Onkvisit S., Shaw J. International Marketing: Analysis and Strategy

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BRAND CHARACTERISTICS

A good brand name should possess certain charac-

teristics, and such characteristics are thoroughly

discussed in most advertising and marketing text-

books. In essence, a brand should be short, distinc-

tive, easy to pronounce, and able to suggest product

beneﬁts without negative connotations. In the inter-

national arena, these qualities are also relevant.

In selecting a brand name, a marketer should

ﬁrst ﬁnd out whether a brand name has any nega-

tive connotation in the target market. One company

in the business of brand-name selection felt that

Probe was an inappropriate name for Ford’s car,

having an unpleasant gynecological reference. One

reason why Japan’s Daihatsu Motor Co. Ltd. did not

succeed in the USA may have to do with its name.

According to research, many American consumers

thought that the company was Korean, and it was a

negative association.

An international brand name should reﬂect the

desired product image.Toward this end, consumer

perception should be taken into account. For inst-

ance,worldwide consumers usually perceive French

perfumes to be superior, and French-sounding

names for this kind of product may prove beneﬁcial.

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BRANDING AND PACKAGING STRATEGIES

Figure 11.7 Wyeth: a

corporate name change

Likewise, good watches are perceived to be made in

Switzerland, toiletries in the USA, machinery and

beers in Germany, and so on. If appropriate, brands

should reﬂect such images. Russian-sounding names

may be used to position a vodka brand positively.

Smirnoff originated in the Soviet Union but has been

made in the USA for decades – a fact not known by

many Americans.

Marketers may want to consider foreign brand-

ing which is a strategy of pronouncing or spelling a

brand name in a foreign language. Foreign branding,

by triggering cultural stereotypes, may inﬂuence

product perceptions and attitudes.As shown in one

experimental study, a brand name’s French pronun-

ciation affects the perceived hedonism of the prod-

ucts as well as attitudes toward the brand name and

the brand. Even with the presence of direct sensory

experience, French branding still changes percep-

tions of a product.

One way of creating a desired image is to have a

brand name that is unique or distinctive. Exxon has

this quality. Aprica, a status-symbol stroller, is also

unique in several respects. In choosing the name,

Kenzo Kassai, the company’s owner, wanted some-

thing cute like “apple” for his folding stroller. During

a trip to Italy, he found apri – an appropriate name

for something that opens and closes.As “stroller” in

Japanese is translated as “baby car,” the ca syllable

(for “car”) is a natural ending. In effect, Aprica is a

blend of English, Italian, and Japanese, meaning

“open to the sun.”

A unique name often renders itself to graphic

design possibilities, another desirable feature of

a trademark. Exxon was chosen because of its

distinctiveness, usefulness in work markets, and

graphic design possibilities.After rejecting Hot-Line

and Sound-About for not being appealing, Sony

selected Walkman because of the distinctive logo-

type with two legs sticking out from the bottom of

the letter A in walk.

An international product should have an inter-

national brand name, and this name should be

chosen with the international market in mind.

When possible, the name should suggest signiﬁcant

beneﬁts. Although Emery Air Freight ships every-

thing large and small anywhere in the world, its

name gave no indication of this advantage.To over-

come a secretary’s fear of shipping a letter to foreign

countries with a carrier specializing in freight, the

corporate name was changed to Emery Worldwide.

Not wanting the trademark to be closely identiﬁed

with USA, US Rubber adopted Uniroyal to reﬂect

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Unilever PLC, the Anglo-Dutch consumer goods giant,

has a bulging brand portfolio, and it wants to get rid

of 1800 marginal brands so that it can focus on some

400 top brands (e.g., Lipton tea and Calvin Klein

fragrances). Its Persil laundry detergent in Britain is

called Omo elsewhere. Another interesting case is

its household cleanser sold in sixty countries. The

company uses either Jif or Cif, depending on ease of

pronunciation in a local language. Thus it was

launched as Jif in England in 1974, and Malaysia and

Australia also got Jif. But in France and thirty-eight

other countries, it is Cif. To add to the complexity,

the brand was called Vim in Canada, Viss in Germany

(for trademark reasons), and Vif in multilingual

Switzerland. Neither Jif nor Cif is sold in the USA

where Procter & Gamble markets Jif peanut butter.

