Development of a brand through trade mark protectionA Dr Martens case study

Page 1: Introduction

Branding of a product is important for both

buyers and sellers. For buyers, branding

reduces the random nature of product

selection. It helps them to identify more easily

products that may satisfy their needs and

enables them to reduce time spent on

evaluating alternatives. A brand also

represents certain qualities and

characteristics which they may use to develop

a clearer picture of what the product offers.

Sellers also benefit from brands, particularly if

they can develop the brand loyalty of the

buyer, which leads to repeat purchases. New

products which carry a familiar brand are

more likely to be successful because

consumers are aware already of that brand

name. Branding also simplifies the process of promotion. The repeated exposure to the

market of the brand name may help develop other products.

Brands are valued for reasons other than the profit they bring their owners. They are a

property with legal protection and a value in the market. By valuing brands, a company's

balance sheet is strengthened, its share price may rise and its vulnerability to predators

decreased.

Product branding

Consumers identify products in a variety of different ways. A brand image comprises a

range of features which identify the products of a particular organisation e.g. a name,

sign, term, symbol or other creative elements. A trade mark provides legal protection of

the brand for its owner, covering design, brand name and abbreviations. This protection

can be extended to cover colours and shapes.

Branding provides unique selling propositions (USP) which help to differentiate the

product from its competitors and, therefore, make it an essential item for retailers to

stock. The creation of a brand image, which matches customer needs more closely than

competitor products, is a function of product positioning. When consumers make

purchases, they attempt to match brand image with self-image. The brand, the retail

outlet from which it is purchased and its promotion will all have a symbolic value for the

customer. How will the benefits of a brand and its protection by a Trade Mark work in

practice?

The Dr. Martens Air Cushion sole was developed in post-war Munich for orthopaedic

shoes by Dr. Klaus Maertens. With his partner Dr. Herbert Funck, they patented the

soles which were the top sellers in the comfort-shoe market in Germany within two

years and by 1959, were being exported throughout Europe. The Griggs family became

involved in 1960 when the partners wanted to license a company to produce the soles

for the British market.

Griggs, which was founded at the turn of the century, was already a manufacturer of

army and work-wear boots with a comfort theme. It began to make footwear with the

Doc Martens sole, which it branded AirWair and the group's success in selling the shoes

led the partners to license Griggs to make the sole for the rest of the world. In the late

1960s no fashionable teenager was properly dressed without a pair of 8 eyelet “Doc

Martens Cherry Reds”, but the boots were also being bought in their thousands by

workmen and women, sold on their sheer practicability. The combination of durability,

comfort and style has seen Dr. Martens footwear gain acceptance by all types of people

- from bankers to policemen, rock-stars to nurses. According to a German magazine,

Dr. Martens is amongst the 30 best known brands in the world. Despite the fashionable

nature of the company’s products, about 30% of all Dr. Martens sold in the UK are sold

as workwear.

Page 2: Protecting the brandIn the UK the definition of a Trade Mark is: “any sign capable of being represented

graphically, which is capable of distinguishing goods and services of one undertaking

from those of other undertakings. A Trade Mark may, in particular, consist of words

(including personal names), designs, letters,

numerals or the shape of goods or their packaging”

(Trade Mark Act 1994). This means that the name:

Dr. Martens, Doc’s, DM’s, Doc Martens, Dr. Martens

Air Cushion Soles etc., as well as AirWair, AirWair

with bouncing soles (and device), are protectable as

Trade Marks. Additionally, the overall configuration

of the product, and the Trade Dress, may be

protected through Three Dimensional Trade Mark and Design protection. New

advertising slogans may also be regarded as Trade Marks - e.g. “Made Like No Other

Shoe on Earth” and protected as such. Further protection can be gained for the

following...

Packaging and advertising literature are copyright works.

New design and development in manufacturing processes may be protected through Patent

Applications as Inventions.

New elements appearing on the footwear e.g. New Sole Patterns, may be protected through

Registered and Unregistered and Two and Three Dimensional Trade Mark protection.

Page 3: Trade MarksThe primary purpose of Trade Marks is to

identify the proprietor to the consumer and

to provide the consumer with an indicator

that the company’s reputation for providing

good quality goods, can be associated with

the product. When choosing a word Trade

Mark, a number of pointers have to be

considered. The mark should be easy to

remember and pronounce and able to be

presented in a graphic form i.e. a logo,

phrase or slogan. The distinctive Trade Mark - AirWair (script device), AirWair with

Bouncing Soles (ball device) was developed by Bill Griggs, the former Chairman of R

Griggs & Co. Ltd. The AirWair with Bouncing Soles heel loop, in its present distinctive

black and yellow form was developed by R Griggs, for introduction in the early 1960s.

The branding of the footwear was vital in establishing consumer recognition of the

Company’s products and the name of AirWair and to indicate that the name could be

associated with a reputation for hard wearing, good quality, value for money footwear.

Over the years, the increasing importance and value of the AirWair marks as assets of

the Company necessitated that Trade Mark protection for both the word and logo forms

be sought. Initially, protection was applied for in the UK, but as export markets

developed, so did the importance of protecting the AirWair marks internationally for

Griggs’ exclusive use.

Now that the Community Trade Mark Office has opened in Alicante, it is possible to

apply for a Community Trade Mark which offers protection through the European Union.

In addition, the Madrid Protocol provides a means for a single international application

to lead to multiple national registrations and the Paris Convention creates a right of

priority for a short period after registration of a Mark in another Convention country.

