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"200 years of expertise", 150 years of unique heritage", "perfecting our recipe since 1800". These are increasingly common slogans in advertising and there is a noticeable trend amongst brands with heritage in returning to their roots to entice the consumer pound out of its recession-driven hibernation.

Heritage and history go hand in hand.  For the brand, the two interact providing the consumer with a link to tradition and inheritance of values, standards and quality from a previous generation.  Brand heritage can be defined as a "dimension of a brand's identity found in its track record, longevity, core values, use of symbols and particularly in an organisational belief that its history is important" and the resultant strategic use of this as the creation of the "heritage brand") Trading on brand heritage forms the base for a competitive advantage through distinctiveness, historical excellence, accumulated credibility and trust.

The consumer in 2009 is a different retail audience to the credit-inspired prodigal of former years. As consumers seek to fall back on the core values of safety, dependability and indeed value for money (reminiscent perhaps of post-war frugality) brands with a heritage are well-placed to exploit this, provided that they can deliver on such claims.

Intellectual property protection

Trading off heritage may lay open inherent weaknesses in the portfolio protection of the intellectual property rights in the brand and its products.  Key to a heritage brand will be a strong, recognisable trademark.  Revitalising an old brand is all very well, but if the relevant trademark is no longer registered, protection that is taken for granted may not actually be present.  The message to traders, therefore, is to check.  Corporate libraries and designers' work books are of immense help here.  Such diligence must also extend to consideration of use - a trademark that has not been used for five years may not allow its owner to object to a conflicting trademark registration, so continuity of use can be critical.

A brand must consider both registered and unregistered rights.  Successfully arguing a case of "passing-off" on the basis of unregistered rights will be harder than straightforward proof of infringement that attaches to proprietary rights afforded by a registered trademark.  As an example, consider the difficulty in proving the goodwill that exists in a product sold in the 1970s, whose maker wants to re-market it in 2009.  Identifying confusion between the product and any modern-day imitations may be difficult, as the goodwill built up in the original product exists from the 1970s rather than the present day - in effect the continuity of goodwill will be broken.

Brands must also consider the rights in the designs for their products. UK and European legislation puts a comparatively short duration on both registered and unregistered designs and although, in the case of registered design rights, the registration will be renewable, it is easy to envisage a scenario where such registrations are not kept up to date. Products therefore that have not changed in design from yesteryear will be susceptible to copying, as any latent design right may no longer be present.  If still relevant, and operated in conjunction with a strong trademark, design rights are certainly worth being considered, as they will provide the brand with strong (and relatively cheap) protection.  Again, a full investigation by the brand would be prudent.

Limited protection exists in England by way of copyright for works which are in their nature "works of artistic craftsmanship" or relate to surface decoration and while a limited number of "rip-off" cases have had success in the courts, this is not always a fruitful avenue of brand protection.  Particular care needs to be taken, however, not to fall into the trap of thinking that copyright exists in relation to heritage brands where any such protection has expired.

Brand versus the product

One enduring feature of the heritage brand is the way in which a consumer's attention is drawn from the individual product and focused on the brand itself.  The luxury watch market is a case in point.  When asked to list a selection of top watches, the average consumer is likely to point to a "Tag Heuer" or a "Patek Philippe" rather than a "Carrera" or a "Ref. 5207". To a certain extent, in these instances, the brand and the product merge in the eyes of the consumer and the kudos of owning a luxury product merges into the brand on display, rather than the product itself.  Provided that a basic level of brand protection is in place (i.e. the existence of a registered trademark), heritage brands may find themselves in a position to ask whether a full protection strategy for individual products is strictly necessary. Imitation may occur, but the heritage of the brand will be what really matters.  It is, however, key to this approach for the brand to push to the consumer the "brand experience" that goes with the purchase of a product or service, and this is where the compromise often lies. Notwithstanding that promoting "brand experience" is separate to full legal protection, in reality both elements should be built into a trader's overall protection strategy.

Realities

A myriad of statistics show a decrease in consumer spending on recreational and luxury goods and services.  Ironically, this may prove positive for brands trading on their heritage, as the differential exposed by this heritage reduces scope for brand dilution.  Faced with economic uncertainty, consumers, despite wishing to spend less overall, may start to turn to what they trust over riskier alternatives.  This will include a latent desire for quality, and in some cases, for provenance - areas in which heritage can usefully appeal to a consumer. A brand that has shown longevity and a careful (even if carefully constructed) dedication to quality performance will prove ever more attractive to consumers.  Makers of cheaper imitations of luxury goods may find their market shrinking as they struggle to deliver, or perhaps more importantly, struggle to show the consumer that they can deliver on such core values.

This debate bestows an element of market awareness on the consumer.  Whether this is accurate is for another forum, although establishing consumer awareness or exploiting any that pre-exists is key to a brand wishing to trade on its heritage.  Menswear is an interesting area for comparison.  A menswear buyer for US company Urban Outfitters was recently quoted as saying: "[Customers] trust us to educate them. These brands come from a real place. There are reasons for the way these things are. You can't hide or replicate it. It has soul."

Current trends appear to be for brands to appeal to men through emphasis of heritage through core values such as strength or sophistication, although much of this seems to be based on the notion of the heritage in a brand or product, rather than any particular detailed knowledge.  Military-inspired clothing, for example, is now popular with many items easily identifiable as rugged clothing with a link to the grandeur of military uniform, yet how many consumers could correctly identify Burberry's origins as trench coat suppliers to the British army in World War 1, or Belstaff's origins as the first company to develop a totally waterproof yet breathable fabric?

The concept of the heritage brand is rooted in a series of calculated business decisions and this should properly extend to examining a brand's strategy towards its intellectual property both historically and moving forwards.  It is unlikely to be straightforward and it may be that legal protection of intellectual property rights is not an absolute requirement, either because the scope for adequate and worthwhile protection is simply not there, or that a calculated step is taken more towards instilling the "brand experience" in the consumer.  Consumer trends are key to fully understanding the rationale to either approach.  Brands must be sure whether to push their heritage in situations where such efforts may be counterproductive: for example, to consumers who may not be aware of (or care about) the full story behind a brand, or those consumers who simply do not look too closely at whether a heritage is genuine, as several "faux" heritage brands have shown.  In all cases, it is a question of balance, but one which needs to be actively considered as part of the decision to trade off heritage.

Authors

Rupert Casey joined Macfarlanes LLP in 1996 and became a partner in the commercial group in 2005.  He specialises in commercial contracts and intellectual property, with his clients being predominantly major UK and global brand owners.  He advises on a broad range of matters relating to the day-to-day operations of businesses, much of which involves expertise in intellectual property matters.

Rupert is acknowledged by directories as an expert in intellectual property and advertising and marketing, and as a non-contentious lawyer, his workload predominantly relates to the commercial exploitation of such rights through licensing, franchising and disposals.

Charles Maurice is a trainee at Macfarlanes LLP.