To simplify its brand names sold in various countries,

Unilever has changed the name of Jif to Cif in the UK,

even though Jif was the company’s best-selling house-

hold cleanser there. Interestingly, the two names have

traded places before. In 1998, both Jif in Greece and

Vif in Switzerland became Cif – without much trouble.

The company did not anticipate much problem in

England either. The British focus groups were unim-

pressed by the name change; they neither loved nor

hated the new name.

Source:

“Unilever Renames Cleanser to Simplify Brand,”

Asian Wall Street Journal

, December 28, 2000.

MARKETING STRATEGY 11.1 JIF VS. CIF

its diverse businesses around the world.The former

French-born chairman of Revlon viewed Amoresse

as unsuitable for a fragrance for the international

audience; consequently, the name was changed to

Jontue.

One way of making a brand name more inter-

national is by paying special attention to pronunci-

ation. Many languages do not have all the alphabet

characters, and the English language is no excep-

tion. The Spanish alphabet does not include the

letter w, and the Italian language has no j, k, w, or

y. Exhibit 11.2 examines the vowels and consonants

that pose pronunciation problems to the Chinese.

Stenographers can easily see why many American

words are misunderstood overseas because short-

hand notations are based on how a word is pro-

nounced and not on the way it is spelled. In general,

any preﬁx, sufﬁx, or word containing such letters as

ph, gh, ch, and sh invites difﬁculty. Phoenix sewing

machines provide a good example – it is inconceiv-

able to many foreign consumers how the brand can

be pronounced fe-nix and not pe-nix or fo-nix. It is

difﬁcult to understand why the o and not the e is

silent in this case.Also, if the o is silent, why should

it be in there in the ﬁrst place? By the same token,

people in many countries do not make any distinc-

tion, as far as pronunciation is concerned, between

the following pairs: v and w; z and s; c and z; and

ch and sh. A similar lack of distinction often exists

with the trio of j, g, and y. The letter c in English

words can be confusing because it can be pro-

nounced like an s, as in the words audience and fra-

grance, or like a k, as in the words cat and cost.The

letter y also poses some problems because it can

sound like an a at one time and an i at another.

Consider the hair product Brylcream. Foreign con-

sumers may think that the e is silent and that the y

should sound like a long i.A simple test could have

easily revealed any pronunciation difﬁculties. Figure

11.8 shows how Hoechst tried to overcome the pro-

nunciation difﬁculty while producing a promotional

message at the same time.

Finally, the legal aspect of branding deﬁnitely

cannot be overlooked. A name that is similar to

other ﬁrms’ trademarks should be avoided.Toyota’s

Lexus was sued in 1988 by Lexis, which is Mead

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BRANDING AND PACKAGING STRATEGIES

There are four Romanized Chinese consonants which

cause pronunciation problems. Here is a guide to

pronouncing them accurately:

■

equals the

ar or i

; thus “cai” (ﬁnance)

sounds like “tsai”

■

equals the

ina or

ile; thus

Qin

Dynasty) sounds like

chin

■

equals the

ine or

eet; thus xi (west)

sounds like

shee

■

equals the

im or

ig; thus Zhang (a

surname) sounds like Jang

Chinese vowels are broader and longer than American

vowels, otherwise they are very close in pronunciation,

except for the Chinese

as in the names Hebei and

Henan.The Chinese

is somewhat like the

other

Unless otherwise indicated, two Chinese vowels

placed next to one another are pronounced as one

sound, i.e. as a dipthong. The sister state of Illinois,

Liaoning, is a two syllable word –

lyao-ning

Chinese surnames come ﬁrst. The given names

are not hyphenated in modern Chinese. Thus Huan

Zhirong (the Chinese consul general) should be

addressed as Mr. Huang.

Sometimes, Chinese, especially those from Beijing,

have a tendency to add an

sound at the end of

certain words. Don’t be confused by it. It is analogous

to a Harvard

Source:

US Department of Commerce.

EXHIBIT 11.2 “A BRIEF GUIDE TO A PRONUNCIATION OF

ROMANIZED CHINESE”

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Figure 11.8 Overcoming a pronunciation difﬁculty

Source:

Reprinted with permission of Hoechst Celanese Corporation

Data Central Inc.’s information retrieval service.

