Posted by Scott Buchanan, Partner DLA Piper Australia



In the battle for co-existence between national brands and private brands (in Australia, known as home or house brands), several truths emerge:

  • National brand owners have to accept competition represented by emergence of home brands and furthermore, that home brands can often quite lawfully borrow from, and leverage off, the look and feel and get up of a national brand.  
  • The ability for a national brand owner to successfully enforce its intellectual property rights will typically turn on whether the company has taken positive steps of registering its trade mark rights and demonstrating ownership of other packaging rights – eg. trade dress, copyright.
  • Proof of ownership, particularly registered rights, will give a trade mark owner the necessary ‘cut through’ to force a meaningful conversation with private brand owners.
  • Any aspect of packaging which you regard as your valuable IP – eg colours, shapes, layout and design – should be registered as individual trade marks. The benefits of registration, when it comes to enforcement and protection of your patch, far outweigh relatively minor costs of registration.

During a constructive INTA panel discussion of representatives from manufacturers, private and national brand owners, valuable insight was provided today into the challenges for business in adopting new brand names which don’t infringe upon third party rights. Target‘s in-house counsel revealed that several hundred brand concepts were considered and searched before settling on their UP and UP brand.  Unless you, as a national brand owner, take the positive steps of registering your trade marks then your marks will not be revealed on these searches and a battle with a private label inevitably looms.

Messages we commonly emphasise with our clients and reinforced in today’s discussion included:

  • Don’t expect to be able to rely on unregistered rights in attacking a private brand (in any event, you have to prove reputation and confusion resulting from competitor’s use – a difficult, uncertain and expensive exercise).
  • If you regard the brand as your property, then protect it through registration and labelling on your product.  Think beyond the key brand to individual elements, logos, colours, motifs etc
  • Registration of each individual element of your brand will make it more difficult for ‘would be’ infringers and much easier for inhouse counsel to have the conversation with, and appease, thier aggressive internal business units and marketing folk.
  • Beware of legal authority here in the US (similar rational applies in Australia), “just because it is protectable, doesn’t mean it is protected”.
  • Letters of demand referring to relevant registered trade mark rights will produce the right outcome with private brand owners who, in the case of Target, reiterated their commitment to respecting registered third-party trade mark rights.

For owners of ‘would be’ private brands, a helpful message included the importance of adopting a common look and feel, get up, trade dress etc across your entire product range. Once adopted and implemented then it will be easier (certainly more credible) to answer any infringement claim asserting the infringement can be explained by legitimate application of the ‘common’ look and feel and that the adoption of the branding was not a slavish copy of the national brand’s packaging.