The first of the week’s sessions: Effective Global Branding: Crossing Cultural and Global Borders was moderated by Sven Klos (Klos Morel Vos & Schaap) with speakers Anamaria Cashman (Playboy Enterprises, Inc.), Paul Rawlinson (Baker & McKenzie), Jennifer Powers (Red Bull GmbH).

Moderator Sven Klos started by speaking of today’s global culture fueled by cross-border applications such as the Internet. He recalled a visit to the former east Germany where it formerly appeared drab and cold in part because there was no advertisements, no branding, no color.

Paul Rawlinson began by recalling the theme of “Breaking Down Barriers” pointing out the challenges trademark owners face when they expand brands away from their “home turf.” Mr. Rawlinson showed slides of several examples of brands that successfully crossed borders (predominately by graphic logos, e.g., the McDonald’s arches). He continued noting that two presently challenging markets in particular because of their different alphabets and cultural values are Russia and China. He then illustrated examples of cases where U.S. or U.K. companies were faced with post product roll-out rebranding because of inappropriate translations of the native language to English, or vice versa. With Chinese for example, not only is the linguistic / phonetic translation important to factor into branding, but the transliteration (letter-by-letter translation) of the Chinese characters is a factor to consider. Using IKEA, PEPSI, and COCA-COLA as examples, Mr. Rawlinson illustrated how these brands had Chinese translations that corresponded to the desired English translation (e.g., IKEA meant “fit for home” in Chinese). He pointed out that it was incumbent on trademark counsel to work with a broad audience, e.g., marketers, translators, and business persons. Using a case example of Starbucks, he noted that as to infringers and copycats, often the fame of the mark would assist in enforcement efforts.

Anamaria Cashman spoke next about the challenges Playboy faced in reaching across cultures by way of case studies in China, Indonesia, and Singapore. She noted that it is important not only to conduct a trademark registrability search, but a “cultural” search when expanding brand lines. She noted that part of the global nature of Playboy – which is marketed in 130 countries – stemmed from its expansion into various consumer areas such as magazines, internet, apparel, radio, and clubs. Apparently, Playboy evokes different images in different cultures, in some cultures, it evokes images not only of women, but of thought-provoking articles discussing current events. For example, in China, Playboy overcame the hurdle that Playboy in China was offensive to cultural norms by convincing, inter alia, government officials that Playboy is a responsible corporate citizen, and intended to bring only high-class apparel to China (of which it is a leading seller). She underscored that not only is it important to research literal and phonetic translations, but to work closely with local counsel and officials. She proceeded to give the case study of Indonesia where there was strong opposition by Muslim groups to the expansion of Playboy into Indonesia. She noted that there were protests, stonings, and obscenity charges against the Editor (on which Playboy prevailed). The magazine is not yet available in Indonesia, but overcoming these obstacles lays the groundwork for its future marketing. Moving next to the case study of Singapore, she noted that although Playboy had no present plans to expand in Singapore, they secured defensive domain name registrations. Next she summarized of the often expensive priorities of protecting a global brand, noting three key areas: protection (e.g., multi-country registrations – including defensive, docketing, and trademark monitoring services), prioritization (e.g., resources, investigations – including with local experts, brand goals – whether cease & desist actions, criminal investigations, or otherwise, internal teams, hidden costs – notably with respect to local customs officials and practices, and sharing the good news of enforcement efforts to inside and outside counsel), and partnerships (”partnerships, partnerships, partnerships”).

Jennifer Powers spoke next regarding IP management for a global brand whose presence extends to 146 countries. Part of this expansion is due to reaching out to consumers in varying contexts, e.g., Red-Bull sponsored events. She went on to highlight several critical aspects of global brands, namely, strong management support (e.g., ownership standing by the brand), a clear strategy and well-defined goals of classes of goods and services communicated to insiders, precise docketing, clear communications, a committed global team, a clearly defined budget, and flexibility in tackling legal and cultural developments. Mrs. Powers proceeded to highlight several goals of Red Bull, namely, world-wide recognition of the mark, world-wide coverage, maintenance of merchandising and licensing, consolidation of marks, and effective enforcement and use of appropriate brand-management tools, (e.g., marks, uses, survey evidence). She next discussed the company’s prosecution strategy, namely, defining the classes of goods and service, re-applications, renewals, new mark searches, and a degree of required flexibility with non-traditional marks (e.g., the blue/sliver color combination which Red Bull has defended in some contexts). She specifically mentioned that with regard to prosecution duties counsel should collect evidence of use on at least an annual basis (which in turn can be used on affidavits), conduct annual legal and consumer market surveys, and continually re-evaluate the previously defined branding strategy. Regarding a trademark conflict strategy, Mrs. Powers noted in closing that it was the policy of Red Bull to opposed identical marks in all classes, and confusingly similar marks incorporating part of the Red Bull mark.

In sum, the speakers outlined the many surmountable challenges facing brand owners expanding into new and global markets.