Lexus was originally prevented from using the name

nationally in the USA until it won a decision from

an appeals court. Likewise, Altima Systems Inc., a

California computer business, wanted to stop

Nissan from also using the name before ﬁnally

reaching a conﬁdential agreement in 1992. Directed

Electronics Inc., another California automobile

security company, owns the name “Viper”for its line

of automobile security alarm systems. A legal chal-

lenge followed when Chrysler started using the

name for its Dodge car. Both sides reached an out-

of-court settlement in 1992, agreeing to coexist.

BRAND PROTECTION

The job of branding cannot be considered done just

because a name has been chosen. The brand must

also be protected (see Marketing Ethics 11.1 and It’s

the Law 11.1).The ﬁrst protective step is to obtain

trademark registration (see It’s the Law 11.2).

Because of the cost involved, it may be neither prac-

tical nor desirable to register the name in all coun-

tries, especially in places where demand seems

weak. It is inexcusable, however, not to do so

in major markets. Even Queen Elizabeth II has

registered her two private homes (Sandringham in

Norfolk and Balmoral Castle in Scotland) as trade-

marks so that she can sell her own merchandise

under the brand names of Sandringham and

Balmoral.The names have been registered with the

British Trade Marks Registry and represent the ﬁrst

time the Queen has exploited the names of her

houses for commercial purposes.

There are international arrangements that sim-

plify the registration process. The Paris Conven-

tion (International Convention for the

Protection of Industrial Property) is the

most signiﬁcant multilateral agreement on trade-

mark rights because it establishes reciprocity, which

allows a foreign trademark owner to obtain the

same protection in other convention member coun-

tries as in the owner’s home country.Although pre-

venting discrimination against non-nationals, the

degree of protection varies with individual national

laws. In the case of the Madrid Convention,

nationals of the participating countries can have

simultaneous trademark ﬁling among all member

countries. The Trademark Registration Treaty

(TRT) allows a company to ﬁle for trademark

protection with the International Bureau of the

World Intellectual Property Organization (WIPO)

without being required, as in the case of the Madrid

Agreement, to have a prior home registration.

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Starbucks Corp. is known for its round green logo, and

the logo has the words “Starbucks Coffee” in block

white letters against a green background. Starbucks

ﬁled a temporary injunction against Doutor Coffee, a

Japanese competitor, claiming that consumers were

confused by a similar logo. Doutor uses an oval-

shaped green logo and signage for its Excelsior Café

chain, and the logo also uses block white letters that

say Excelsior Café Espresso against a green back-

ground. While Starbucks has a picture of a goddess

(Seiren) in white against a black background,

Excelsior Café has a red, white, and green picture of

a steaming cup of coffee in the middle of its logo,

against a black background.

HaidaBucks Café is a modest diner in the remote

islands off frigid Canadian coasts. The last thing it

expected was to receive a letter from Starbucks

threatening a lawsuit. Starbucks alleged that the

eatery’s name posed a challenge to its trademark.

While Starbucks found the word “Haida” to be

acceptable, it claimed that “Bucks” is a clear associ-

ation with its trademark. Bucks refers to young men

in the culture of First Nations, and one of the diner’s

owners is a member of Haida First Nation.

Source:

“Starbucks Warns Diner Over Name,”

San José

Mercury News

, April 17, 2003.

MARKETING ETHICS 11.1 THE “BUCKS” STOP HERE

Other treaties include the Central American

Arrangement and the African Intellectual

Property Organization (OAPI).The Arrange-

ment of Nice [France] Concerning the

International Classiﬁcation of Goods and

Services to Which Trade Marks Apply is the

most widely used trademark classiﬁcation system.

Adopted by the USA and some sixty countries, the

system has thirty-four product and seven service

categories.

The USA has two registers. The Principal

provided for by the Supplemental Register.A trade-

mark owner who is unable to place a mark on the

Principal Register may be able to do so later when

the mark has acquired distinctiveness over the years.

The Supplemental Register is still useful for US

marketers who must obtain registration in the home

country before becoming eligible to do the same in

host countries.

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Apple Corps Ltd. started out as Apple Records in the

mid-1960s. The company was formed by the Beatles

to distribute their music, and the trademark was reg-

istered in nearly all countries where the Beatles’ music

was sold.

