Frank Schöne-de la Nuez is a trademark lawyer and the brand strategy consultant behind Leonardo Skincare, currently being launched into overseas markets. He shares his trademark tips with NZBusiness.
For the past 13 years Frank Schöne-de la Nuez has worked in intellectual property law, primarily focused on trademarks and copyright cases. In this field he worked closely alongside marketing and advertising professionals, and therefore had a close connection to the branding of products.
Frank was contracted for a number of clients in the skincare industry, including Skinfood New Zealand, and prior to that worked for a pharmaceutical multinational in Europe.
“This gave me a solid and practical understanding on how things work in international business, especially in regulated industries,” he says.
When an investor approached Frank in 2015 to lead the Leonardo Skincare and branding project, Frank didn’t hesitate to take up the challenge.
Leonardo Skincare products have been developed with overseas markets in mind. Made under Good Manufacturing Process (GMP) guidelines, they’re engineered to meet the world’s strictest regulatory standards.
The packaging uses what Leonardo Skincare defines as a 'workshop style', which is considered unique in the skincare world. The herbal-spicy scent is very popular among customers, says Frank. “We get a lot of remarks on that.”
There’s no doubt that Frank’s background was instrumental in establishing the brand.
“When you speak to distributors offshore, they all ask you the same questions first, to see whether you’ve done your homework,” he says. “Are all trademark issues solved? Are all regulatory issues solved? Can you do DDP/FOB/xyz? Unless you have short and precise answers to these questions, they won't deal with you.
“These questions are also to test your seriousness,” he adds. “To see whether you understand the big picture as well as those seemingly insignificant and boring details. Once you get past that 'test', you can start talking business.”
In terms of reaching milestones, the first for Leonardo Skincare was securing trademark rights in targeted markets – in particular the US and Europe. It took a lot of time and effort, says Frank. The next hurdle was getting approval for the products in European markets, which required scientific testing and passing formalised safety assessments.
Attending trade shows, like First Instyle in Sydney earlier this year, was also a major stepping stone for the start-up business.
Frank says they have a precise understanding of their targeted market segments for Leonardo Skincare. “We wouldn’t, for example, target supermarkets at all; our focus is on smaller boutiques, department stores and gift shops. We have spent a lot of time and energy on developing beautiful gift packs and packaging that we also market as corporate gifts.”
The US, European Union, Australia and New Zealand are the initial target markets for the brand.
From the case file
As a rule of thumb, trademark law is relatively similar worldwide, explains Frank. However, there are some differences between jurisdictions.
“For example, the degree to which certain categories of goods are considered 'similar' varies. As a consequence, in some jurisdictions a conflict between two similar marks may arise, as the involved goods are considered similar. However, this is not the interpretation in another jurisdiction.
“Always look at things from the point of view of the respective local traders.”
Frank has witnessed a few horror stories during his career as a trademark lawyer too. “The worst case was an extremely ego-driven client who insisted on a certain [brand] name, and a launch campaign that was very critical in terms of fair trading. There was absolutely no room for reasoning. Thirteen injunctions later the client felt inclined to re-consider his views.
“Still, it's [also] true that often lawyers are the ones to say 'don't do this, you must not do that, danger ahead' – and then you wonder; ‘may I breathe?’,” he says.
“Unfortunately, many lawyers don't 'think business'. However, I always try to look at cases as an entrepreneur, with my background knowledge in law.”
If you’re an export firm looking to secure trademark protection, Frank’s advice is to take the trademark aspect very seriously. “Be aware that no matter how good your product is; unsolved trademark issues are a potential showstopper.
“Take into account that if your brand infringes other traders' trademarks, those other traders can also sue your distributor. So you may not only have to take your product off the shelf, you and your distributor can both lose face. Word goes around quickly and you are basically done in that market; so sort out your trademark issues before you embark on the journey,” he says.
“Don't do it yourself, but go through a professional IP firm. Seek practical, down-to-earth advice and avoid IP firms that speak pretentious lawyer lingo.”
The goal over the next two to three years is to keep building the Leonardo Skincare brand and the values it stands for, says Frank.
“For example, our tagline 'Face Your Face' stands for a philosophy that can be summarised as: 'be honest with yourself, live a meaningful life'.
“We see this as a contemporary version of what Leonardo da Vinci, the inspiration behind the brand, stood for.
“We want to generate more traction and penetration in the market, through local boutique stockists; and, regarding the down-to-earth business aspect, hopefully we can further establish the brand in foreign markets.”