BYE BYE BLUE BIRD

Elon Musk recently hit news headlines by announcing that he is rebranding Twitter as X. The iconic blue bird logo has already been replaced by an ‘interim’ X logo, and X.com now redirects to Twitter.com. Ironically, Musk announced the impending rebrand via a series of tweets.

For any technophobes out there, Twitter is a social media behemoth that was created and launched back in 2006. Since then, it has amassed hundreds of millions of monthly active users and has built up a globally recognised brand. Elon Musk acquired Twitter for a fee of approximately US $44 billion on October 27 2022, and has since implemented a number of changes to the platform which have faced criticism.

The decision to rebrand will not have been made lightly, and would likely have been contemplated by Musk and his executives prior to the acquisition. However, the apparent abandonment of established goodwill and recognition in the Twitter brand is likely to have raised eyebrows for marketing strategists and IP lawyers alike.

Why Rebrand?

Rebranding is a powerful tool which can modernise and reinvigorate a business, which is usually completed as part of a marketing strategy to re focus a brand to its target market. It may be done to develop new, or to solidify existing, customer bases, to demonstrate commitment to a particular culture, or to provide a fresh business image.

A rebrand can be highly effective in adapting an existing franchise to the modern world (as in the case of the Washington Commanders American football team, formerly known as the Washington Redskins).

It can also be effective in distancing from negative publicity. The jewellery company Ratners Group received heavy criticism and negative media attention following its CEO’s infamous 1991 Institute of Directors speech, in which he referred to one of their products as “total crap”. Ratners Group lost hundreds of millions of pounds, closed hundreds of stores and was forced to undergo financial restructuring. They were able to change their image through a rebrand to ‘Signet Group’, and later ‘Signet Jewellers Ltd.’, which bounced back and is currently the world’s largest retailer of diamond jewellery with an estimated annual revenue in excess of £6 billion.

It is clear Twitter’s rebrand to X is part of a wider strategy to expand into different technologies, markets and customer bases. It allows X to establish a new identity, but it is important to note that replacing a very well established brand can give rise to two major difficulties.

1. Negative effect on consumers​

First, there is a risk of confusing or even alienating existing customers.

In some cases, consumers may be confused as to the relationship between the original and new brands. For example, Tropicana’s rebrand of its orange juice drink back in 2009 to a simpler packaging design with a new logo caused consumers to fail to recognise the product, with many mistaking it for a cheaper generic – Tropicana eventually had to revert to their original design.

In other cases, consumers may be dissatisfied with, or even alienated by, a rebrand. Leaping before looking can lead to unintended consequences, such as when the Sci-Fi television channel decided to change its logo to ‘Syfy’, apparently unaware that this is a term used to describe something that is disgusting (often in a sexual context) in a number of countries, including Poland.

As for Twitter, a number of trade marks are registered in the UK to Twitter Inc., such as ‘TWEET’, ‘TWITTER’ and the well-known blue bird logo (as listed on the UKIPO website). Users are well-acquainted with these elements of the brand, so it would be very surprising to see these elements completely jettisoned. Does one still ‘tweet’ through X, or does one perhaps have an ‘Xchange’?

Therefore, before buying the paint tins for that new colour scheme, a detailed analysis of why people choose to use one’s business should be undertaken to reduce the risk of potentially alienating existing customers who still connect with the original branding.

2. IP Implications​

Second, a rebrand may have significant repercussions in respect of intellectual property rights.  

An existing brand may be protected by a number of different, potentially overlapping, intellectual property rights, such as copyright, trade marks and passing off rights.  Such rights may no longer protect the new brand.  It is imperative that the appropriate checks are carried out and preparations made before amending one’s website domain name, logo, colour scheme or business name.  Where the rebranding is extensive, the intellectual property rights of a previous brand may not carry over to the rebranded intellectual property.  In the case of registered rights, further registrations in all relevant jurisdictions may be required.  

For instance, as noted above, Twitter Inc. owns a range of trade marks covering its business, but many of these trade marks do not apply to the rebrand.  Ideally, such registrations should be obtained before the rebrand has been publicised, in order to reduce the scope for opportunistic registrations.  This issue was faced by Citigroup in the early 2000s.  Following a high-profile announcement of the agreement to form Citigroup, domain name registrations for citigroup.co.uk and citigroup.com were strategically filed by a one-man company called Global Projects Management.  In his 2005 judgment, Mr Justice Park held that this amounted to passing off, but by which time Citigroup had suffered both legal and financial damage as a result of not obtaining the domain names beforehand.

X may face issues in registering trade marks in respect of key parts of its new brand, such as its name and logo.  Previous decisions as to the registrability of single-letter trade marks suggest that it may be more difficult to establish their distinctiveness (as noted in the 2010 refusal of an EU trade mark of the Greek letter alpha, ‘α’ – C 265/09 P).  X may be able to register its name at a later stage if it can demonstrate that X has acquired distinctiveness through use.  That said, the scope of protection conferred by single-letter trade marks may be low, as per the 2022 decision of the EU General Court in the K K Water case.