Steve Jobs and Steve Wozniak formed Apple

Computer in 1977. The founders chose the Apple

name because they wanted their company to be listed

ahead of rival Atari Corp.in the telephone book. Apple

Computer’s logo is a multicolored apple with a bite

taken out of it. Apple Records, on the other hand, has

a logo which is a shot of the exterior of a green apple

and the inside of an apple sliced in half.

Apple Corps asserted its right to the trademark

and wanted to collect royalties on Apple Computer’s

computer sales. The lengthy negotiations led to an

agreement in 1981. Apple Computer agreed to pay an

undisclosed sum for the right to use the Apple name

on apparel, personal computers and related equip-

ment “that didn’t synthesize or reproduce music.”

The legal problem resurfaced in 1984 when the

Macintosh computer was introduced because the

Mac had a semiconductor chip that made it possible

for the machine to record and synthesize sound. In

1988, Apple Corps claimed that the Macs were

musical instruments and demanded royalties from

Apple Computer.

Apple Computer counterattacked by ﬁling legal

actions in many countries to have Apple Corps’ trade-

mark cancelled or declared invalid based on the time

that has elapsed since the breakup of the Beatles.

Apple Corps, however, was able to obtain an injunc-

tion from the British court to stop Apple Computer

challenging the validity of Apple Corps’ trademark

country by country. According to Apple Corps’ argu-

ment, the 1981 settlement required the computer

ﬁrm to respect the validity of the Beatles’ trademark

in other countries and to recognize British law as

the ultimate authority on the matter. Apple Corps

wanted tens of millions of dollars in royalties, inter-

est, and legal fees. While continuing its legal ﬁght,

Apple Computer wrote off $38 million in 1991 as

a reserve for a lawsuit against it by Apple Corps.

Later, the two companies signed an agreement which

speciﬁed the rights each would have to use the Apple

trademark.

Now that Apple Computer has got into the music

business in a big way with its iTunes Music Store and

iPod music player, Apple Corps is back to sue for

another trademark infringement. Apple Computer

issued a written statement:“Unfortunately, Apple and

Apple Corps now have differing interpretations of this

agreement and will need to ask a court to resolve this

dispute.”

Sources:

“You Say It’s Your Trademark,”

San José Mercury

News

, October 27, 1990; “Apple Against Apple,”

San José

Mercury News

, February 23, 1989; “Let It Be? Not on Your

Life,”

Business Week

, August 5, 1991, 31; “The Long and

Winding Trademark Dispute,”

San José Mercury News

September 13, 2003.

IT’S THE LAW 11.1 YOUR APPLE OR MINE?

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Practically anyone can ﬁle for and own a registered

trademark for almost every good or service imagin-

able. A registered trademark provides public notice as

to the origin and source of a product or service and

establishes a property interest.

Costs

Costs for ﬁling a single class trademark application

vary, but usually range from $800 to $2,000 for a

smooth ﬁling with few obstacles to publication and

registration. To minimize your costs, bear in mind

the range of products or services you wish to use the

trademark with and a good idea of what you want

the trademark to look like. In addition, if there is

a design element to your mark, have the image on a

transferable medium, such as a disk.

Most important to cutting costs is to have some

idea whether you are the only user of the proposed

trademark. In fact, the most common but easily avoid-

able legal obstacle is when someone else has previ-

ously ﬁled for, or holds, a registration to the same

mark as yours for the same or similar goods or ser-

vices. To aid your attorney, you can easily conduct

what is called a “common law” search by searching

the US Patent and Trademark Ofﬁce (USPTO) online

trademark database (www.uspro.gov), surﬁng the

Internet, checking phone books, trade journals and

other product listings, such as the

Thomas Register

Filing process

The trademark application process begins by ﬁling

with the appropriate government authority. The

process is called “prosecuting a trademark” and

entails communication between the trademark author-

ity and your representatives. Following the ﬁling, the

application is reviewed by an examiner.Once the exam-

iner ﬁnds that the application has no defects, or all

defects have been properly addressed, the application

is passed for publication. It is rare for a trademark

application to have no defects. If detects are found, the

examiner issues an ofﬁcial report or “action to the

attorney of record”detailing the defects and statutory

deadline for response. In many countries, an examiner

is obligated by law to issue at least two actions before

making a rejection ﬁnal. When the corrective actions

are not sufﬁcient and the rejection by the examiner is

made ﬁnal, only an appeal will get the mark reviewed

again.

