Category Archives: Brands and Trademarks

Protection of television formats - The Great British Bake Off

Protection of Television formats – The Great British Bake Off

Protection of television formats - The Great British Bake OffThe Great British Bake Off isn’t just clever when it comes to cakes. By protecting its IP, it has been able to secure a fortune in licensing.

The other day I met someone who told me that she had been advised that it is not possible “to have copyright in an idea”. As a result, she had given up trying to turn her idea for a programme into reality as she would not be able to secure legal protection over it.

What is protectable

It strikes me that two separate issues are being mixed up here: protection of an idea and protection of a concept that turns into something tangible.

As a general rule ideas cannot be protected other than through the law of confidentiality. So, if a party to whom you wish to disclose an idea is unwilling to sign a confidentiality agreement, (or NDA as it’s often called), there will be little you can do if that party runs off with your idea.

In contrast, once a concept is turned into something tangible like a television programme it is possible to obtain powerful protection for it, in the same way as businesses can.

The intellectual property that affords powerful protection

Protection relies first of all on having a distinctive name. Programmes such as Hotel Insprector are poorly named, as they are too descriptive. It is not possible to have trade mark rights over such names. Even if it had a trade marked name, it would be impossible to stop others putting on separate shows using the concept of an expert visiting and suggesting improvements to failing businesses. So, the Hotel Inspector has led to others running with similar concepts and setting up programmes such as Restaurant Inspector and Business Inspector.

The same goes for business formats such as Air B&B; you can’t stop others copying the concept and setting up competing businesses.  But, if you have a distinctive name, at least you will be memorable and can stop competitors using the same or even similar names.

How the Great British Bake Off is protected

An example of a television programme that has protected its intellectual property is the The Great British Bake Off. The show’s producers, Love Productions, protected their IP and have reaped the rewards through a lucrative licensing deal worth millions of pounds.

This was the subject of a recent Guardian article, Great British Bake Off: when iced buns meet intellectual property.

Interestingly, as soon as the programme was launched in 2010, the company filed its trade mark covering a number of classes. Some of them were poorly chosen, but this is unsurprising given that the company did its own trade marking.

Once they were more confident of the progamme’s future success they appointed representatives to file in 8 classes to protect spin offs and merchandise. For example, the company registered in class 9 to protect computer games and other software, in class 16 for various stationery and paper products and in class 28 for toys.

To support its licensing deals, these registrations would have been internationalised in order to extend protection to other countries such as the USA.

Other intellectual property

As well as the Bake Off brand, the company is likely to be licensing its know-how for creating the show and making it a success. Licensees would be given the benefit of its experience in setting tasks and judging completion of the contestants’ tasks. The licensing deal would be likely to include copyright in the programme’s theme tune and its list of cooking tasks.The more intellectual property rights that can be packaged up together, the stronger the protection for the owners of the licence.

In conclusion, if you want to monetise your successful concepts, be they business formats such as Zumba, or television formats such as the Great British Bake Off, it is essential to put in place the right protections. That way you have the full range intellectual property protection to underpin your licensing deals.

Why did Azrights rebrand

Rebranding: When and why should you consider it?

RebrandingThis summer we rebranded Azrights by changing our logo, tagline and brand colours.

In a separate blog Rebranding: Legal issues you can’t afford to ignore I explained the steps we have taken to protect our new brand.

The reasons for rebranding Azrights go back a few years, and stem from the many books I’ve read since founding the firm. For example, Differentiate or Die says specialisation in a subject is a sufficient differentiator. So, in our case, this means our niche status as intellectual property lawyers differentiates us from other law firms. However, I wanted to also distinguish us from other IP law firms, and from large law firms offering intellectual property services.

What rebranding involves

As for any business undergoing rebranding, we thought about who we are, what we do, how we do it, for whom we do it, and what it is like to deal with us. That helped articulate our point of difference.

As I looked around and read other law firm websites it struck me that many of them were saying very similar things. They were invariably pointing to their distinguished history, emphasizing the benefits of their size (big or small), their lawyers’ city law firm backgrounds, and superior legal skills in virtually every practice area. A common statement was how efficient, and service-oriented they were.

