Intellectual Property for Modern Marketers

Matt Braithwaite-Young (Principal, Turning Leaf Marketing) Interviews Sonal Moore (Principal, Moore & Moore IP): (for the audio link, click here)

121107 Mackintosh Photography Turning Leaf_65

Matt Braithwaite-Young
Principal, Turning Leaf

Sonal Pic

Sonal Moore
Principal, Moore+Moore IP










Matt:       Hi everyone, it’s Matt Braithwaite-Young from Turning Leaf Marketing here, and I’m delighted to have with me in this chat Sonal Moore from Moore and Moore IP. Welcome Sonal.

Sonal:       Good morning

Matt:        Thanks for getting together. This is our first time we’ve done one of these ‘hang out’ chats. But we thought it would be good to have a discussion today on intellectual property and marketing. And I’ve worked with Sonal for many years on intellectual property matters, and with some success.

Sonal:       That’s right. We’ve done really well, the two of us. We’re a good team.

Matt:        So Sonal, before we get started, maybe do you just want to tell everyone a little bit about yourself and what Moore and Moore IP does?

Sonal:       Yeah, sure. So, I’m a lawyer in intellectual property, which is basically copyright, patent trademarks, confidential information. And I’ve been doing it for thirty years now. I’ve worked in a lot of the major law firms, and now … with my own firm… I’m specialising in providing the same sort of advice, but to smaller organisations.

Matt:        So, as a marketer, we’ve been kind of brought up to think of lawyers and IP people as the natural enemy of the claims we want to make, and the things we’d like to say. Why do we need legal advice in the marketing world? What’s it all about?

Sonal:       Well, it’s about not breaking the law really.

Matt:        Oh, that old chestnut! (laughing)

Sonal:       Yeah (laughing). The difficulty, especially over the last twenty years or so… consumer rights have been at the forefront of a lot of policy. And we’ve got the Australian Consumer Law now, which is designed to protect consumers. A big part of putting advertisements out, or doing promotions, is making sure consumers aren’t being misled or deceived. Marketing people, or the people selling the products, want to make big claims about their products. Our job is to make sure that those claims can be substantiated, and that people aren’t going to be misled by them.

Matt:        There’s an interesting case I saw earlier this week, Maggie Beer was being pinged for saying (her brand is) “a Barossa legend”, and that was seen as potentially misleading.

Sonal:       That’s right. Well, Maggie Beer… she is a Barossa legend… and that is part of her tagline.

Matt:        I thought it was a bit rough.

Sonal:       The problem is some of her products were not made in the Barossa. They were being made in Queensland or Victoria. So what the ACCC, which is the watchdog of consumer rights, said was that some people would be misled by the labelling.  Because the Barossa Valley statement was so close to her name, people would go “Oh, this is all made in the Barossa Valley.”

Matt:        I’ve always wondered why the beer companies are able to get away with this though – large German beer companies can brand their product “Bavarian beer” … and it’s brewed down the road from here. Yet they go after Maggie, and she’s just little.

Sonal:       Well, they look at what consumers will believe, and what they will think.  I suppose part of it is that maybe consumers understand that, even though it is called Bavarian, it’s not actually made in Bavaria. There are a heap of guidelines around dealing with when you can use a geographical name with your product. But that’s probably another discussion…

Matt:        We’re drifting away from intellectual property. So… intellectual property and marketing … is this just arse-covering, or is there something more to it? (laughing)

Sonal:       It’s a bit of both. Definitely arse-covering, so that if something goes wrong with the marketing campaign, marketers can say to their bosses, “We ran it past the lawyers”. But the other side is, it’s obviously very bad publicity if something goes out there. Just like Maggie Beer… you know, the news picked it up. There was another case earlier this year, which started a couple of years ago, between Optus and Telstra, to do with misleading and deceptive conduct in their advertisements. So it’s never good publicity for a company when the ACCC is taking action or investigating claims they’ve made. It’s a bit of both…

Matt:        Optus is interesting though, because I heard that the little animal symbol Optus uses was going to be called Ollie. As in, Ollie Optus. But Telstra registered the trademark Ollie.

Sonal:       Oh okay, I didn’t realise that, but yes, this happens.  Look, to register a trademark, you have to have the intention to use. But obviously a company can go “You know, we’re going to look at maybe ten brands over the next two years. We’re not quite sure which one we’ll go with …” So a large company who has the funds may very well register all those names and have the intention to use. Some of them may end up blocking a competitor. And some of them, they will use, some of them they’ll give up. Clothing companies are quite notorious, and perfume… because they don’t know which brand they’re going to go with in two or three years’ time.

Matt:        So they just go for everything?

Sonal:       Well, if they’ve got the money. Because, there’s a quite a long lead time between developing the product then engaging the marketing division… then the sales. So there could be a couple of years in it. And a lot of companies want to bed down at the beginning what their brand is going to be for that new product.

Matt:        Ollie Optus sounds like that might have been a particularly defensive registration.

Sonal:       It could have been. But how Telstra could have known they wanted Ollie, you don’t know. You have to have an intention to use. And then once you’ve registered, if you don’t use that mark within a period of five years, or if you haven’t used it for a period of three years… it becomes vulnerable to being taken off the register.