However, if all defects are resolved, the application

is passed for publication, which may take several

months. Depending on the country, the mark is pub-

lished in the ofﬁcial trademark reporter or a time

period allowed for the public to submit comments. If

comments concerning your mark are received, they

will be considered before the mark can continue. If

the mark passes publication unscathed, it will move

on to registration.

Once registered, the mark can be safely marked as

registered by using the registration symbol or the ®

as a superscript to your mark.This demarcation gives

notice to the world that you are rightfully using the

word, phrase or design as a lawful trademark for the

goods or services to which it is attached.

Maintenance of trademark

Continued maintenance of your trademark registra-

tion is an important responsibility of trademark own-

ership. Careful attention should be paid to deadlines

for such ﬁlings, since the dates differ from jurisdiction

to jurisdiction. Many businesses not only maintain

the registration of their trademarks in use, but also

actively protect their marks from improper use by

other entities.These trademark owners do so by hiring

law ﬁrms or “trademark watch” ﬁrms to ensure that

no one except authorized users is using their trade-

marks in conjunction with certain goods and services.

Source:

Jaylene M. Sarracino, “Small Business Primer

to Filing for Trademarks in a Foreign Country,”

Export

America

, March 2001, 16–17.

IT’S THE LAW 11.2 TRADEMARK REGISTRATION

The courts have developed a hierarchy of regis-

tration eligibility. Moving from highly protectable

to unprotectable, these categories are: fanciful

(Kodak), arbitrary (Camel), suggestive (Eveready),

descriptive (Ivory), and generic (aspirin). In

general, for a trademark to be eligible for registra-

tion, it must be “distinctive” or, if not, must be

“capable of being distinctive.”

A fanciful mark is a term coined solely for the

purpose of identifying a particular product. An

arbitrary mark is an ordinary word that is used

on a product in a totally nondescriptive way.A sug-

gestive mark subtly indicates something about

a product, and consumers must thus use their

imagination to understand that the mark represents

a product’s characteristic. A descriptive mark,

in contrast, immediately conveys, without requir-

ing use of imagination, a product’s characteristic,

quality or feature. Interestingly, pharmaceutical

companies are quite good at creating fanciful marks.

Based on the total cost of direct-to-consumer adver-

tising, the top ten are: Nexium, Vioxx, Celebrex,

Viagra,Allegra,Advair Diskus, Zocor, Paxil, Zoloft,

and Zyrtec.

Although a valid brand name can suggest or

imply a product’s beneﬁts, it cannot merely describe

the fact or the product. A suggestive mark is regis-

trable, but a descriptive name is not legally accept-

able unless it has acquired distinctiveness through

long-continued exclusive use. Even if the descrip-

tive mark might somehow have been registered, the

mark can still be cancelled for lack of distinctive-

ness. Of course, it is not always easy to distinguish

a suggestive mark from a descriptive mark.

Weedless, as a lawn-care product, may be either

suggestive or descriptive.

A generic term merely identiﬁes the product

rather than the maker of that product. As such, it

receives no protection and cannot function as a

trademark. Labatt, a Canadian brewer, attempted to

win US trademark protection for the name “ice

beer” by claiming that it invented the manufactur-

ing process. Anheuser-Busch Cos. sued and was

awarded $5 million in punitive damages when a St.

Louis jury ruled that ice beer was not a trademark.

The policy of the US government is to contest

applications for generic trademarks abroad (e.g.,

Wash-and-Wear, or such foreign variants as Lava y

Listo). If allowed to be registered, such trademarks

could create signiﬁcant problems in international

trade. A US exporter, for example, will ﬁnd it

impossible to use common product names in adver-

tising abroad without the risk of being sued for

trademark infringement, or the exporter may ﬁnd

that the goods are refused entry into a foreign

country altogether.

Most countries do not require the display of a

trademark in a speciﬁc language or the translation

of that trademark. However, to be registered, a

foreign trademark may have to be written in a local

language in such a way as to give the equivalent pro-

nunciation. China requires a trademark to be dis-

played in Chinese characters. Coca-Cola, depending

on a group of Chinese characters used, may have the

right sound but the wrong interpretations.The orig-

inal registered characters (Koo-kah- koo-lah, when

translated, mean either “a wax-fattened mare” or

“bite the wax tadpole.”The company then varied the

new characters slightly to read Kah-koo-kah-lah,

which translates as “May the happy mouth rejoice.”