After much introspection spanning over a number of years, we finally decided how to separate ourselves from the many others that provide similar legal services.

This has been a useful exercise which ultimately makes it easier for customers to decide which law firm to work with.

Clarity

Even before I founded Azrights, communicating clearly was an important imperative. I was struck by how difficult it could be to understand letters from external lawyers when I was an in house lawyer at Reuters. My role involved translating technical legalese into language the business people would understand.

Intellectual property law is particularly complex for outsiders, and so from the day I founded Azrights, I was committed to making IP easy to access. However, I didn’t appreciate that making the law easy could be a sufficient differentiator. Now that we have adopted this brand value, we are going to live and breathe this commitment. It is not just an empty statement.

We have always published a lot of information on our website, blogs, and in my book. And we have always been committed to using plain English.  However, since our rebranding, I have trawled our website and reviewed most of our services pages myself in order to ensure complex issues are explained in simple terms. I will continue to review our pages and emails to improve their readability.

The more we can strip away unnecessary complexity and provide transparent pricing, the closer we will be to our ideal: making access to global IP easy.

A to Z of IP Rights

We also realised that one way in which we differ from other IP law firms is in the work we do.  From the beginning I was keen to provide clients with the A to Z of IP rights services, hence our name. I felt it was undesirable to have so many different professional firms offering aspects of IP services. In theory, clients would go one provider to protect their name or innovation, another for a copyright or contractual issue, and yet another for litigation. However, in such a scenario there is a real risk of important legal issues falling between the cracks, and there being serious gaps in advice for SMEs. The system involving going to several different types of firm only really works for big household name brands. It is especially unsuited to the new digital environment where a more holistic approach to the legal issues is essential.

I was determined to provide a comprehensive service, and went about doing that by finding a network of experts with the necessary skills so we could provide a full range of IP services. To this day we have professionals who we involve when a client needs particular services, such as patents, data protection, complex litigation and so on.  Our own core team on the other hand focus on trademarks, and copyright and advising on internet law and IT issues. I wrote about these topics in my book, Legally Branded.

I also realised that it is the digital nature of our work that holds the clue to our point of difference. Quite a sizeable number of our clients are businesses setting up online. We do a lot of IT, internet and social media related contracts and dispute resolution work as well as IP registrations for them.

Lawyers who understand the digital world

The fact that we are doing the work we do, comes down to how the digital world is becoming centrally relevant to all businesses. Nowadays everyone needs IP law. It is no longer just those businesses operating in the creative sector or who have a portfolio of brands who need to concern themselves with IP.

For example, the risk of encroaching on other people’s rights is far greater nowadays, because a search on the internet may immediately reveal whether a distinctive name or image you are using belongs to someone else. In an overcrowded world of businesses, it is also becomes more important to register trademarks and other IP in order to protect your business against competitors.

Our clients need lawyers with a solid understanding of what it takes to successfully commission a website and software, to do online marketing, pick a name, and avoid infringing on the rights of others in various situations, including when engaging advertising or marketing help.

Given that our team has backgrounds in computer science, and IT, and I worked at Reuters for 5 years, handing IT/IP matters, another point of difference is the specialist nature of our IP skills. We understand the internet, and social media, and can add significant value.

Our logo

Over the years as we tried to understand our USP and communicate our difference through our logo, the logo became quite messy.  The bull and ‘Legally Branded’ tagline were added to explain our focus on trademarks and branding. We added the words ‘Internet, IP, Identity’ to articulate the digital nature of our work and in a bid to explain that as well as IP, we focused on identity matters.
Rebranding

The messy looking logo was detracting from our aim of making IP law clear and simple. So we chose to work with Marianne, a designer who pointed this out to me and emphasised the value that a new logo would bring.

I’m so pleased I listened to her and opted to work with her.

