1995) trademarks are an element of “intangible property” that includes rights to use industrial assets such as patents, trademarks, trade names, designs or models, literary and artistic property rights, and intellectual property such as know-how and trade secrets. Specifically, “marketing intangibles” include trademarks and trade names that aid in the commercial exploitation of a product or service, customer lists, distribution channels, and unique names, symbols, or pictures that have a promotional value for the product concerned (OECD, 1995). In intellectual property law a trademark is a unique identifier defined as a word, letter, symbol (logo), number, colour, shape (or, where the legislation of the country allows, sound or smell), or a combination of one or more of these elements. Once a trademark is registered, the w symbol may be legally used with the trademark and the owner has the exclusive right in the defined territory (country where the application was submitted) to use it for any goods or services for which the trademark is registered. Trademark owners can assign or license their registered trademark to another person (IPONZ, 2006). The second difference between brands and trademarks is that a trademark remains valid over time so long as it is renewed and/or used whereas a brand’s profile or positioning may vary over time (Ganguli, 2003). A product or a corporate brand is a much larger concept than a mere trademark, as building a strong brand and establishing the brand equity of a business is a bigger challenge than choosing, registering, or maintaining one or more trademarks (WIPO, 2002). In addition, it is the brand that allows the transformation of essentially functional assets into long-term relationship assets by providing the basis for a psychological connection between the brand and the customer (Haigh, 2006). Finally, a fundamental requirement in trademark law is that a registered trademark designates the owner (“the origin”) of the trademark. A trademark is used to identify the source of a product or service and to distinguish that product or service from other sources (Smith, 1997). This premise causes a lot of problems in using the legal concept of a brand in the case of places. Symbols which have an association with national JPMD heritage or tradition are often seen as something which should be preserved for the 1,3 nation, and that can cause “origin” difficulties for trademark owners (Chan, 2006). In particular, exclusive rights to specific place (country) names are of special concern. For example, as Temes (2003) discusses, the phrase “New York City” probably belongs to the public domain and is considered to be a public entity. However, New York State’s Office of Economic Development owns the rights to the phrase “I love NY” and earned 294 US$322,000 in licensing fees in 2002. A search of the US Patent and Trademark Office reveals that more than 150 organisations already protect New York city as a part of their name (Temes, 2003). The desire to own the right to use place symbols is more and more obvious since franchising and licensing, which are a common way of operating for many industries, and generate profit, are possible to implement because of trademark registration. Brands as well as trademarks provide information about a good’s attributes, a place included. A trademark achieves the highest value and best use in combination with other assets (Seethamraju, 2000). If a brand is a mixture of attributes, tangible and intangible, symbolised in a trademark, the trademark, if managed properly, can create value and influence (Brandchannel, 2006). Thus, it is possible to expect that the combination of a country’s material and immaterial offers, together with a relevant symbol legally protected which encompasses these characteristics, might create a value for customers and, as consequence, for a country. Toward the country trademark To enhance a country’s brand value its trademark should be based on common country associations and symbols that carry desired perceptions. According to Aaker (1996), brand associations are largely aesthetic and experiential and express a set of values that position the brand. Thus, they are tied with the emotional dimension and meaning of the brand. A nation’s cultural heritage, communicated through symbols, emblems, icons and other popular associations, is a potent part of its identity. Collective identification with these symbols built up over time and shared among generations makes them a rich source of trademarks. The powerful messages communicated by national icons and symbols (such as flags, coats of arms, national anthems, emblematic animals, plants, personalities) also create the need for management, at the national level, to prevent inappropriate use that could denigrate or dilute its core meaning. This objective must be balanced against the public’s access to, and ownership of, national symbols, as well as the investment made by commercial interests to promote their offerings that use a distinctive representation of the country’s national icons. A distinction can be made between official and unofficial symbols in terms of their protection and use by the general public on one side, and by certain groups on the other side. Those symbols and icons which countries hold as sacred are usually protected since their commercial exploitation would be considered offensive by a large section of the community. In NZ, for example, these official symbols include the flag, coat of arms, national anthem, Waitangi day, ANZAC day and historic graves and monuments (Ministry of Culture and Heritage, 2006). Due to their role as official markers of national identification, there are a range of national and international legal instruments that restrict their use or registration as trademarks by commercial interests.
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