Matt:        One of the things I come across a lot in consulting… particularly start-ups. They tend to go along and register a business name, and not actually register a trademark. Can you tell everyone just very briefly why it’s so important to grab hold of a trademark, and maybe a disaster story…. Not mine, because I can tell you, I’ve had a lot to do with this (laughing)…

Sonal:       No, another one (laughing).  The reason it’s important is because a business name doesn’t give you any ownership rights … any proprietary rights at all.  So you have to have a business name registered to be able to conduct business under that name, but there are no ownership rights. The only way you can get ownership rights is to register the name as a trademark.

Matt:        Is it true that a trademark owner could stop a business?  A business owner could theoretically create a business name and that name could infringe trademark, so a trademark owner could stop them from trading under the name they’ve registered?

Sonal:       That’s right. So if you register your business name, but somebody else has the trademark registration for the same name, they can stop you using it. If you are the first to use, even if you don’t register the trademark, you can say that you’re the first to use… and you would have been able to register it. And that will help you if someone tries to sue you. But it’s not ideal, because somebody else is using what you think of as your own name.

Look, I’ve had a few instances where I’ve acted for small businesses that have breached a business name. In fact, I’ve got one going at the moment.  Eight years after my client started using his business name, somebody who’s got a prior registered trademark made a complaint.  And he’s a small business in another state, and it only became an issue when he decided that he should get a website. And of course, once you have a website, people can search. You know, a lot of big companies are doing routine searches… and he got picked up. So, I’ll get him out of it. It will all be settled, it will all be fine.  But it’s really important, if you’re deciding on a name, to check the ASIC register, and you need to see if you can get it as a domain name.

Matt:        Of course, these days it’s much more complicated than just the trademark. You need the domain.  ASIC is the business names register. That’s national now, isn’t it?

Sonal:       That’s national now. So one search does that, and you need to do a search of the trademark register.

Matt:        Let’s go back to trademarks for a second. So, disaster stories… what’s the worst thing that can happen if I don’t register a trademark on launch, and… give me a gory disaster story.

Sonal:       Worse-case scenario, Matt… and I had this one years ago, when the trademarks register didn’t have nearly as many trademarks. So our client had not done a search of the trademarks register at that time. They were a large company expanding into a horse feed product.  All their marketing material had been prepared. They had a massive launch planned, and one of my colleagues rang me and said, “Someone’s just mentioned trademarks – can you just register this trademark?” So we did a search, and the first thing we found was that the mark was taken. I rang her back and said “You can’t use it.” And her comment was, “Well, how do I tell my client after we’ve been advising them?”

Matt:        So even lawyers leave IP too late?

Sonal:       Well, this is twenty-five years ago, when lawyers in groups probably didn’t talk to each other as much. And intellectual property really has only come to the forefront of people’s minds in the relatively recent past.

Matt:        So when should people start thinking about IP and engaging an expert like you?

Sonal:       As soon as you’re thinking of either developing a new brand, or starting a new business.  Everyone should at least do google searches at the beginning, to see if their name is being used, or if something similar is being used, and if you see someone else using the name you want to use, then immediately you have to change. If you can’t find anything immediate, then it’s a good idea to search ASIC to make sure the business name is available. And go to someone who can do a search of the trademarks register. You know, it’s not always as easy as putting in the exact name that you want.

Matt:        Yes, so I’ve done a couple of self-registrations, and seen a couple of things go wrong myself. Not for clients I must add – but for our business. And one of the things that can go wrong is overlooking phonetic similarities.

Sonal:       That’s right.

Matt:        And another one is trying to register a descriptive term. Can you explain a little about where I went wrong?

Sonal:       In order to be registrable, your trademark has to be distinctive. And it has to be distinctive of your goods and services. So, say for a law firm, like Moore and Moore IP. I couldn’t get something like “Lawyers” registered as a trademark. Because that’s purely descriptive, and other traders would want to use it.

Even a name can be quite hard. Something like “Moore Lawyers” could be a bit difficult because Moore is a common surname.

Matt:        You can sometimes get that through, can’t you? If there are a certain number of names on the roll, or…

Sonal:       Yes, under 260 I think it is. But there are difficulties there. Unless you can prove use you might have a problem, if it is directly descriptive. If you’re selling pens, you know, if you’re a stationery store, you couldn’t get…

Matt:        Pen Store.

Sonal:       Yes, Pen Store. You might if you have a really amazing logo. Because logos can become important. The other thing is the phonetic similarity. If you are a clothing manufacturer and you’ve got a famous brand like Christian Dior, you would not get through something like Khristian Dior spelt with a K or anything that is phonetically similar like that.

Matt:        So people assume … they make a little change, and that’s going to get them through, and it doesn’t?  So are the rules variable? Does it vary by country?

Sonal:       It’s a bit of both. The way the system now works, is that there’s something called the Madrid Protocol. It covers a large number of countries, and has rules that guide applications and registrations. So you can make an application in Australia and if you actually want to get your trademark in quite a lot of other countries, you can actually do that from here, off the back of your Australian registration.

Matt:        Okay, now that sounds a bit like a job for a specialist as well. Is that something that you for example would help with?

Sonal:       It is.  Also, IP Australia has a great programme called Head Start, which is there to help small businesses and individuals doing their own trademark applications. It’s easy if it’s a word, but I’ve had one person who wanted her logo registered, and what she did was… She just actually attached the entire banner from her website to the trademark application, thinking that the trademarks office would just pick up the logo, and in fact it was the whole banner which got registered.