We now have a logo that reflects our brand values and the digital nature of our work, a tagline that distinguishes us from other IP law firms, and a logo and designs that clearly support our ideal of making IP easy.

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It’s taken 8 years to arrive at this clarity, and it will now be a lot easier to grow the business, and to fulfil our goal of making global IP easy to access and buy.

Take a look at our new branding on this website, in our newsletters (enter your email address in the sidebar to sign up), and also on our recently updated site dedicated to Trademark Registration.

Competitors’ Names in Adwords

Using Competitors’ Names in Adwords

Competitors’ Names in Adwords

In a past blog post, we reported an earlier decision regarding trademark infringement, M&S and Interflora. Here we discuss last week’s Court of Appeal decision to retry the dispute between M&S and Interflora, which means further uncertainty about whether you should bid on competitors’ trademarks when using Adwords.

In May 2013, the High Court ruled that M&S had infringed Interflora’s trademark by bidding on the word “Interflora” to trigger results for its own flower delivery service.  M&S appealed the decision.  Last week the Court of Appeal sent the case back to the High Court for retrial.

In making its decision in the case (Interflora v Marks and Spencer), the Court of Appeal said they doubted a significant proportion of consumers would mistakenly believe that M&S was part of Interflora’s network. However, as the court had not analysed all the relevant documents or seen the witnesses give evidence, rather than overrule the original verdict they said the case had to be reheard by the High Court.

Does using a competitors’ name in Adwords mean there’s trademark infringement?

Bidding on a competitor’s trademark does not in itself constitute a trademark infringement. The issue is whether the ad as a whole suggests a connection with a trademark owner. Would the so-called “reasonably well-informed and reasonably attentive Internet user” be confused into believing that the ad emanates from the trademark proprietor?

In the High Court decision in the M&S case in May 2013, the court thought that a significant proportion of consumers who searched for ‘Interflora’, and then clicked on M&S’s ads, believed that M&S’s flower delivery service was part of the Interflora network.

The decision of the Court of Appeal underlines the difficulty of determining whether or not bidding on a competitor’s keyword infringes their trademark. The answer depends on the facts of each case. Relevant factors are what the ad says, what page it leads to and the relationship between the parties.

Also crucial in practical terms is whether the trademark owner whose keywords you are bidding on has the resources to sue you.

The key message is that it is not risk free. Litigation is possible and may deter some people from bidding on competitors’ keywords.

Google’s policy on trademarks as keywords

Google’s policy is to allow bidding on trademark names, which means more revenue for Google. This is helped by the fact that the standard advice of online marketing experts is to bid on your own name in case someone else does.

Bidding on a competitor’s name, even without featuring their name in your ad, means your name will appear every time your competitor’s name is searched. (Note that stating your competitor’s name in an ad is disallowed by Google due to trademark infringement implications). What M&S did was to pay Google so they could use ‘Interflora’ as a keyword. M&S’s advertisements for its own flower delivery service then appeared on the search engine results page when consumers searched for Interflora’s services using the word ‘Interflora’.

But bidding on competitors’ terms is expensive because such ads don’t perform well under Google’s Adwords criteria. Unless you have your competitor’s name on your landing page (which M&S did not, and which is generally unwise due to the risk of trademark infringement), Google will penalise you for irrelevancy.  So your cost per click will be high, and it could have a negative account-wide impact on your Adwords campaigns too.

Nevertheless, the risk if a competitor gets there first is that their ads may have built up credibility with Google. As Adwords specialists Periscopix puts it in their blog post Should You Bid On Your Competitors’ Brand Terms?: ‘If they’ve had a clear run without any competition they’ll probably have racked up a good Click Through Rate and your bids will need to be higher to beat them’.

This seems to be saying that even if you subsequently bid on your own name, and even though your competitor’s website may not be as relevant as yours for your own brand name, the competitor’s ad may appear above yours.   

Although possibly a theoretical point, the issue has practical relevance for companies in industries such as the hospitality sector, as their hotel rooms or restaurant tables are sold through other sites as well as their own.

