Category Archives: Brands and Trademarks

Rebranding

Rebranding

RebrandingWe’ve rebranded by changing our logo, tagline and brand colours.

As we had to get new website designs, social media profiles, letterheads, brochure, business cards, newsletter design and more, the whole exercise was quite time consuming and costly..

Now we have first hand experience of what our clients go through when they rebrand. For those who are infringing on someone else’s trademark a name change will be involved, and this will entail a lot more work.

Anyone who is tempted to pick a name without doing proper due diligence, perhaps shrugging off the risks by assuming they will just rebrand if it comes to it, should think again. An enforced rebrand will involve changing everything at short notice. The time, cost and disruption could cause business failure. Taking a risk over your name is not a sensible business risk to take. It’s more akin to gambling.

Brand refresh

A brand refresh is a more accurate description for what we went through given that we did not change our name.

For some time now, we have been thinking 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. Having reached some clarity on all this we were ready to have a designer create a new logo and designs for us.

Choosing new designs was sheer pleasure. The effort and expense involved were well worth it and now our brand is reflected in a new logo, tagline, and a more dynamic colouring we are ready to build an online presence that clarifies what we stand for, amplifies it and supports the brand.

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 focussed 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 why.

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

az

However, the logo was completely unsuited to the digital nature of our legal skills and much of the work we have attracted since starting the new firm.

as

Our new logo better communicates our brand values of making IP easy to access, and register globally, as well as the digital nature of our focus.

Protecting the logo

Our name, Azrights was already registered as a trademark back in 2005.

To protect the logo we have filed applications to register it both as a design and as a trade mark.

This is essential both for protecting the brand and also to secure ownership over our logo. We secured copyright in the logo as part of our contract with the designer, but wanted to go further in order to avoid losing the distinctive look of the logo if others were to copy it.

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 IP 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 need to protect it so it can remain distinctive and unique to you.

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

IP rights are how you prevent 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, especially if you are thinking big.

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, designs, trade marks each give you different possibilities. They complement each other.

For example, 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 claim to have come up with a similar logo independently without copying. Proving that they copied might be an insurmountable, expensive hurdle.

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

We have our trade mark too, although in some situations the trade mark may not help us tackle copying. For example, if the copy logo appeared 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 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.

Entertainment_jpg

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.

 

Beware of Buzz Marketing

Online Brand Protection

Shireen Online Brand Protection BlogBeware of buzz marketing. Writing fake online reviews can land your business in serious trouble and cost you more than you gained in reputation or sales, as evidenced recently by a host of SEO companies caught up in New York’s “Operation Clean Turf”.

A year-long undercover investigation into the reputation management industry caught 19 small businesses engaging in astroturfing, flooding the internet with bogus consumer reviews on websites such as Yelp, Google Local and CitySearch.

Astroturfing is the practice whereby a business pretends to be an ordinary customer, writing glowing reviews about the business’ own products or services, or negative reviews slamming their competitors’.

In a crackdown last month, New York Attorney General Eric T. Schneiderman issued penalties in excess of $350,000 between the offending companies.

Schneiderman’s office discovered that many of the businesses probed had used techniques to conceal their identities, manipulating advanced IP spoofing techniques, setting up fake online profiles on consumer review websites and paying writers in the Philippines, Bangladesh and Eastern Europe to mock up false reviews. In the process, these companies had engaged in illegal and deceptive business practices, violating multiple state laws against false advertising.

“Astroturfing is the 21st century’s version of false advertising – and prosecutors have many tools at their disposal to put an end to it,” Schneiderman warned.

The law in the EU under the Consumer Protection from Unfair Trading Regulations 2008 is stricter than the USA, so that “falsely representing oneself as a consumer” in the context of promoting a product to consumers is a criminal offence, for which the maximum penalty is 2 years imprisonment and/or an unlimited fine. The Regulations are policed by the Office of Fair Trading and Trading Standards, which may also direct complainants to the Advertising Standards Authority.

There are plans to further strengthen the law so British consumers have the right to take direct action against traders for misleading or aggressive practices. The proposed law, when implemented, will empower consumers to make direct claims against traders with whom they have entered a contract or made a payment to as a result of misleading advertising.

Given the anonymity of the web and accessibility to a growing range of social media channels, it’s easy to see how so many businesses succumb to such underhand tactics. However, while astroturfing is unethical – and in most cases illegal – it should be remembered that the ultimate penalty is the PR own-goal scored when caught. Businesses build their brands, above all else, on trust. Being exposed for falsifying reviews and manipulating online discussions could therefore cause irreparable reputational damage, shattering consumer and client relationships which are the lifeblood of any business.

Reputation is critical to any successful business, no matter its size. Astroturfing is an unauthentic and foolish path to follow in a digital age where connection and sharing is just a click away.
The damage to reputation for any company caught trying to steer public commentary around their products and services could prove fatal for your brand.

To find out about the risks online and how to best promote and manage your brand, why not come along to this Own It event at which Shireen Smith will be speaking on 29 January 2014 at 18.30pm. For more information please visit www.own-it.org/events.

Trademark Registration A Lack of Finality?

Trademark Registration – A Lack of Finality?

Trademark Registration a lack of Finality?Over half a million trademark applications are filed each year throughout Europe, and a memo of the European Commission indicates that as of March 2013 there were nearly 10 million trademarks listed in European registers. Putting it mildly, the Commission notes that “The demand for trade mark protection is high”. But if you consider the essential purpose of trademarks, a problem starts to emerge.

Are the Trademark Registers too Crowded?

