Commentaries on university brand management tend to focus on ownership in terms of attitudes of key stakeholders – prospective students (and their parents), existing students, alumni, academics, staff and partners. Clearly some of these groups will have a sense of ‘ownership’ of the brand: an emotional connection based on their perceptions and experience of its essential qualities, heritage and culture, which should not be ignored. However that is not legal ownership.
To secure legal protection for their brands, universities should not lose sight of the intellectual property rights involved. With increasing competition some are investing heavily in brand development to achieve positive distinctiveness in a crowded market. They need to safeguard their investment by securing the best possible legal protection, and by actively managing their brand.
Brand names are protected legally either by way of trade mark registration or through goodwill belonging to their owner – so-called common law trade mark rights or rights under the law of ‘passing off’.
The main advantage of relying on registration rather than passing off is that registration offers exclusivity to the brand owner in the registered territory. It is also easier to take legal action against infringers with a registered mark. A person relying on passing off has to prove that they own the brand by showing that they have properly established (or acquired) the goodwill. Passing off rights will also be geographically limited to the area or region in which the brand has been used, whereas a trade mark registration will cover a whole territory (eg. the UK).
While these hurdles may not be too onerous for an established institution, the name associated with a new project could be harder to protect, because there may not have been time to develop a reputation and goodwill in it. It is far better to register a new brand name early on, not least because the registration process itself enables the brand owner to check for conflicts, ensuring that the name is genuinely available and capable of being registered.
A surprising range of brand features can be registered including sounds, smells and colours, but the most common trade marks are names, graphical designs and logos. Certain types of mark, which are not sufficiently distinctive, or are too generic or purely descriptive, are not registrable. Trade marks are registered by reference to classes of goods and services. For universities, the most common classes will be those relating to educational services (class 41), scientific equipment (class 9) and scientific/research/technical services (class 42).
A trade mark registration is potentially the most long-lasting of all intellectual property rights – as it will continue indefinitely provided the owner pays the renewal fees every 10 years and no one challenges it for lack of distinctiveness. Some trade marks have lost their distinctiveness, for example, ‘Sellotape’ has become another word for ‘adhesive tape’ rather than identifying its brand, and so is no longer a registered trade mark. However others like the Bass logo, the earliest mark registered in the UK in 1876, continue in force.
With increasing competition some [universities] are investing heavily in brand development to achieve positive distinctiveness in a crowded market. They need to safeguard their investment by securing the best possible legal protection, and by actively managing their brand
In addition to the trade mark rights in logos, there is also likely to be copyright in the artistic work comprising the logo. A university commissioning artwork for a logo from an agency should ensure that it obtains a written assignment of the copyright rather than depending on the erroneous but commonly held assumption that if they pay for the work then they ‘own it’. In exceptional cases the courts have helped brand owners take ownership of their brand identity in this situation, but that is an expensive and uncertain road to take. It is far better to secure a formal written assignment, which puts the matter beyond doubt.
British universities’ attitudes to the registration of their brand names vary enormously. The UK register of trade marks reveals that while some have as many as eight separate registrations of their name or logo (in some cases combining the name with a graphical design), others have none at all.
Some register in a vast array of classes including leather goods, furniture, household goods, textiles and clothing, as well as the more obviously relevant classes relating to education, to which others confine themselves. This may arise from the different expectations in regard to the commercial exploitation of university brands – with some seeing the possibility of brand extension into merchandise and commercial activities. However, given that when applying for registration of a mark the brand owner has to declare a genuine intention to use the marks for the goods and services specified, this could raise questions and expose owners to risk. An application made with no intention of the mark ever being used can be declared invalid. Non-use can leave the brand owner exposed to the threat of revocation of the registration.
The UK register also reveals that some universities have a number of different brand identities registered which raises questions – how effective are they at managing their brands to achieve consistency? Consistent application and use of a brand is important in ensuring that it remains recognisable and distinctive and, from a legal perspective, protectable.
Some brand owners go to great lengths to control the use of their brands for this reason.
It may be appropriate to appoint a single officer with responsibility for trade mark matters, and to communicate brand guidelines and policies designed to control use, ensure consistency and maintain distinctiveness. An accidental failure to apply the brand in the form of its registration could in itself lead to revocation – so details matter. Some brand owners regularly audit the use of their trade marks and branding to ensure that valuable marks are registered in the right classes and territories, that they are held by the right organisation within a group of legal entities, that new initiatives are protected and obsolete marks weeded out of renewal processes.
Universities should also consider what level of protection they may need for the use of their brands in other territories. It is possible to seek registration just for the UK, or across the European Union, and in most other territories. Where universities enter joint ventures in other jurisdictions, they should consider what steps to take to protect their brand in those jurisdictions. What scope of rights should they grant to their joint venture partners and what controls should they impose on such use? The risk of damage to brands in the hands of partners and collaborators is all too obvious, and wherever a university allows another person to reproduce their branding, the terms and scope of such use should be agreed up front, and clearly recorded.
Even with an orderly and cohesive approach to brand management, and clarity on ownership of brands, universities can still get into difficulties if they forget those other stakeholders who retain a sense of ownership. For example, university re-branding exercises have been known to trigger widespread criticism in social media from students and other stakeholders, feeling excluded from the process and hostile to change. Clearly any such process requires careful communication from the university’s marketing and management teams.
So overall, effective brand management calls for teamwork, combining the skills of marketing specialists, lawyers and senior managers.
This article was first published in the February 2016 issue of University Business.