Unlike patents, trademark registrations can be

renewed indeﬁnitely.To keep registrations in force,

trademark owners are required to pay an annual tax

or maintenance fee in most countries (though not

in the USA).The technical requirements must also

be observed. Some countries (e.g., Australia) allow

the fees to be paid by a foreign trademark owner

residing abroad or by the owner’s representative/

agent in a third country. In other countries (e.g.,

Brazil), the fees may be paid by only a local or

domestically domiciled representative/agent.

Politics may make registration and maintenance

of a trademark difﬁcult. Most US companies have

lost their trademarks in Vietnam due to invalidation

of those trademark registrations which were

obtained in South Vietnam before 1975 and which

were not re-registered in the Socialist Republic of

Vietnam by 1982.While McDonald’s registered its

trademark in South Africa in 1968, the company

did not open a restaurant there due to international

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economic sanctions.According to South African law,

a foreign company could lose its right for not using

the trademark for ﬁve years. As a result, when

McDonald’s ﬁnally entered the market in 1995, a

local court ruled that the company did not have an

exclusive right to its various trademarks. In fact,

Dax Properties, which opened its own MacDonald’s

hamburger outlet there selling such things as Little

Mac, even tried to bar the real McDonald’s from

using the name.Under international pressure, South

Africa passed a new law in 1995 to conform to

international law and to offer protection to world-

recognized names.

Registration by itself does not offer automatic

or complete protection. Other legal requirements

must be met in order to maintain copyright. Use is

a universal requirement. In China, publication,

advertising, and exhibiting a product with the trade-

mark all constitute use. To establish use in most

countries, a manufacturer must sell or make that

product in the intended market.

The legal procedure to acquire and maintain a

trademark varies from country to country.Whereas

some countries recognize registration but not prior

use,other countries do exactly the opposite. In most

countries, a company can register a mark subject to

cancellation if that mark is not used or continued to

be used within a reasonable period of time. The

failure to register, even with actual prior use, may

force the company to forfeit its rights to another

person who registers the same mark later but before

anybody else.The ﬁrst user can be held to ransom

in this way.

Going back as far as the 1870s, trademark rights

in the USA were based on the “no trade, no trade-

mark” premise. Until recently, the US Patent and

Trademark Ofﬁce was practically alone in the world

in requiring a potential mark owner to put the

trademark into interstate or foreign commercial use

ﬁrst before it could even be registered. The US

Trademark Act of 1946 (the Lanham Act) has

been updated, and several changes have been made.

One change involves intent-to-use trademark appli-

cations; the change permits companies to ﬁle an

application based on projected future use. Now a

declaration of a bona ﬁde intent to use the mark in

commerce is sufﬁcient. A trademark registration is

subsequently issued when the applicant ﬁles a state-

ment showing evidence of actual use of the mark in

commerce.To demonstrate use of the mark, speci-

mens in the form of containers, labels, tags, or dis-

plays associated with the goods must be ﬁled.There

is no penalty for reserving names that are never

actually used. The second change is the construc-

tive-use provision. For goods or services speciﬁed

in the Principal Registration, an applicant receives

a nationwide priority effect as though the applicant

had used the mark throughout the nation as of

the ﬁling date. The deﬁnition of “use of the mark”

has been changed to require that use be in the

ordinary course of trade, and token use is prohib-

ited. To reserve a mark, the intent-to-use applica-

tion becomes the sole avenue. Finally, the term of

federal registration has been reduced from twenty

to ten years to clear out trademarks no longer used.

Although a single use of mark may be adequate

to register the mark, a company must exploit the

mark commercially in good faith to prevent its

loss.

The rationale is to prevent a company from

abusing the law to its advantage when the owner has

no intention of using the trademark other than to

bar potential competitors with genuine interests

from using a competitive tool. An example is Snob

perfume, a name owned in France by Le Galion, a

French company, and in the USA by Jean Patou, an

American company. Le Galion was able to challenge

Patou’s rights successfully because Patou (1) sold

only eighty-nine bottles of Snob perfume in twenty-

one years, (2) never supported the product with

promotion, and (3) made only $100 in gross proﬁt.