Industries that should definitely bid on their own names

For businesses in the hospitality sector, or similar, an additional reason to bid on their names is to reduce the risk of others’ ads performing better than their own.

Say you are a hotel or restaurant that has arrangements with sites such as booking.com and toptable.com. These sites will be bidding on your name. While it is generally unacceptable to include in the ad text someone else’s trademark, these sites will be within Google’s acceptable use policy to do so because they are your resellers.

So, a sizeable number of customers who are likely to book your venue will book through these sites, rather than coming directly to you. That means less profit for you, as you will have to pay referral fees to get those same customers who might otherwise have booked directly through your site.

As a general rule, bidding on your own name should ensure you appear at the top of Google above these other sites, because your website will be all about your company. It will carry more weight with Google than a third party site with a name like booking.com. This leads to an important point about the name you call your business.

Disadvantage of using keyword rich names

A word of warning about using keyword rich domain names or descriptive names: in trademark law it is difficult to stop competitors using similar names. There may be some limited search engine visibility benefits of using keyword rich descriptive names, as we explained in our blog post, choosing names that say what your business does on the tin.  However, this is no longer a good approach for your online business. It has disadvantages on many levels. Our advice is that no business starting out now should opt for a descriptive name, regardless of any search engine advantages. There are other ways to increase your visibility on search engines. So, talk to a trademark lawyer before settling on a name for your business. You will be glad you did.

Conclusion

As stated above, bidding on a competitor’s keyword may or may not infringe on its trademark depending on the specific facts. It certainly makes sense discussing any proposed competitor keyword bidding with your Adwords account manager before authorising them to do so. Also, you should ask trademark lawyers who understand the case law surrounding Adwords to consider your proposed ads before you go ahead with them.

You can find more information on our website about Trademarks, Online Branding and Trademark Infringement.

Rebranding

Rebranding: Legal issues you can’t afford to ignore


RebrandingHow to protect you
r brand when you rebrand

Our recent brand refresh has involved a new logo, tagline and completely new brand colours.

As we had to get new website designs, social media profiles, letterheads, brochure, business cards, newsletter design and more, it might be interesting to explain how we went about protecting our new brand.

Having first hand experience of what our clients go through when they rebrand, it is important to add that anyone who is tempted to pick a name without doing proper due diligence should think long and hard about what would be involved if they had to rebrand. It is not sensible to shrug off the risks, and assume rebranding is something effortless. It involves changing everything. If you have to do it at short notice, then the time, cost and disruption could cause business failure.

So, don’t take a risk over your name is not a sensible business risk to take. It’s more akin to gambling..

For us the work involved in a rebrand was made easier as our name ‘Azrights’ was already registered as a trademark back in 2005.

Contract with the designer

The starting point for protecting our new logo was the contract with our designer.  We read this document thoroughly and negotiated a number of changes to ensure we would own all the rights to our new logo, and designs.

Once we were happy with the contract terms we engaged the designer. Her role was to deal with the overall strategy and creation of the new logo.  Our own separate business implemented the new designs and created our new websites, letterheads and brochure etc. For anyone who is outsourcing such work, it would be important to agree ownership details upfront before engaging the company.

Old and new logo

Our previous logo had been created shortly after Azrights was formed. Back then we differed from other law firms simply because we were an IP law firm. However, we had not focused on differentiating ourselves from other IP firms.

In my next post I will explain the rationale behind our rebrand. Here I want to highlight the steps we have taken to protect the new brand and explain the reasons.

Our chosen logo back in 2006 comprised this old fashioned typescript because it denoted Intellectual Property (IP), creativity and copyright.

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This is the new logo

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Having secured copyright ownership in the new logo under our agreement with the designer, we carefully kept a copy of that contract on file. We then went on to register the logo both as a trademark and design.

The benefit of registering the logo as a design is to have better recourse if others copy it. Like that we are in a better position to avoid losing the distinctive look of the logo.