Even with words, there are a few traps … you just want to register in plain, block letters.

Matt:        So as a general rule, I was taught that logos are a relatively weak form of protection versus an all-capital wordmark. Is that the case?

Sonal:       It depends. Wordmarks are great. Because the chances are that your wordmark is not going to change over time. So if you get plain block script, even if you begin to have some sort of stylisation around it, you’ll get the best protection here in Australia. I think the problem with a logo is, if it’s very distinctive, it’s going to be protectable… but if people start changing it, they probably don’t have to make too many changes in order for it to no longer be considered “deceptively similar” or “substantially identical” – so that’s where a logo begins to be a bit more difficult.

The other thing is that companies change their logos. You know, when you think that your…

Matt:        What, marketing people change logos? (laughing)

Sonal:       I know! Marketing people change logos! (laughing)

Matt:        The three R’s of marketing…Rebrand, relaunch, resign.

Sonal:       You know, the problem when you re-design something is that you’re no longer using what you’ve got registered. You have to re-register. It can be expensive. So again, I had a client who did her own trademark application for her name, which incorporated a logo.  Somebody wrote a letter of demand to her in relation to it.  So she had to change her name, but in doing that, she also then had to re-register the logo on it’s own… even though there was no problem with the logo.

Matt:        …Marketers, stop messing with the logo! We get very bored with the logo, far before the customer gets bored with the logo.

Sonal:       So, just skipping back to what you might have to put on your trademark application. The other thing is that you have to put in a specification, which is the list of goods and services you want covered. And that’s really where, I suppose, you’re paying for someone to get it right.

Now, if you do a Head Start application, you can just go through that pick list. But, let me say that there are a thousand things to choose from, and you have to go through the thousand things and choose which is the best.  It will work well with simple products, like clothing, but if you’re doing something a bit more complicated, especially where services are concerned, then you’ll want to draft your own specification, and that’s where you’ll really need someone with expertise.

Matt:        So what’s the difference between passing off and a trademark infringement?  I remember the Red Bull/Livewire case as one example where someone succeeded. But I’ve heard that it’s very rare that people have actually been able to get a passing off action through.

Sonal:       It’s getting more rare… so if you’ve got a registered trademark and you have to sue someone, the three claims you’ll normally make are: the infringement of the trademark; a breach of the Australian Consumer Laws (misleading or deceptive conduct); and passing off.

The beauty of a trademark infringement case is that if someone is using your mark in relation to your goods or services, that’s all you have to establish.

Matt:        So there’s not a lot of grey area…

Sonal:       You don’t have to establish reputation, so that is the beauty of a registered trademark.

Matt:        Some people think that ethically, the ability to have a monopoly right over a word or an image is questionable.  Are there differences in different jurisdictions… in terms of ability to get those rights?

Sonal:       Where the ethical issue arises, and where the law supports it, is that you can’t get names that are not distinctive. So if it’s distinctive, and don’t forget, a lot of the time (and marketing people will know this the best)… a lot of time and effort have gone into creating a name and a logo for your business or for your product. So there is that… if you have expended that time and effort, you should be able to protect it and stop other traders from using it. It also helps consumers, because they won’t be confused about where goods or services have come from.

Matt:        Which actually goes right back to the very intent, and the start of, branding.  One of the very first brands was Sunlight Soap.  Soap used to be carved off like a slice of butter by your local grocer, and then… I think it was Lord Lever decided to develop a stamped, packaged bit of soap, so you could tell it was pure.  And this was the purpose of brands – to help people be sure they were getting what they paid for.

Sonal:       Yeah, and look, before we had the internet, and before we had so many small businesses … before we had global businesses, it was all much simpler for marketing and branding people. Things are becoming more complicated, because so many more people have registered trademarks.  The fact is, you can come up with a brand you want to use, and there might be a very small business over in the hinterlands in Western Australia who had the foresight to register the trademark for the same goods and services, and that trademark is valid all around Australia.

Matt:        Yep, first in, best dressed…

Sonal:       That’s right.

Matt:        You mentioned globalisation, and we talked before about the internet. Something that’s happened with a few of our clients is, they would like to have a domain, but someone’s squatting on it, or the domain they’d like to have is just unavailable. So, are domains an issue that you’re dealing with, and what are some principles? Can you stop someone from using a domain? What happens?

Sonal:       Domain name disputes are actually becoming bigger, and are a part of what I do. In fact, all of the domain name disputes I’m working on revolve around the use of “”.

Matt:        And are there a lot of these?

Sonal:       Yes.  And you can take a dispute up with WIPO (World Intellectual Property Organisation), under their rules…

Matt:        Sounds expensive…

Sonal:       It can be cheaper than court. But I’d probably see about ten decisions a week, and that’s not all the decisions that are coming down. It’s just the WIPO decisions…

So, say with the .au dispute, there are three elements you have to prove. There are more and more of these disputes happening and they are still expensive. I think it costs $2000-3000 to actually start the dispute process with AuDA… which is the Australian Domain Association.  You can file either under the AuDA rules, or you can file with WIPO. There are different ways of doing it. It gets a bit complicated, but it’s still about $2000-$3000.  You then have to pay to get your evidence. You have to make submissions about why that person shouldn’t have that domain name. A panel will review it and make a decision, and you don’t get any costs back.

