RIM sues Samsung for 'misleading the public'

"That which we call a rose, By any other name would smell as sweet," scrawled a medieval English poet, but the question for the noughties, and probably the coming decades, is: smell as sweet it may, but will they still buy if it's called a ‘stinkhorn’?

And so we enter the mysterious world of branding and trademarks. A world where a slip of the tongue, or keyboard, can be the difference between Chanel perfume and the salty water between England and France, and where one man's high-performing Ford Probe is another's painful medical procedure.

Into this world are drawn countless freelancers. Plying their wares between the successful enterprises of our generation, seeing the mistakes and the triumphs of British commerce, is it surprising that contractors continually come up with innovative ideas for products and services?

Once such contractor turned entrepreneur is Tony Butterfield, CTO of 1060 Research. Five years ago he joined forces with other like minds to create NetKernel, an open source software development platform, but Butterfield admits choosing the name was not easy.

"Naming of products, and indeed companies, is probably one of the hardest things a start-up needs to do," he says.

"We have always brainstormed, trying to find words with the right kind of feel, and looking for related products and how they have been named, seeking inspiration. Once we have a shortlist, 'googling' for any interesting connotations or alternate uses of names, narrows the list even further."

Ultimately, naming a product is about maximising sales. A name should be chosen that will encourage customers, and certainly not put them off, which is why you have to wonder at the logic of calling a car, "Probe."

Yet in the pursuit of sales, there is a darker strategy that Canadian firm RIM (Research In Motion) has accused electronic giant Samsung of following: that of trading on the goodwill of an already successful product.

In a suit, filed on December 8 in California, RIM said, "Samsung has used the BlackJack mark in a manner which is confusingly similar to RIM's BlackBerry marks," and further suggests that "Samsung is misleading the public into falsely believing that Samsung's goods and services are connected with RIM's business."

It's serious, multi-million pound business, which, deliberate tactic or not on the part of Samsung, illustrates some of the difficulties of product naming. RIM's case relies on a court deciding to protect the use of the prefix "Black" for communications devices. It would be a sweeping ruling indeed.

And there is another danger for RIM. Like Hoover decades before became synonymous with the sucking, filtering carpet cleaner, there is a risk that RIM's overriding market position has led to the common use of "Blackberry" to mean all kinds of mobile e-mail device, whether manufactured by RIM or not. Any company could be free to use the term perfectly legally.

Google is fighting to avoid a similar situation with its brand name. Google is rapidly becoming a verb meaning to search, as in, "just google me" or, as Butterfield said, "googling for any interesting connotations."

Other search engines may soon be able to write, "Google here, for all your answers," on their marketing material. Surely a worrying thought for Google execs, and ironic that such an outcome might develop from overwhelming success.

But for contractors starting on the long road of product marketing, Declan Cushley, IP lawyer and partner at law firm Browne Jacobson, says that it is well worth a "few hours out to think about a brand, and file a trademark."

For freelancers turning entrepreneurial, it’s your "marker in the sand," he told Freelance UK recently.

Cushley advises start-up companies to take the following first steps as soon as possible: purchase relevant domain names; record a company name with Companies' House -- even if the company remains dormant, this measure prevents a competitor taking up the name; and register a trademark.

Even though registering a trademark has become increasingly popular in recent years – fuelled by the 1994 Trademark Act and increasing brand awareness – not nearly enough new businesses are looking at the minimal costs of brand registration, compared to their overall marketing costs, Cushley explains.

It's another unwanted cost, of course, for entrepreneurial freelancers struggling even to find a workable name in this legal and semantic minefield. But contract architect Ben Straw has a solution.

"Take part of your product description, convert the letters to alternatives that sound the same, and add the name of your first pet."

Going by these rules, what might Samsung have named their mobile smartphones if they hadn't decided on BlackJack?

RoverFone. Not bad. Straw may yet have a future in marketing.

William Knight


1st January 2007

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