The benefit of design registration

Consider Coca Cola’s distinctive iconic bottle shape. Had they not protected the initial design with registrations Coca Cola would not be in the position they are in today of owning the bottle design. Without design protection the bottle could and would have been copied by numerous other drinks companies, and nobody would uniquely associate the bottle shape with Coca Cola.

We are hardly in Coca Cola’s league. However, the principles are similar. If you have something distinctive, you should protect it so it can remain distinctive and unique to your brand.

To draw an analogy between business and war, in business it is fair to assume others will copy you. Intellectual property rights provide the way to tackle copying and to deter competitors from encroaching on your rights. They are the equivalent of the weapons with which you would arm yourself for war.

IP rights help you to fend off copying of your distinctive names, logos and inventions. Whether you choose to do so or not by taking legal action is a separate matter. Often, simply registering your rights is enough to deter others from copying.

Good preparation for business

In business securing whatever IP rights you can secure over important brand elements like your name and logo is advisable.

When preparing for war you would probably take a range of weapons with you, such as guns, knives and hand grenades in case a knife was more suitable than a gun for a particular situation. IP rights are similar in that copyright, design registration, and trade marks each give you different possibilities to object to copying. They complement each other.

If anyone were to copy our new logo the copyright in the logo may not be enough basis to stop the copying. The other party might try to claim they came up with a similar logo independently without copying our logo. Proving that they copied our logo might be an insurmountable, expensive hurdle.

Design registration makes it easier to stop copying

In contrast, our design registration puts us in a very strong position. The mere fact that the logos are the same would be enough to put the other party in the wrong, even if they argued that they did not copy our logo.

We have our trade mark too. In some situations the trade mark may not help us tackle copying. For example, if the logo was copied on a website that was not selling anything, we could not use our trade mark to complain about the copying.  We could, however, use our design registration to do so.

Having all rights in the logo

Having copyright, design, and trademark protection over the logo puts us in a stronger position to tackle whatever happens in future.

If you have branded your business without protecting your brand, then why not book a free consultation with us, or take our test to find out if your IP is safe?

Startups

Start up

It can be difficult when you start up to know how to spend your resources. Keeping a tight rein on expenses is essential in the early days, but it’s equally important not to neglect important issues like intellectual property (IP). IP is relevant in a number of different ways, one of these being the name you call your business.

StartupsThe brand name is the primary way in which consumers will identify your business, and is the ‘sign’ that customers use to distinguish your goods and services from those of competitors. Contrary to popular belief you are not free to choose whatever name you like, even if the name is one that is available to register as a domain or company. Your use of such registered names must still conform to trademark laws. Finding a name that is available to use for all your business purposes is not easy – especially if you trade internationally.

When starting up you may wonder what to deal with yourself, and what to outsource. What do you postpone and what do you deal with immediately? How do you go about creating a brand, and when should you invest in branding?

A brand is relevant to every size of business

Some business owners think brands are only relevant to the big household names. However, anyone who aspires to greatness should consider what a brand actually is and what’s involved in creating one.

A business becomes a brand once it is known for delivering on a specific promise. This attracts customers who positively want to do business with it rather than with the competition. The brand also attracts employees, suppliers and, ultimately, investors. So, your brand is what draws people to use your business instead of that of your competitors.

An important point to note is that the good associations customers have with a brand are, for the most part, transferred to its name. Just as individuals are identified by their name, so we identify a business primarily by its name.

Names involve legal complexity

A name is one of the first things you need when you start up in business. However, names involve a lot of legal complexity and potential costs. So it makes sense to have a strategy for the early days if you want to keep your expenses down.

Names are an important way in which the law protects a business, so it is worth taking time to settle on one, and to choose a legally effective name. This must involve a lawyer experienced in trademarks. The name is one of the most valuable IP assets your business generates if it is successful. The very choice impacts the value of the business. Pay proper attention to naming even if you think whoever eventually buys your business will not use the same branding.

Unless you already have a good understanding of your market and the gap you will fill in it, it could save precious resources at start up stage to avoid the expense of naming, design and branding. You will be much better placed to differentiate your business and brand it once you’ve been in business for a while.