Matt:        Is there an appeal process?

Sonal:       You can’t recover your costs. There’s no appeal process…

Matt:        What’s the lesson then?

Sonal:       Well, the lesson is that it’s cheaper than going to court, because, if you’re a company that could be like $6000 just to start the proceedings.

Again, in order to really found your domain name dispute, the first element you have to show is that that domain name is substantially identical or similar to a trademark. If you don’t have a registered trademark, you have to prove you have a substantial reputation. So if you’ve got a registered trademark… it’s much easier.

There’s actually a recent case over the name ‘Central Coast Locksmith’, which is pretty descriptive, so you think “How could you get that through as a trademark registration?” Basically it started with a dispute over a domain name, One company had been using centralcoastlocksmith, and actually had an application to register the trademark on foot. They lost the domain name dispute, but at the end of it, the panel said “If you get your trademark registration through, you might be able to come back and lodge another dispute action.” So , what’s happened now is, Central Coast Locksmith has been accepted for registration of a trademark, but the domain name owner is now opposing that registration, so it’s got a long way to go…

Matt:        One question that comes up a bit with our clients when they’re trying to pick up a domain is around whether to buy the domain from a cheap US domain provider for $4.95, or pick up a domain from an AUDA member seller. Is there any difference – I mean does it give you any additional protection if you’ve bought something from an AUDA reseller? Or in actual fact, might you just as well go for the cheapest domain name registration you can find?

Sonal:       Yes, it doesn’t matter who you get it from, because there are a certain number of authorised registrars who can have them.  From personal experience, I think it’s more to do with how well that registrar supports you, like if you want hosting etc…

Matt:        Like the actual registration itself, if you needed to manage a dispute, you can manage it anywhere.

Sonal:       That’s right, it’s really the functionality you get once you start getting your website up. So the other thing to look at is cyber-squatters. You know, people who pick up domain names just because they can. That’s a question I get asked a lot. “What should I register? Should I register .com or Because traditionally .com has been used if you’re more of an international business. .au if you’re in Australia… Because it’s not that expensive, you know, as a new business, you might want to think about registering both, and just getting your .com and your, then decide which one you want to use. But there’s not going to be any harm. I also have clients who will go for a few of the common mis-spellings of their name.

Most important is to get your trademark registered, so you can actually stop other people…

Matt:        So what I’m hearing you say is that it all starts from a trademark registration, because without that, everything else gets a lot harder.

Sonal:       Yeah, if you’re setting up a new business or a new brand, do those searches of the trademarks register.

Matt:        What about copyright? I had a nightmare experience, nearly 20 years ago. I was running a range of soups. There were something like 50 or 60 products, and they all needed new photography. I went away and did full pack photography for 50 products. And then the photographer said something like “Actually, now you need to pay me $2000 a product over what our contract was, because I own the copyright to these images…” Which was a bit of a shock to me and my boss at the time.  What had happened was the law had changed.

Sonal:       Until probably just before then, if you commissioned a work, you owned the copyright of the photographer. And then the law changed so that the photographer actually retains copyright. The trick with that is, you really need to think through where you might want to use these photographs. A lot of commercial contracts will say you get a license for a year or two years or whatever, to use the photographs on packaging, or for an in-store promotion, etc.  I’ve actually been involved in a case where it was the flipside. I acted for the photographer whose photograph ended up on a billboard. Like a two storey high billboard.  And that had never been paid for, it wasn’t part of the deal. It’s just a question of having those discussions… just like any other commercial arrangement… and thinking about where you may want to use in advance.   And before using the images, checking with the photographer to make sure you have the rights.

Matt:        So it is possible to have the copyright assigned, but the assumption is that in the absence of an assignment, the creator owns the copyright?

Sonal:       Yeah, so the law is that unless you have an assignment in writing, signed by the creator, there’s no assignment.

Matt:        Is that right? It has to be in writing? Is this the case for copywriters as well? Say I write some advertising copy for a client … does that apply as well?

Sonal:       Yeah, as an independent contractor, you own the copyright. And unless you assign it, you retain it. So you obviously have given some sort of implied license to your client to use it…

Matt:        Absolutely.

Sonal:       Interestingly enough, this year, I’ve been doing a lot of discussions around tables where there are both website developers and people seeking their services. And so we get into copyright tensions between the client and the website developer – who as an independent contractor, is the copyright owner.

Matt:        That could include the content, the design…

Sonal:       The logo… sometimes website developers will actually get involved in designing the logo for a business, which goes on the banner… all of that. And what I say is that the website developer may own the layout and things, ‘cause they may want to use that again. But really, the client should be able to own the content and the logo… get an assignment.  Because especially in this day and age, when people set up as website developers, they may not be around in three or four years.

Matt:        Oh, it’s a classic problem, yeah.  I imagine this becomes an issue if you want to sell a business or license something, and all of a sudden a buyer says “I can’t establish that you own what you’re trying to sell me.”

Sonal:       Huge where that’s concerned. Also huge when somebody starts copying you. Because unless you own the copyright, or you’re the exclusive licensee in writing, you can’t make a claim to stop somebody else copying what you have.