Aside from protection of its own brand, X will no doubt be mindful of other parties who already own registered marks and passing off/unfair competition rights in respect of the letter ‘X’.  There had been speculation that the new logo for X uses Monotype’s “Special Alphabets 4” font for the letter X. However, this was refuted by Monotype’s Executive Creative Director.  Regardless, its similarity may invite a legal challenge from Monotype, or from owners of registered trade marks involving the letter X.  The EUIPO’s TMview search tool shows hundreds of ‘X’ marks, registered across dozens of national offices, which notably includes such marks registered and used by Microsoft (e.g. the Xbox and Excel logos).  

Further, non-use of current marks like the blue bird logo would also likely lead to revocation actions.  Whilst in the UK and EU this requires non-use for a period of 5 or more years, in the US it is only 3 years.  If revoked, the use of ‘Twitter’, ‘tweet’, and the well-known blue bird would be up for grabs.

It remains to be seen how Musk’s rebrand from Twitter to X develops. As with many of the steps taken by the world’s richest man, this is not without controversy.

Powell Gilbert has also recently rebranded, to give the firm a fresh, modern look after recently celebrating its 16th anniversary – check out our new website at powellgilbert.com and get in touch with your thoughts!

Douglas Jayatilaka, Associate, Powell Gilbert 

Elon Musk recently hit news headlines by announcing that he is rebranding Twitter as X. The iconic blue bird logo has already been replaced by an ‘interim’ X logo, and X.com now redirects to Twitter.com. Ironically, Musk announced the impending rebrand via a series of tweets.

For any technophobes out there, Twitter is a social media behemoth that was created and launched back in 2006. Since then, it has amassed hundreds of millions of monthly active users and has built up a globally recognised brand. Elon Musk acquired Twitter for a fee of approximately US $44 billion on October 27 2022, and has since implemented a number of changes to the platform which have faced criticism.

The decision to rebrand will not have been made lightly, and would likely have been contemplated by Musk and his executives prior to the acquisition. However, the apparent abandonment of established goodwill and recognition in the Twitter brand is likely to have raised eyebrows for marketing strategists and IP lawyers alike.

Why Rebrand?

Rebranding is a powerful tool which can modernise and reinvigorate a business, which is usually completed as part of a marketing strategy to re focus a brand to its target market. It may be done to develop new, or to solidify existing, customer bases, to demonstrate commitment to a particular culture, or to provide a fresh business image.

A rebrand can be highly effective in adapting an existing franchise to the modern world (as in the case of the Washington Commanders American football team, formerly known as the Washington Redskins).

It can also be effective in distancing from negative publicity. The jewellery company Ratners Group received heavy criticism and negative media attention following its CEO’s infamous 1991 Institute of Directors speech, in which he referred to one of their products as “total crap”. Ratners Group lost hundreds of millions of pounds, closed hundreds of stores and was forced to undergo financial restructuring. They were able to change their image through a rebrand to ‘Signet Group’, and later ‘Signet Jewellers Ltd.’, which bounced back and is currently the world’s largest retailer of diamond jewellery with an estimated annual revenue in excess of £6 billion.

It is clear Twitter’s rebrand to X is part of a wider strategy to expand into different technologies, markets and customer bases. It allows X to establish a new identity, but it is important to note that replacing a very well established brand can give rise to two major difficulties.

1. Negative effect on consumers

First, there is a risk of confusing or even alienating existing customers.

In some cases, consumers may be confused as to the relationship between the original and new brands. For example, Tropicana’s rebrand of its orange juice drink back in 2009 to a simpler packaging design with a new logo caused consumers to fail to recognise the product, with many mistaking it for a cheaper generic – Tropicana eventually had to revert to their original design.

In other cases, consumers may be dissatisfied with, or even alienated by, a rebrand. Leaping before looking can lead to unintended consequences, such as when the Sci-Fi television channel decided to change its logo to ‘Syfy’, apparently unaware that this is a term used to describe something that is disgusting (often in a sexual context) in a number of countries, including Poland.

As for Twitter, a number of trade marks are registered in the UK to Twitter Inc., such as ‘TWEET’, ‘TWITTER’ and the well-known blue bird logo (as listed on the UKIPO website). Users are well-acquainted with these elements of the brand, so it would be very surprising to see these elements completely jettisoned. Does one still ‘tweet’ through X, or does one perhaps have an ‘Xchange’?

Therefore, before buying the paint tins for that new colour scheme, a detailed analysis of why people choose to use one’s business should be undertaken to reduce the risk of potentially alienating existing customers who still connect with the original branding.

2. IP Implications

Second, a rebrand may have significant repercussions in respect of intellectual property rights.  

