AJPark

Preparing a catalogue is stressful.  There are budgeting, layout, modeling and scheduling issues as well as decisions about product availability and distribution.  Some businesses like PLUMBING WORLD, LIFE PHARMACY and POSTIE PLUS make publishing a catalogue look easy.

Several things need to be considered when producing a catalogue.  But not many retailers have a large enough support team to pick up all the tasks.  This sometimes leads to mistakes.  With a little organisation and attention to detail, catalogue problems can be avoided.

Product names

Product names is an area often overlooked. A catalogue involves more than just fresh product photos; you’ll also need new product names. But beware of treating product names as one-off throwaways. You treat your core brands with kid gloves – you should choose your product names with the same care.

Check the availability about product names before printing.

Avoid hidden problems

Catalogue names distinguish between product lines and seasonal ranges but are often randomly chosen to reflect nothing more than a superficial feature of the product. Choosing “sunshine” range or “the beachcomber” to describe a summer collection of clothing shot at the beach are common. Not much care is taken in choosing these names because their value is seen to be limited to the lifespan of the current catalogue.

The catalogue brand tries to mirror the benefits of a successful brand by increasing the saleability of a product.  But a brand is a valuable business asset.  And exclusive rights attach to brands.  While you may only intend to use a particular name as a catalogue brand, another business may consider it a core brand and have rights to it either through use or registration.

Because of time pressure, catalogue brands are often only chosen days before the catalogue goes to print. As a result, catalogue brands are seldom checked for availability in the same way that a business would clear a more important brand.

Introducing a catalogue brand is similar to the launch of a new product.  You would never launch a new product without checking that the chosen name can be used without infringing another trader’s rights.  So why would you consider publishing a catalogue with pages and pages of new names before checking if you can use them?

Trade mark availability searches are important before launching a new brand.  Equally, searching for new catalogue brands will identify existing registered or use rights that could conflict with your proposed catalogue names.

Even a single use of a catalogue brand can infringe an existing registered trade mark. You could have to withdraw the offending catalogue.    You may also be required to pay legal costs (both yours and the other party’s) and damages.  These costs coupled with the cost of producing the catalogue and the loss of sales and revenue, not to mention the distraction of fighting a lawsuit, far outweigh the cost of clearing the catalogue brand first.  As some New Zealand businesses have found, if not enough care is given to branding and product names, the results can be disastrous. 

At the very least, a search should be made of the official trade marks register to ensure your catalogue brands are not registered for the same goods or services. Ideally the marketplace should also be checked for unregistered rights. 

Other name considerations

It is not unusual for one retailer to include in their catalogue products of another retailer.  This usually involves using their brand.  Consent should be obtained first.  Assuming consent is given, the owner of the brand needs to be clearly identified and the brand needs to be used correctly.  This would usually involve showing the status of the trade mark by using the ™ or ® symbol, displaying the trade mark correctly and using a suitable product description alongside the brand.

Be cautious about comparing your product with a competitor’s.  Your comparisons must be accurate and true.  Make sure you do not create the impression your competitors have approved your catalogue. Most businesses won’t take an unflattering comparison well and are likely to complain.  Sometimes trading on your own reputation and strengths is the best advertisement for your business.

Since the new Trade Marks Act came into force in New Zealand in August 2003, there is a specific defence to comparative advertising when it involves registered trade marks. Unauthorised use of a trade mark is usually an infringement but there is a provision in the Act that allows you to refer to the trade mark of your competitors. Any such use has to be honest, must not take unfair advantage of the trade mark and must not be harmful to its distinctive character or reputation. 

A recent case in Britain which may be followed here, limits this defence even further.

If your catalogue compares your products with another, and refers to your competitor’s word trade mark (and not a logo or design feature) the comparative advertising defence would apply.  If your catalogue includes your competitor’s logo, the defence may not be available.  If you reproduce your competitor’s logo, you may not only be infringing their trade mark, but also infringing the copyright that exists in their logo. The comparative advertising defence in the Trade Marks Act will not stop them from suing you for copyright infringement.  If you must compare, take care!

Other matters

As well as the issues mentioned earlier, publishing a catalogue involves other legal considerations.  Some of these are discussed below.

False or misleading statements

It is important for a business to be clear about the truth of all facts or claims made about a product or service.  If promotional or advertising materials create a misleading impression, the Fair Trading Act 1986 or an Advertising Standards Code may be breached. 

The Commerce Commission has imposed some hefty fines on New Zealand retailers (and other businesses) for making false or misleading claims in brochures and other materials. Common problems areas include:

• claims about price
• specific claims about a product or service
• fine print (does it coincide with general claims?)
• consistency of statements made in multilayered promotional material (for example, across packaging, labelling, brochures and advertising).

Ownership of copyright

Producing a catalogue involves pulling together different materials – text, images, photographs, illustrations.  Each of these is a copyright work and could be owned by different parties unless ownership is tidied up by contract.  Just because you pay a photographer to take photographs of your product for your catalogue does not necessarily mean that you own the copyright in that photograph.

Let me explain this by example. You commission an agency to create your catalogue. They  write the text and take photographs to go in the catalogue .  Another business arranges the layout of the catalogue. The catalogue in its entirety comprises a copyright work.  The individual elements of the catalogue are also copyright works.

You (as the commissioning party) would own copyright in the photographs but the agency (the party commissioned to create your catalogue) would own copyright in the text. The business that created the layout of the work will own copyright in the typographical layout.  Even to the uninitiated this will seem like a strange outcome. Having copyright in different parts of your catalogue owned by different parties is a basis for problems, especially if you want to use one or more of those elements again.  Settle ownership of copyright works at the outset.  Entering a written contract setting out who owns what is just as important as the creative decisions you make to create the catalogue.

Other contractual relationships

All relationships about publishing a catalogue should be documented.  This would include your design agency, models, printer etc. The expectations that you have should be clearly outlined as well as time frames, and price.

Get the most form your efforts

Producing a catalogue is a great way to showcase you and your products.  Make the most of the effort that goes into publishing a catalogue by checking the detail is correct.  Continuing professional reviews of your catalogues are recommended.

An edited version of this article was published in NZRetail magazine May 2007

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  Corinne Blumsky

  Partner