Matt:        So if you see great slabs of your own copy used in other people’s websites… like on the other side of the world… is there anything you can practically do?

Sonal:       You know, if it’s someone on the other side of the world, there’s not much you can do. If there’s someone within Australia and you are the copyright owner, you can write letters of demand, and they work quite well. If they’re copying everything and it’s a bit of an obvious one, an actual reproduction of a work you own, then they’ve infringed your copyright.

Matt:        So one issue of for a lot of marketers, is the issue of talent, and featuring someone’s visage in advertising or whatever. What are the things that marketers should look out for with talent? Do people own their faces? How does this all work?

Sonal:       So we’re a bit different in Australia to America. In America they have personality rights, where people can sue if someone uses their likeness and things like that. We don’t have that here. The real issue is a misleading and deceptive conduct one, or a sponsorship and endorsement one. So if you use a famous person’s likeness or name to promote your goods or services, consumers will think that you have some sort of affiliation or connection with them… and if you don’t, that’s misleading. Look, it’s important if you’re going to use talent that you get the right releases from them. And again, you think about where you’re going to want to use their image. You need to give a lot of thought towards where you’re going to want to use it, and have those discussions.

Matt:        And in Australia, there seems to be a bit of misunderstanding, but if you take a photograph for your website, you’ll own the copyright for that website, but if there’s a person in that image, in some countries you will need to get their permission.  Am I right that in Australia you can actually take photos of people without their permission, which might not actually be legal in say, France…

Sonal:       Yes, because we don’t have the same sort of laws, but we do have a whole heap of privacy issues. Laws are getting more strict, so that’s a whole other discussion… I would always be very careful. Personally, I wouldn’t like to see my photo up on somebody else’s website when I haven’t known that it was going to happen. So I would always say to clients “really, don’t do it”. That person could complain there’s misleading and deceptive conduct, and they could complain that you have breached their privacy … and you’ve got to be especially careful obviously with kids.   It’s not really intellectual property related, but I always say to my clients, “Whatever you put up on your website, make sure you’ve got the rights to it…”

Matt:        And you’ve mentioned privacy, since that’s probably the number one issue with marketers at the moment, when it comes to legal… assuming they’ve sorted out their trademarks. We’ve had some new laws come in just this year in Australia that are quite serious with some quite serious penalties. Can you just outline briefly what’s at stake, and what marketers need to think about?

Sonal:       Okay, so, what’s good for small business is that the privacy principles, which came in in March, only apply to companies that have an annual turnover of more than $3million a year, or if you’re in the health services industry, because then obviously you’re getting very private and sensitive information. Mind you, not to say small business doesn’t need to worry about it.  People who consider themselves to be a small business might still be making over $3million.

Matt:        Is that a revenue measure? Or a profit measure? If you’re selling cars, you could do that figure very quickly, for example… or houses…

Sonal:       I think it’s just annual turnover. It’s probably what you gross.

Matt:        An estate agent might hit it in week one of the year…

Sonal:       That’s exactly right. So basically there are two policies. One is your external policy that your clients can see, and anyone visiting your website. And a lot of that has to do with the fact that so much information is now stored in the cloud or overseas. And so making sure that when you collect information that is personal or sensitive, you’re disclosing to people where that information is being held… and where it could be stored.

Matt:        So the penalties for not complying with this stuff for marketers are quite severe?

Sonal:       I don’t know off the top of my head, but they are severe. You don’t want to be the first person to be prosecuted for a breach of the privacy principles.

Companies also need to have an internal privacy policy. So that’s just an OHS policy, or your anti-discrimination policy. You need to have something for how people can collect personal information, and how the organisation will deal with it.

The bottom line is, people need to start reading the contracts they’re entering into. Even marketers. I think when people are considering storage and back up options, there’s a great tendency to just go “Oh, I’ve heard of this great new thing, let’s use that…” and not really look at what’s being promised.

Matt:        Someone said that if you read every terms and conditions of everything that you signed up for online from top to bottom, there’s a million years of reading. You’d never get out of the office.

Sonal:       No, but the important ones… that’s why you have lawyers…

Matt:        There you go! (laughing)

Sonal:       You know, liability issues, maybe insurance, maybe limitation of liability clauses in your terms and conditions when you’re dealing with your clients, or customers’ disclaimers. A lot of it’s common sense. And the tension, getting back to what we were discussing at the very beginning, between marketing and the law… marketing people are creative, and what they want to do, naturally, is to get their ideas out into the marketplace as quickly as possible, and then, on the commercial side, they have budgets and restraints …

The bottom line is that if there’s anything that you’re worried about, or even if for a split second you go “I wonder if this is a problem…” then you should probably get it checked out.

Matt:        Absolutely. One last area I want to touch on is consumer law. I have clients wondering what they now need to put into packs, and on packs… regarding guarantees, warranties, that sort of thing. There was a change a couple of years ago…

Sonal:       A new law came in a few years ago, where if you give a warranty against defects, you have to have certain wording in it. And you have to cover off certain things. A warranty against defects doesn’t have to be on the pack, but there might need to be something inside the pack – an additional document. It’s difficult. I had a jewellery client who said, “How do I put that inside a box with a ring in it?” A link to your website where the warranty is, is not sufficient. It has to go at the point of sale. A lot of companies actually stopped giving a warranty against defects because it’s quite onerous.