Descriptive names

As a start up you might want to use a descriptive name to avoid the expense of trade mark searches and registration, and the risk of infringing on someone else’s rights.  A descriptive name informs the market of what your business does, and this can be useful in the early days when nobody knows you exist.

For example, if you will be providing digital marketing services, and call your business ‘digital marketing worldwide’ you would not need legal checks, expensive designs and more. You could get going and after you’ve been in business for a while choose a proper name. That’s the time to spend on branding. The name you pick must not be a description of your services, although you could always continue to use your descriptive name – ‘digital marketing worldwide’ in our example – as your tagline.

In the meantime, bear in mind how to what is involved to create a real brand.

Everything you do creates a brand

Every brand has its own distinct ‘identity’ and ‘promise’. It’s due to this promise that we know to expect something completely different if we buy a Rolex watch rather than a Swatch.

Everything you do, or don’t do, such as your marketing communications, employees, packaging, website, videos, photographs, premises and logo impacts the impression your brand makes. So you will need proper branding as soon as the business concept is proven.

Many other factors are also involved, including the products or services you sell, the way you respond to telephone enquiries and deal with your customers and the way customers are left feeling as a result of doing business with you.

Other things that contribute to the overall impression include:

  • whether you are a virtual business or based in an office
  • the way you engage on social media platforms
  • whether or not you blog – and if you do, what you write about
  • your writing style, newsletters and emails
  • your terms of the legal agreement with your customers.
  • your physical appearance and that of your staff.

The trust that your business gradually establishes in return for delivering a particular result or outcome is how your business becomes a brand.

You will be known for delivering a particular quality or outcome due to your reliability in the past. Customers will know what to expect if they use your product or service and there’s little risk of an unpleasant surprise. By contrast buying a product or service from a business that has not yet acquired brand status is risky, because it represents something untried and untested.

Conclusion

To get the clarity you need to brand your business takes time. Initially, work out what your unique value proposition is, and try to identify your core customers so you know why they are using your products or services. Then focus on satisfying their needs and get feedback on how they perceive the business.

When you are ready to pick a name, and brand your business be sure to include in your team a designer, a trademark lawyer, and a marketing expert.

Naming your start-up

Naming your start-up: tips for lasting success

Naming your start-upThe notion that the main consideration when choosing a new brand name is its availability as a .com domain is widespread. What is less well known is that you may not be free to use your chosen domain name if the name would infringe on someone else’s trademark rights.

Countless start-ups regularly trip up because they do not realise they need a legal opinion to assess whether the name is free to use. So, there is no point paying substantial sums buying domains as one early stage business owner I met did a while ago. He had paid £10,000 for a .com domain only to be challenged by the owner of a similar trademark when he began using it for his new business. The disruption and financial consequences were an irritating distraction for him. It was completely avoidable. Had he consulted a trademark lawyer before choosing a name he could have avoided this set back. However, many business owners are reluctant to pay for a professional opinion, regarding this as an unnecessary expense. Ironically, this particular business owner, then went out and bought another domain name, again without having any checks, and only turned to us to register it for him. He was lucky that this time there were no problems with the name.

As this is a topic of interest to me, I was amazed when I came across a recent blog post from the CEO and co-founder of “Skilljar” which focused purely on whether the .com was available when choosing a name. In that case the business was changing its name, and surely this is one time when you really don’t want to get it wrong. The disruption of changing names 3 times would be so distracting and wasteful for the business.

Based on her experience of not being able to purchase the .com to the name she was using – Everpath – Sandi Lin decided to abandon use of the name, Everpath (even though her company held every other domain variation, including the important .net) and set off in search of a new name for which the .com domain would be available.

Using the crowdsourcing platform, Squadhelp, she searched for available domain names, and settled on the name “Skilljar”. She was convinced the crowdsourcing site would minimise the time involved searching for a new name. Based on over 800 submissions, she was inspired to pick a new name. Using ‘skill’ and ‘master’ as roots to search for names on Sedo, a domain name auction site, for ‘Buy now’ listings she then found several names that were available to buy within a maximum price limit of $5,000. She also checked for social network availability and searched Google for similar results. So it was that “Skilljar” was born.

