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.

Continue Reading Trademark Co-existence Between National Brands and Private Brands