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recently hit news headlines by announcing that he is rebranding Twitter as X. The iconic blue bird logo has already been replaced by an ‘interim’ X logo, and X.com now redirects to Twitter.com.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 

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!

Women in Business Law Awards EMEA 2023

Congratulations to PG’s Bethan Hopewell who received Life Sciences Lawyer of the Year at the 2023 Women in Business Law Awards EMEA. Fantastic news – and very well deserved! See full list of winners here

Winners – Managing IP EMEA Awards 2023

PG are delighted to receive the Patent Disputes Law Firm of the Year UK (England) award at the Managing IP Awards Dinner last night & to receive an Impact Case of the Year award for their work on GW Pharma v Otsuka Pharmaceutical Co. Congrats to team PG & to all the winners.

IAM Patent 1000 2023 – Gold (Top Tier) UK Litigation

We’re thrilled PG has again been ranked Gold – Top Tier for UK: England & Wales : Litigation in IAM Patent 1000 2023 together with 13 of our partners listed as recommended individuals.

Thank you to everyone on the team for the outstanding work throughout the year!

Find out more: here.

Powell Gilbert involved in several cases filed on day 1 of the UPC

19 cases were filed on the first day of the UPC. We are proud to be acting in a significant number of them, including the first two cases filed in the Nordic-Baltic Regional Division, the first case filed in the Milan Local Division, and cases in the German local divisions. We look forward to working with our friends across Europe to represent clients in the UPC, combining the best of local expertise with our track record in coordinating technically complex pan-European patent litigation. 

IP Law firm Powell Gilbert launches office in Ireland

Dublin presence consolidates the firm’s role in the UPC

LONDON, 30 May 2023: Leading IP law firm Powell Gilbert today announces the launch of a new office in Dublin to support the firm’s work in advising and representing clients before the Unified Patent Court (UPC). This will complement the firm’s existing practice which has a preeminent reputation for UK patent litigation and for developing and implementing Europe-wide patent litigation strategies for its clients.

The Unified Patent Court Agreement was signed in February 2013 by 25 EU member states, including the Republic of Ireland. The UPC will officially launch on 1 June 2023. It creates a single patent jurisdiction across a significant portion of the European market. An initial 17 EU member states are initially participating, with a further seven countries still to ratify. The Irish Government has confirmed its intention to participate in the UPC and Unitary Patent system and will hold a referendum to ratify the UPC Agreement later this year or in 2024. 

The firm will operate in Ireland as Powell Gilbert (Europe) LLP, with each of the firm’s 14 partners admitted to practice in Ireland.  Lawyers authorised to practice in Ireland will be able to represent clients in the UPC.

Powell Gilbert will continue to work closely with its extensive network of leading European IP litigators. Working alongside local counsel, the firm will bring to bear its wealth of patent litigation experience, and access to a deep bench of technically qualified lawyers, to build the best teams to implement bespoke UPC strategies, bearing in mind the potential to litigate across the various national, regional, and central divisions of the UPC.

Dr Penny Gilbert, partner at Powell Gilbert, commented:

“As a leading independent IP law firm, we have built a reputation for partnering with the highest calibre patent litigators across Europe to deliver solutions for clients in complex international litigation.

“Our Irish office represents the next logical step in this approach. It enables us to combine our extensive patent litigation and European co-ordination expertise, technical strength and depth of knowledge with the support of local counsel to create the optimal teams for our clients’ European litigation strategies, both within the UPC and across non-UPC countries.

“It has always been our intention to participate fully in the UPC, which we believe is of enormous strategic importance to clients. We are actively working with clients on their UPC strategies and filings in preparation for the UPC start date.”

Alex Wilson, partner at Powell Gilbert, commented:

“We are looking forward to handling UPC litigation from our Dublin office when the court rooms open their doors. This comes after years of our active involvement in the development of the system – inputting into the rules of the court and advocates’ code of conduct and the training of judges through EPLAW.”

LMG Life Sciences Awards 2023 EMEA – Shortlists Announced

Shortlist announced – LMG Life Sciences Awards 2023 EMEA. Wonderful news! PG and the team shortlisted for 9 awards! Congratulations to all those shortlisted! Further information here.

  • Patent Litigator Firm of the Year: Biologics / Biosimilars, Biotech, Medical Devices, Pharmaceuticals
  • Patent Litigator of the Year: Biologics & Biosimilars – Zoe Butler
  • Patent Litigator of the Year: Biotech – Penny Gilbert
  • Patent Litigator of the Year: Medical Devices – Tim Powell
  • Patent Litigator of the Year: Pharmaceuticals – Bethan Hopewell
  • Intellectual Property Rising Star: Tess Waldron