What she omitted to do was to check whether the name Skilljar was too similar to a trademarked name in the USA and other parts of the world.

The correct way to choose a name is to do some Google research, check that the desired domain is available, and then get a legal opinion on the name. If the results are favourable, then register a domain as well as a trademark. Trademarks are the way to stake your claim to a name. Even though it is not necessary to register a name to use it, registration gives you far better rights over a name, and puts you in a stronger position if someone else starts using the same name (which they are more likely to do if you haven’t put them on notice of your rights over the name by registering it as a trademark).

So, while Lin is advocating crowdsourcing as a quick and relatively cheap approach which took her only 8 hours and cost the comparatively modest sum of $2,195, it is important that others looking to find a new name appreciate that this expense would be completely wasted if someone else had trademark rights over the name.

As a trademark lawyer I find her decision to rebrand questionable and surprising, particularly as at no point did Lin even consider the trademark implications of her proposed name. She was willing to forfeit all brand confidence to date, and choose a new name, and did not first think to check that the new name would be available for her to use.

Whilst arguably an inconvenience to have to first find out whether someone else has trademark rights over a name, start-ups are in danger of spending thousands of pounds more on enforced rebranding, and on domain names that they are not free to use.

So, don’t just focus on a brand name’s web-friendly characteristics. Avoid a lawsuit for trade mark infringement, and make sure you are using a name you can own.

Ignorance not Bliss

Ignorance not Bliss – Avoiding liability for infringing pay-per-click advertising activity

Often, businesses treat intellectual property just as something they need to own and register, without giving enough thought to the risk of infringement. Even where the risk of infringement is considered, business owners don’t often realise that they could be liable for the actions of their contractors or employees, even if they are unaware of them.

This is increasingly a problem when it comes to social media and online marketing, and a recent dispute illustrates the risks involved. Ayesha Vardag, a prominent divorce lawyer, discovered that, unbeknownst to her, the marketing agency her firm had engaged was bidding on the name of her previous employer in order to generate enquiries through Google AdWords. Following negotiations, Vardag agreed to settle for over £40,000, as reported by The Lawyer.

European Trademark Registration

European Trademarks

European Trademark RegistrationIf you are doing business in a number of different European countries then, rather than registering your trademarks in each jurisdiction separately, you will likely apply for protection at the European level. 

This enables you, through a single application, to  secure protection in all 28 countries (and counting). 

Unless you only need protection in one or two member states, a European trademark is a far more cost effective, and straightforward solution.

However, it is not without its risks. While a trademark application in just a single country generally just faces the possibility of an objection from other brand owners in that country, a European Community Trademark can be opposed by an existing trademark owner in any one of the 28 member countries of the EU.  This would then block the entire trademark.

So, how can you minimise your risks? The key is to commission professional searches to identify potential obstacles before you commit to a mark, and file your application. You might begin by initially looking at the UK and European trademark registers, before then expanding the search to the national registers of each EU country. International searches like this can be quite expensive, and offer diminishing returns, so it is important to discuss what degree of searching is appropriate with your legal adviser. It is never possible to eliminate the risks entirely, but through appropriate searches, you can improve your chances without blowing your budget. Your attitude to risk, and the funds you are willing to commit to searching, will generally depend upon how critical your brand is to your business.

But what if you do encounter a problem? That is not necessarily the end of the road. If your European application is opposed by a business with rights in just a single member state, the first step will generally be to negotiate with them, and see if it is possible to come to an agreement allowing both businesses to coexist. Under some circumstances, it might not be possible to reach an amicable settlement, in which case the European trademark courts may resolve the dispute.  However, this can be costly for all involved.

If, ultimately, you do decide it is best to withdraw your application in that particular country, all is not lost as you are free to file national applications in those European countries from which you did not face an objection. However, there are no guarantees that those national applications would not face objections from other trademark owners.