Thus Patou was suspected of registering the name

just to bar a potential competitor from entering the

market.

The quickest way to lose a trademark is by not

using it. Failure to use a registered trademark for

three years terminates all rights in China. In the case

of South Korea, nonuse after a period of one year is

grounds for cancellation of registrations. In Central

and South America, due to inﬂation,currency deval-

uations, and political uncertainty, a manufacturer

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BRANDING AND PACKAGING STRATEGIES

may ﬁnd it difﬁcult to maintain operations there.

However, the company risks losing its trademark

if it stops the business activities. It is thus wise to

consider some temporary licensing agreements

with local ﬁrms until the situation improves. By

doing so,brand awareness and trademark ownership

are sustained. This is exactly what some inter-

national ﬁrms did while being forced to retreat

from South Africa at the height of the anti-apartheid

movement.

Another caveat is to make sure that the brand

does not become so generic that it is identiﬁed with

the product itself. A loss of trademark can occur if

the name becomes part of the language; that is,

when members of the consuming public use the

brand name to denote the product or its common

function rather than the producer of the product.

Yo-Yo (a foreign trademark), Roquefort cheese, and

Champagne are proprietary names in France but

generic names in the USA. The reverse is true of

Ping-Pong, a US-registered trademark that is a

generic name in China for table tennis. In Japan,

there is no word for vulcanized rubber, and the

Goodyear name is used to identify this product.

Cyanamid has had to ﬁght to keep Formica from

denoting all plastic laminate or laminated wood.

Bayer’s loss of the Aspirin trademark in the USA was

due partly to the anti-German sentiment during

World War II and partly to its failure to create a

generic word for the product, whose chemical name

is acetylsalicylic acid. Bayer would have been on

more solid legal ground if it had established a

generic term for household use (e.g., headache

tablet or pain relief tablet).

To avoid this problem of a brand name becom-

ing a generic name, a ﬁrm must never use the brand

name in a generic sense (i.e., using it as a verb

or adjective to denote the product). Promotional

materials should reﬂect the proper usage, and the

public should be informed accordingly. Willy

Motors always emphasizes that Jeep is a trademark

and uses an advertisement to inform consumers

not to use Jeep as an adjective (e.g., jeeplike, jeepy,

or jeep-type), a verb (e.g., jeep around or go

jeeping), a plural (e.g., jeeps), or a generic without

the capital J. In the Philippines, however, Jeep has

become a generic name, and people there use pri-

vately owned small buses known as jeepnies for

transportation. Jeep is now a registered trademark

of DaimlerChrysler.

It is not legally sound to combine trademarks. It

may seem unlikely that Honda will have trouble

with its Honda Accord and Honda Civic marks, but

the fact remains that the second mark (Accord,

Civic) is in jeopardy through inference that it is the

product’s generic name.The public may thus assume

that manufacturers other than Honda also make

Accord and civic cars.

Tabasco provides a good illustration of the

various legal issues that have been discussed. Unlike

Worcestershire sauce and soy sauce, Tabasco is a

properly registered trademark. It is the name of a

river and a state of southern Mexico. One may ques-

tion how a geographic name could ever have been

accepted for registration, since the name is not dis-

tinctive. The answer is that the name was capable

of being distinctive and did become so because it

has been used continuously and exclusively by the

manufacturer for a long time. Thus, the name has

become associated with this particular company.

Furthermore,Tabasco is the ofﬁcial botanical name

of the hot red peppers, but those peppers were actu-

ally named for the sauce (i.e., product) and not the

other way around.Tabasco is aware that consumers

might use the brand to denote the product (i.e., hot

sauce) rather than the marker of the product. It has

thus hired two legal ﬁrms to police the world for

any misappropriation of the trademark. Its vigorous

enforcement enabled it to defeat B.F.Trappey Sons’

legal bid for the right to use the word.

To hold the legal rights to a registered trademark

is one thing, but to prevent others from illegally

using it through counterfeiting is another matter

altogether. In fact, counterfeiters, though acknow-

ledging the illegality of the activity, may see nothing

morally wrong with the activity. In China, the basic

cultural values relevant to counterfeiting are neutral

– it is not a violation to copy someone’s ideas. Great

artists’ works, for example, are copied as a sign

of respect.

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BRANDING AND PACKAGING STRATEGIES