Matt:        And the warranty against defects is an additional warranty that people offer above the standard consumer warranty in Australia.

Sonal:       Yes.  And the other side of the changes were new consumer guarantees – consumer goods come with a guarantee that they’re of acceptable quality. And that’s hit the people who give extended warranties. There’s an argument of “Why should I spend more money to get an extended warranty? Because if my product breaks after the standard one-year guarantee, then it’s not of acceptable quality… I don’t need to pay for extended warranty, I’ll just use consumer law.” It’s hard to define the reasonable lifespan of a product … the more expensive it is, the longer you expect it to be okay.

Matt:        Yeah, if a drivetrain drops out of a car in three years and one month, you’d reasonably expect it to last a lot longer than that…

Sonal:       That’s exactly right. They’re the two things… On the pack, the main thing is to tell the truth. Make sure that whatever you say is correct.  I think of the case of Maggie Beer, because the Barossa Valley sign she has is on all her products, as part of her logo…

Matt:        I thought that was a little bit rough, at the time. But I suppose they’re looking to make examples at the moment. The whole issue around consumer protection seems to be getting more and more airplay and more media attention.

Sonal:       It is. They’re taking major enforcement actions. They’ve got a lot of powers since these new laws came in and they’re using them. Obviously bigger names are probably more at risk. Bigger companies. Because there is more likelihood consumers will be harmed.

Matt:        What a discussion!  We’ve been through IP, copyright, domains, infringement, compliance, website disasters….

Sonal:       And that’s just the tip of the iceberg…



This Throat Lozenge Teaches You

What’s more important than almost everything else in marketing, and ignored by almost everyone, especially agency creatives?

Positioning, that’s what.

Positioning is how you want your product or service to be seen, to be quickly categorised by a busy customer.

There are lots of ways of positioning your product but for a masterclass in positioning, look at VOCALZONE lozenges.

Now my bet is, most throat lozenges have pretty much the same ingredients and do the same “job” at a functional level.  You have a sore throat, you suck on a lozenge.

How else can you position a lozenge?

You could be medicated, like Strepsils.

You could be warm and comforting, like Butter Menthols.

You could clear the nose and head, like Vapodrops.


Now what about Vocalzone, introduced to me last week by JC.

This is the lozenge for TALKERS, SINGERS and SMOKERS who need to regain their VOICE.

And the afterthought… if you have a cold you can use us too.

This is brilliant positioning.  I wonder if it has enough volume behind it.  I suspect it would…

I’m never going to buy another lozenge again.

Yes, it tastes disgusting.  So it has to work, right?


Cynical Marketing Case Study: Coca Cola Amatil & Mt Franklin Rip Off Breast Cancer Charity

Read on for an example of how low CCA will go to make a fast buck out of Breast Cancer, one of the most worthy charities around.

Mt Franklin is a 300M+ water brand. Coca Cola Amatil love to mention it in their annual reports because it has fat margins (cost of water: almost nothing, bottle cost declining). Nice for shareholders. Mt Franklin has enjoyed strong growth for years on end. And one of the things that has driven their growth has been an association with the breast cancer charity, National Breast Cancer Foundation.

Recently, Mt Franklin switched from NBCF (which funds research) and put their money into the McGrath foundation (breast care nurses). When they switched, they saved (i.e. effectively withdrew from charity) $100,000 a year, and kept up the “pink lids” strategy.

Now even though I’ve worked with the NBCF, I don’t have a major problem with CCA switching horses. I do have a major problem with them SAVING money on the best sponsorship platform these guys have ever had – and at the direct expense of the Breast Cancer world.

Let’s have a look at a media release typical of the muck trotted out by these clowns.

MEDIA RELEASE 18 September 2012:



In a bid to empower consumers to share the McGrath Foundation message, donate and engage with the charity, ‘Mount Frankin’ has revamped and extended its famous pink lids campaign to help fund additional McGrath Breast Care Nurses in communities right across Australia.

Let’s be honest. If they really wanted to “empower” consumers to “donate” they would make a very clear per-unit donation on ALL the pink lid bottles. Something like 10c a bottle would be an absolute minimum amount I’d want to see. In fact, I’m sure most people assume the’re donating more like 20cents a bottle on what is often a $3.50 or more purchase. As you’re reading this, consider how much of your $3.50 at the corner store you’d expect to go to the nominated charity? Exactly my point. Facts are, on a standard bottle, the REAL donation to charity is a fraction of a cent. “But this year,” they would say if they were reading this, “we’re doing a 10c donation per 6L multipack.” Hmm. That’s ok. Oh, wait, hang on a minute – no it ISN’T OK! That’s 10 cents in 6.99. That’s PATHETIC TOO. Per 400ml equivalent, that’s just 0.6 cents. Well, gee, that’s SUPER generous. And this is only on the giant multipack which is a tiny fraction of their sales and only available through a sliver of independent retailers. No wonder they don’t like transparency. Hey, Mt Franklin team. I’m talking to you. When will you put your donation amount on EVERY bottle? Hey? One day I hope they’re forced to by legislation or sheer embarrassment. What CCA are really doing is USING a great charity to grow their highest margin product each year. And at a rate that costs them almost nothing. Their new base sponsorship for McGrath is $250,000. This, by the way, is NOTHING for a sponsorship being leveraged at the scale of Mt Franklin. Oh, by the way, CCA MD Terry Davis’s last reported salary & super was a blistering $7,900,000.