A key issue when it comes to trademarks is what is known as the priority date. Typically, this is the date on which you file your trademark application, and the date from which your registration is effective. If you were to entirely withdraw your application following a dispute, and refile national applications, then you would receive a new priority date. However, it is possible to convert a European trademark application into a group of national applications, and retain your original priority date. An important advantage of doing so, is that your application will, broadly speaking, take precedence over others which were filed in the interim.

Still, converting a European application to national applications, or refiling directly in the relevant countries, can become very expensive as fees are payable in respect of each territory. So, where resources allow, it is best to carry out appropriate searches in advance. You can find out more about national, and international trademark registration on our dedicated website AzrightsTradeMarkRegistration.co.uk.

European Trademark Office rules Pinterest doesnt own rights to its name

European Trademark Office rules Pinterest doesn’t own rights to its name

US social network Pinterest has lost grip of its European trademark rights

US social network Pinterest has lost grip of its European trademark rights

Social networking giant Pinterest lost its trademark battle against Premium Interest, a London-based news aggregation start-up, following a ruling by the European Commission Office for Harmonisation of the Internal Market (OHIM). The implications of the EU trademark office’s decision is that Pinterest could be forced to change its name in Europe.

Premium Interest, founded by Alex Hearn, filed for registration of its European trade mark in January 2012 – two years after Pinterest.com launched. Although Pinterest was active at this time, it had yet to formally enter the European market or even register its name in the US.

Pinterest tried to overcome its own lack of registration by taking advantage of a provision in the trademark regulations which protects well known marks. It argued that the Premium Interest application should be refused as it took unfair advantage of Pinterest’s reputation to register a similar name. However, in the view of the registry, Pinterest failed to prove it was well-known enough in the continent at the time of the registration.

Hearn’s legal representative, Mishcon de Reya’s Adam Morallee, said Pinterest will now have to change its name if it fails to obtain a licence from Premium Interest to use the name Pinterest. In the meantime, Pinterest remains defiant and is set to appeal the ruling. To win the case, Pinterest will need to demonstrate it had rights in Europe before Premium Interest registered its trademark. The site’s prominence in the US will not be considered.

This case highlights the dangers of not acting quickly to protect your brand name in the global marketplace. Indeed, Hearn has also registered its Premium interest trademark in other markets, including Australia.

A solid reputation in one country may be insufficient in a different jurisdiction if you aren’t the first to file for a trademark there, irrespective of the size of your business. This is of particular relevance to digital online businesses.

Given Pinterest’s reputation as a robust defender of its branding – from its Pin-it button, to its curvy P logo, and its discouragement of partners using variations of the words “pin” or “pinterest” as puns in their names – this is a serious blow to the social network.

The moral, as with so many trademark disputes, is to take action early to protect the investment in the brand by registering trade marks in your key markets. Pinterest is now set to face an uphill battle which, apart from the legal fees it has already incurred, will likely involve extortionate settlement fees or the costly and damaging requirement to rebrand.

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Battle of the Bands

Entertainment_jpgTrademarks can be one of the most significant of IP rights as a recent case involving the band Wishbone Ash  demonstrates.

The band was popular in the 1970s, and as often happens with bands, members came and went, so that eventually Andy Powell was the last man standing from the original group. He nurtured a new team so that the Wishbone Ash band still performs under that name. He registered the name as a European Community trademark. Then a former band member, Martin Turner set up a new band under the name calling his band Martin Turner’s Wishbone Ash. So, Andy Powell successfully applied for an injunction to stop the use of the name Wishbone Ash. Martin Turner is apparently appealing the court’s decision. The judge awarded Andy Powell more than £40,000 in costs and has ordered Martin Turner to deliver up all flyers, CD covers and other material which bears the Wishbone Ash name.

Over on Azrights trademark registration blog we recently reported the Nestle v Cadbury case which demonstrates how difficult it can be to secure trademark protection for colours. We also discussed the lessons to be learned from the Duffins trademark case about what to do during product creation in order to protect your brand.