History and protection of the dr. martens trade markThe Dr. Martens Trade Mark is owned by the German families of the designers of the

original Dr. Maertens Air Cushion Sole. The mark is licensed to the R Griggs Group Ltd

for its world-wide exclusive use, and has been the subject of Utilisation and Licence

Agreements between the respective companies since the 1960s. (Note that the original

name Maertens was anglicised as pronunciation difficulties were anticipated in

England.)

When production of Dr. Martens began, Trade Mark protection for this mark - as with

AirWair (and variants) was required and the German company applied for protection of

this mark. All Dr. Martens Air Cushion Soles have borne this Trade Mark. As

international markets have been developed, so has the necessity for adequate Trade

Mark protection for the core footwear product in the form of word mark protection for the

basic and variant marks. Apart from the word mark Dr. Martens, there are other variants

such as

Doc’s, DM’s, Doc Martens and the Dr. Martens Resistance Rectangle, which are

registered marks. Most of these have been adopted because of the consumer referring

to the product under these variants and in the case of the Resistance Rectangle this

mark has been applied to many of the classic Dr. Martens footwear styles since 1960.

Page 4: Investing in the development of the business

Griggs wanted to protect its ability to invest in the development of its business through

advertising its brand and this investment was secured through the relevant Trade Mark

protection. Without protecting and policing its Trade Marks, Griggs would have little

security that the AirWair marks could be used exclusively by itself, leading to

competitors branding their products using these marks, leading to consumer confusion.

Dr. Martens footwear has a number of distinctive product features, which in Intellectual

Property Terms are called the “Get-up”, or more commonly the “Trade Dress”. Trade

Dress features are used in much the same way as Trade Marks, in that they are an

indicator to the consumer that the products emanate from a single source, giving the

consumer certain quality and perception expectations and

also evoking the image of the brand. Some of the footwear

features which are jealously guarded are, for example:

YELLOW WELT STITCH - By using a distinctive

yellow thread in the manufacture of Dr. Martens “Z”

welt footwear, the consumer has grown to associate

this feature with the Trade Marks and therefore the

Yellow Welt Stitch acts as a distinguishing feature.

GROOVED SOLE EDGE - This appears as horizontal lines

around the PVC sole, creating a ridged design and has

become another Trade Dress feature.

TWO-TONED SOLE EDGE - Found at the point on the sole

edge where the welting material meets the PVC sole. This

has been used consistently over the years.

DMS SOLE PATTERN - The DMS sole pattern has been

used since the 1960s.

OVERALL CONFIGURATION OF THE 1460 BOOT - The

eight eyelet boot with the Trade Dress features outlined above, was initially produced on

the 1 April 1960. Its style number refers to the initial production date of 1.4.60.

Problems without protectionProblematic is the issue of copying, a practice that results in the production of a look-a-

like product by an unauthorised third party. The copies are usually products, which in

the case of Dr. Martens footwear may use dissimilar word and logo markings, although

using an identical or confusingly similar Trade Dress to the original. This has become a

major issue for the company as its product is associated with fashion and the footwear

is sold internationally. The Company enforces its Intellectual Property Right in all

countries.

 Page 5: Operating on a global scale

Operating on a global scale produces added complications when attempting to protect

Marks in countries not using the Roman alphabet. If the local population cannot read the

mark, or pronounce it, a suitable translation into the local language has to be found. It is

important to make sure that the translated mark works in the relevant country and not

rely only on a translation service to provide a new Trade Mark without testing its

reception in the market.

In order to keep a Trade Mark valid, it has to be used regularly and use has to be

proved in many of the markets in which application and registration have been filed or

granted. There are, however, instances when the brand owner wishes to secure Trade

Mark protection in markets where trade is not anticipated. This course of action is in

order to prevent third parties from using or applying to register the mark.

Brand extensionAs a brand grows in popularity so do the opportunities to license the Trade Mark to third

parties, providing permission to another company to produce goods bearing the marks,

which the consumer associates with the 'core' products. Licensing allows companies to

offer a wider range of products under their Trade Marks, presenting the consumer with a

selection of new goods, under the familiar mark. Griggs jealously protect their brand by

ensuring careful quality control of the products

produced under their Mark is carried out. Griggs

began to offer licences for its Trade Marks in 1994,

due to high demand for the footwear - brand extension

was considered and various product options

assessed. Research indicated that the consumer

associated the Dr. Martens and AirWair Trade Marks

with products such as clothing and accessories, as

well as bags, stationery and watches.

After entering into licensing agreements with various companies, Dr. Martens bags,

watches and stationery ranges became available. Brand extension though can both

enhance the core product through greater consumer allegiance and confidence and can

springboard additional sales of the core product. Conversely, if managed badly, the core

product may be severely damaged through alienation of the customer if the brand

extension goods are of a poor quality or if they do not reflect the values/images of the

brand.

Page 6: Conclusion

The purchase of footwear in the UK reaches nearly £5bn per year, with a large

proportion of shoes being imported from low cost producers outside the EU.

Competition from these producers has resulted in many UK shoe manufacturers going

out of business or seeing their markets gradually

eroded.

R Griggs Group Limited, through the successful

production of a high quality product that appeals to

both the fashion conscious and those seeking

comfortable footwear, has survived and prospered.

Employing 3,000 in the UK alone and producing

200,000 pairs of shoes per week (10 million pairs per

year), the company sees its future as offering further opportunities for growth.

It has done this through a successful branding strategy and the protection of the brand

through Trade Marks. This has kept the product distinct in the mind of consumers who

recognise it and understand the underlying quality associated with it. Other UK shoe

producers have not generally found the same route to success. Moving into

international markets and opting for brand extension, the company will be presented

with new challenges, which will require the same innovative response as has been seen

in the past.