In addition to donating $250,000 in 2012 to the McGrath Foundation

Sorry, this needs repeating. $250k is a pathetically small donation for a brand this size. Compared to the category, compared to other sponsorships, compared to Terry’s pay, compared to what consumers  think they are donating when they choose a pink lid. Then they say this…

the multi-phased ‘Message’ campaign will see ‘Mount Franklin’ donate its most valuable real estate – its bottle – to the McGrath Foundation, enabling Australians to view and share video messages of support, using QR code technology.

Oh Please. What a press release GEM. So… Mt Franklin needs a nice sponsorship platform – but are too stingy to donate an appropriate amount. Then they claim using their pack to promote their association is a “donation.” Give me a break from this sheer bullshit. When any other sponsor gets the rights to use a platform to promote their brand, they don’t pretend that their most valuable contribution back to the charity partner is the on-pack sponsorship leverage. Helloooo CCA? Um, the stuff on the bottle is your ON PACK PROMO for your sponsorship. It’s what you do to make people buy more of your water, remember?

Remember the meetings about brand fit and sponsorship? About brand equity and making women loyal to Mt Franklin? The brand tracking from Nielsen? The brand health pyramids? Remember? Go look in your brand plans if you’ve forgotten – it’s all in there. Then take a look at your brand P&L and work out what % return you are getting from your stingy donation. And you try to tell us it’s your pleasure to give away some of your oh-so-precious label space. On it goes…

From mid-September, bottles of ‘Mount Franklin’ spring water will become a voice for the McGrath Foundation, encouraging consumers to get involved, either by donating, passing on a message or creating their own message of support.

Which all would be great – if it wasn’t for the fact that a) the sponsorship base donation of $250,000 is woefully inadequate b) the actual donations consumers are making are TINY – far less than half a cent per 400ml bottle.

‘Mount Franklin’ bottles will be given a makeover to promote the ‘Message’ campaign, with various packaging designs being rolled out over the 5- month campaign in an aim to draw attention to the cause and encourage participation. With the first phase of packaging features the phrase ‘A Message Just for You’.

Oh reading this makes me want to spew. CCA are running a 5 month promotion on Mt Franklin using Breast Cancer and have only donated $250,000 (just 50k a month). $250k incidentally was the SAME amount they donated to NBCF back in 2007 when the brand was much smaller. So in real terms their sponsorship of breast cancer charity has dropped while the costs of the charities and research have increased and Mt Franklin has grown volume year after year. (And all while they boast about their new lightweight bottles saving 35% of input PET costs). If Mt Franklin were remotely geniuine about Pink Lids being a Corporate Social Responsibility campaign, they would be committing $1M as base sponsorship. Now let’s look at this through the lens of the “CCA Behaviours” they expect of employees:

Empowering: I trust you to do your job

(No matter who it hurts).

Communicative: I hear it how it is, I say it how it is

(Unless I don’t want the consumer to know how little we contribute to the cause we leverage for 5 months a year).

Customer-Centric: The customers’ business is my business

(But screw the end consumer).

Initiating: I am proactive and positive

(At saving money).

Collaborative: CCA first, my team second

(And breast cancer victims last).

Reader John writes:

Hi, ref your rant about CCA, just bought Ansell Handy Clean disposable gloves. Woolworths price was $7.33. Pack says” 30 cents from the sale of this product will be donated to breast cancer research” and also has National B C Foundation gold partner. About 4% of retail paid, interesting comparison with the 6 pack of water I thought.

What could have been – accadacca

Accadacca and wine.

Initially I was horrified.

The other week we saw 4 guys at Bar Italia with a bottle of ACDC red and changed my mind.

What a great way to get blokes (and cashed up bogans & bogettes) to feel comfortable about wine.

When I saw this on special at $11 (reduced from $18) I bought a bottle.

I was impressed with the winery () and the grape source(). And the bottle is a deep punted premium bottle.

I had high hopes.

But sad to say, I didn’t think much of the wine. I suspect it’s blended for a “new to wine” palate.

Ps – my phone just predictive spelled “accadacca”


What the heck is this? South Aussies know…

What do you think this is?


It’s a cup-holder “adapter” so South – Aussies can drink their favorite drink and have it in the round car drink holder!

Farmers Union iced coffee reportedly outperforms coke in South Australia – quite a feat given what coke reps like to do in the trade to make it hard for the competition.

Great idea, well done.

Honest Tea and the Stars

Honest Tea was the tea on the lips of the Sydney A-list this week.

The girls from Honest Tea wowed a VIP crowd with premium teas blended to the personal tastes of guests invited to the Daimant hotel’s spectacular penthouse for the launch of Johnnie Walker Platinum.

Here are a couple of pics from Urban Society

Nauseatingly Fawning Digital PR

Don’t get me wrong, I like Apple as much as the next guy, and probably as much as this guy:


But is this iPhone article  which was featured on the lead page of the Sydney Morning Herald online a parody of the media love of all things Apple?  It feels like it… just look at the stats:

Branded mentions of iPhone: 7 (5 as iPhone, 1 as JesusPhone)

Photo of iPhone and delighted user: 1

Branded mentions of other Apple services:  MobileMe (2) MacBook, MacBook Pro

Branded mentions of Apple: 3

COME ON Fairfax!  Please at least TRY to make it look like it is real editorial.