An existing brand may be protected by a number of different, potentially overlapping, intellectual property rights, such as copyright, trade marks and passing off rights.  Such rights may no longer protect the new brand.  It is imperative that the appropriate checks are carried out and preparations made before amending one’s website domain name, logo, colour scheme or business name.  Where the rebranding is extensive, the intellectual property rights of a previous brand may not carry over to the rebranded intellectual property.  In the case of registered rights, further registrations in all relevant jurisdictions may be required.  

For instance, as noted above, Twitter Inc. owns a range of trade marks covering its business, but many of these trade marks do not apply to the rebrand.  Ideally, such registrations should be obtained before the rebrand has been publicised, in order to reduce the scope for opportunistic registrations.  This issue was faced by Citigroup in the early 2000s.  Following a high-profile announcement of the agreement to form Citigroup, domain name registrations for citigroup.co.uk and citigroup.com were strategically filed by a one-man company called Global Projects Management.  In his 2005 judgment, Mr Justice Park held that this amounted to passing off, but by which time Citigroup had suffered both legal and financial damage as a result of not obtaining the domain names beforehand.

X may face issues in registering trade marks in respect of key parts of its new brand, such as its name and logo.  Previous decisions as to the registrability of single-letter trade marks suggest that it may be more difficult to establish their distinctiveness (as noted in the 2010 refusal of an EU trade mark of the Greek letter alpha, ‘α’ – C 265/09 P).  X may be able to register its name at a later stage if it can demonstrate that X has acquired distinctiveness through use.  That said, the scope of protection conferred by single-letter trade marks may be low, as per the 2022 decision of the EU General Court in the K K Water case.

Aside from protection of its own brand, X will no doubt be mindful of other parties who already own registered marks and passing off/unfair competition rights in respect of the letter ‘X’.  There had been speculation that the new logo for X uses Monotype’s “Special Alphabets 4” font for the letter X. However, this was refuted by Monotype’s Executive Creative Director.  Regardless, its similarity may invite a legal challenge from Monotype, or from owners of registered trade marks involving the letter X.  The EUIPO’s TMview search tool shows hundreds of ‘X’ marks, registered across dozens of national offices, which notably includes such marks registered and used by Microsoft (e.g. the Xbox and Excel logos).  

Further, non-use of current marks like the blue bird logo would also likely lead to revocation actions.  Whilst in the UK and EU this requires non-use for a period of 5 or more years, in the US it is only 3 years.  If revoked, the use of ‘Twitter’, ‘tweet’, and the well-known blue bird would be up for grabs.

It remains to be seen how Musk’s rebrand from Twitter to X develops. As with many of the steps taken by the world’s richest man, this is not without controversy.

Powell Gilbert has also recently rebranded, to give the firm a fresh, modern look after recently celebrating its 16th anniversary – check out our new website at powellgilbert.com and get in touch with your thoughts!

Douglas Jayatilaka, Associate, Powell Gilbert 

OCADO SETTLES ROBOTIC WAREHOUSING PATENT DISPUTE

Following a three-year global patent dispute over robotic warehousing technology, Ocado Group and AutoStore have settled all pending litigation.  European IP firm Powell Gilbert co-ordinated the litigation globally on behalf of Ocado.

The two parties agreed a complete settlement of all claims in the dispute.  AutoStore will pay £200 million to Ocado in instalments over two years, and the parties agreed mutually beneficial global cross-licensing terms for their pre-2020 patents.

AutoStore is not permitted to make or use a single-space cavity robot in any jurisdiction where Ocado has patent protection.

AutoStore first brought proceedings against Ocado in 2020 in the UK and US alleging infringement of several of its robotic warehousing patents.

In March of this year the UK High Court issued its judgment in the UK case, finding in favour of Ocado on all counts.  The US ITC also found for Ocado on all counts.

Powell Gilbert co-ordinated Ocado’s global litigation strategy and acted on its behalf in the UK case.

In addition, together with local counsel, Powell Gilbert represented Ocado in three pending cases Ocado had brought in the new Unified Patent Court (UPC) through the firm’s Dublin office.  Ocado also had cases pending against AutoStore in the US and Germany.

The partners acting on the matter were Simon Ayrton, Zöe Butler, Tom Oliver, Joel Coles and Tess Waldron.

Simon Ayrton, the Partner leading the team at PG, commented:

“This settlement, welcomed by both parties, represents a constructive and collaborative approach which will allow them to continue developing their respective technologies in what is a commercially important and highly innovative field.

“We are extremely grateful to the Ocado IP team, as well as to our counsel partners in the US and Europe, for their work over the past three years, both in and out of court, which has helped to deliver this landmark result.”

LMG Life Sciences Awards 2023

We are delighted to have been named as ‘Patent Litigation Firm of the Year: Biotech’ at the 2023 Life Sciences Awards EMEA. Fantastic news and a real testament to the hard work of the whole PG team. Well done all! Congratulations to PG’s Penny Gilbert on winning ‘Patent Litigator of the Year: Biotech’, Zoe Butler on winning ‘Patent Litigator of the Year: Biologics & Biosimilars’ and Tess Waldron named as ‘IP Rising Star’ incredible news and very well deserved!