Fantastic Marketing – Of A Person!

This weekend’s SMH carried one of the most inspirational ads I have seen for some time.

It was compelling, relevant and eyecatching.  But here’s the twist…. it was NOT for a company, it was someone (Collen Chan) looking for the right place to work.

If I was employing a statistician or analyst I would offer her a job on the spot based on this fantastic effort.

Colleen Chan

(sorry about the resolution – I just got a new phone, upgraded from an N95 to an iPhone, and the only downside with the iPhone is the crap camera (but as someone pointed out to me the other day… it is a telephone after all!  Just got spoilt with the Nokia.  BUT I digress…)

Let’s use the old ABC  to look at why this is suuuuuch a great ad.

Attention:  Well, a job seeker taking out a 1/8 page colour ad in the paper.  That’s gutsy and attention grabbing; it got mine.  Simple visual of the boss wanting people to check with Chan- 8/10

Branding: “Check with Chan” – Make it company policy – such a brilliant idea; and it carries exactly the right message in just 3 words! – 9/10

Communication:  You should put me on your shortlist – you bet.  And contact me on linked in. Perfect.  – 10/10

To anyone considering hiring an analyst/statistician, check her out here:

Invent your own PR platform – claim you’ve outgrown the SYSTEM!

This is an interesting spin platform I wish I had thought of before.  And it could work in any industry that has some kind of generally adopted rating sytem (wine, airline service, the list is endless):


Locigally, you can’t compare another 5 star (NCAP) car with the XC 60

This is great!  The Volvo spin doctors are basically saying that there are not enough stars in the NCAP (New Car Assesment Program) and that (surprise, surprise) the new XC60 is SOooooo good that it effectively demands a new level in the safety rating system.  I have to say, I love the strategy – and it looks like the Sydney Morning Herald took the bait beautifully!

And judging from the reaction at the SHM drive blog discussion on the topic, not one regular punter saw through the clever (we are SOoooo safe….) spin for Volvo that the headline telegraphs:  VOLVO OFF THE SAFETY SCALE!

And the hook could work so easily in other categories.  Take wine.  A line like like “this wine has won so many TROPHIES that we need another level of award!” (trophies are the top score in an Australian wine show) .  Brilliant!

And there is already a growing concern with the devaluation of wine shows here (see this Choice item) and the rampant medal inflation that has bottlers even sticking labels that only look like medals – to attract the attention of the consumer.  Perhaps some wine maker could cry “foul!” and demand to have the system changed to fit their high standards!


Fake medal!

Coud “busting the system” work in your category?  I bet it could.  Give me a shout at!

Darwin Day – Darwinian Marketing

Well today is Darwin day – 200 years since Darwin’s birthday and 150 years since his publication of  “On The Origin of Species.”

What Darwin did as a scientist was remarkable.  He developed a unified theory of origins that displaced the need for magical intervention and has been the basis for biological science and study for 150 years now.  (Sure, he didn’t predict genetics and DNA, but that’s what’s even more remarkable -the discovery of DNA suported his predictions).

So what has that got to do with marketing?  Some people talk about “brand DNA” but while I think that is a useful metaphor in some ways, I think it is not really about Darwinian marketing.

Darwin’s essential discovery was that if you have an organism replicating in a system, and that organism is able to mutate,  then you will necessarily end up with…. EVOLUTION!

That is, that mutations and changes in an organism will, over time, adapt to the environment to provide successively better performance (in the case of life on earth, performance equals reproductive and survival rates).


Question: So what has this got to do with marketing?  Answer:  Great marketing is Darwinian – it evolves.

A great example of this is split testing of advertising, as practiced by the great direct marketers in the 1950s and now resurrected by the digital marketers of the 2000s.

Split testing means running two different executions in the same situation, to see which advertisement attracts the greater interest, response (or click-through).  As an aside, in the old days of direct mail, different ads had a response address which differed so the advertiser could tell which advertisement the consumer was responding to.  Box 11 related to a particular advert, Box 12 to another.  So by comparing the responses to each different box, the advertiser could tell which was the more powerful advertisement.  Nowadays the same measurement can be done automatically by Google (for example).

The point about split testing is that you can – with a very small amount of effort – end up with a situation which mimics evolution.  YOU have to be the one responsible for creating the mutations (changes) in the advertising content.  But if you do split testing you will end up harnessing the same force which resulted in the human brain gradually evolving from the primordial soup.

When you split test, the winning execution “wins” in the reproductive stakes and gets to fight another day.  But when a “mutation” (improvement) to your advertisement means that it gets a better response – well that then becomes the dominant species of advertising – until the next improvement.

Of course, the reason you can simulate evolution is because you are able to measure the performance of your advertising.  If you can’t then you have big problems deciding whether to award survival to the old advertising or the new mutant.  Measurement allows you to simulate natural selection, rewarding more and more powerful executions.

So, setting up your marketing and advertising activities so they cannot help but evolve over time is one of the greatest things you can achieve as a marketer.  And Darwin would be proud!

Happy Darwin Day!