At their most basic, trademarks are a way for consumers to tell the goods and services of one business apart from those of another. In principle, trade mark rights can also last indefinitely. So, if the number of trade marks registered continues to grow in this fashion, with every combination, and every permutation being snapped up, surely businesses will run out of words to use? Some people worry that it is already difficult to find a good .com domain name, but what would be the impact if you faced an uphill struggle when looking for a brand name you could use in general? What if all possible brand names were taken, what would you call your new business, or products?

Fortunately, even if the rate at which trademarks are applied for is set to increase significantly, this scenario is far from becoming a reality. First of all, just to cover all possible combinations of letters and numbers with marks only as long as the word ADIDAS would mean every single human being on the planet registering at least 10 trade marks, and that doesn’t take into account stylised text, logos, sounds, colours, shapes or other types of trademark. Of course, the scope of protection extends further than basic identity – the use of a similar word can constitute infringement of a registered trademark, so not every combination of characters need be registered before it becomes difficult to conceive something novel. However, this becomes even less of a problem once you account for the fact that the same trademark can be registered by different owners who are not competitors, but even so, the cluttering of the trademark registers is undoubtedly a valid concern.

Trademark Revocation

That’s why the role of trademark revocation is important. Trademark registrations are not immortal, and although it’s feasible to maintain them indefinitely provided that renewal fees are paid promptly, there are a number of grounds on which a registration might be challenged. One of the fundamental grounds on which you might apply for revocation of a registered trademark is that it isn’t being used.  Richard Arnold QC put it like this:

“The purpose of revocation is to remove trade marks or parts of the specifications of trade marks where there has not been use. It is there to serve a purpose in trade; it is the Lipitor that stops the arteries of commerce being blocked with the cholesterol of unused trade marks”

Broadly speaking, if a trademark is left languishing for a continuous period of 5 years, it is vulnerable to revocation. So, out with the old (owner) and in with the new. But this is far from the only reason a trademark might be struck from the registers.

As discussed above, the purpose of a trade mark is to help consumers distinguish the goods and services of one undertaking from those of another, and once a word becomes the common name for something, it can lose this ability to designate origin. This process is referred to by trade mark professionals as genericide – once a trade mark becomes generic it loses its distinctive character. Some common examples of genericide are Hoover and Escalator – both of which are brand names which have become accepted into general language. Once this happens, trademark registrations are on shaky ground.

Although far less common, another basis for revocation of a registered trademark is the argument that it is likely to mislead the public, for example if the trademark suggests that products have a particular geographical origin, or a particular quality when in fact they do not.

Invalidation

Aside from revocation, registrations can also be declared invalid. Whereas the impact of revocation is that the mark is removed from the registers, if a trademark is declared invalid it is treated as never having been registered at all. Trademark applications occasionally slip through the net, and so a registration might be invalidated if later on, it is discovered that a similar or identical trademark was already registered by someone else, or because another business had built up rights in a conflicting trademark by using it. Alternatively, having been reassessed the trademark could be deemed descriptive in retrospect, and therefore lacking the ability to distinguish the origin of goods and service.

Should I still try to Register my Trademark?

So, registration is feasibly indefinite, but there are no guarantees as it suffers from a lack of finality. Does this mean it isn’t worth registering? Absolutely not. The key message here is that there is far more to registering a trademark than simply making it onto the registers. All of the risks mentioned above can be managed by taking care at the outset. By casting a critical eye over your trademark before applying for registration, an expert will be able to assess whether it might later be deemed descriptive, or deceptive, and a professional search will reduce the chances of conflicting rights turning up out of the blue later on. They will also be able to advise you of ways to maintain your registration, for example by using the registered trademark symbol you may be able to avoid genericide, alerting people to the fact that the mark isn’t simply a common word but an indication that you are the source of the product.

To help avoid losing your rights you should also take care to make genuine use of your trademark. The concept of genuine use is complex, and you might be surprised by some of the situations which don’t meet this test. For example, a manufacturer promoted its clothes by giving away drinks labelled with its brand, and because the freebies were not distributed with the aim of penetrating the drinks market, it was not sufficient to maintain rights over the brand in that class of goods. On a related note, it’s important that you take care to use the mark in the way it is registered, and if you do make a change, for example by altering the design of your logo, you should consider whether it’s necessary to file a fresh application for the variation.

SkyDrive

SkyDrive Set for a Skydive? – Cloud computing service faces dispute over similar trademark

SkyDriveA recent decision of the High Court provides a useful illustration of the breadth of the rights granted by trademark registration. In that ruling the use of SKYDRIVE by Microsoft for its cloud storage solutions, was found to infringe the trade mark SKY, used in connection with, among other things, broadband internet. For context it is worthwhile getting a better picture of the rights you receive in exchange for successfully registering a trademark.

When you register a brand name as a trademark, you might assume that the law will simply prevent others from using that name in their business. However, the position is somewhat more complex, and the protection you receive is in a sense both broader and narrower than that.

Regular readers of our blog are likely already aware that when registering a trademark, that registration is restricted to certain specified goods and services. For example, you might register YOURBRAND for use with clothing and accessories. While this limits the exclusivity of your rights to a certain extent, such that another business might be entitled to sell cars, or make a TV show called YOURBRAND, you may still be able to take action if another business uses the same brand with goods or services which are similar to your own. But what if the name they use isn’t exactly the same, just similar?

In fact, there are a number of situations when you might be able to take action upon discovering your registered trademark, or a similar trademark, being used without your permission. This is because the law looks in detail at whether the marks are in fact identical, or just similar, and whether they are intended to be used in connection with identical or similar goods or services.

Even if someone uses just a similar brand, with similar goods or services, you can nonetheless take action if you can show that the public is likely to be confused. If your trademark has a reputation and a similar or identical mark has been used without permission in a way which takes unfair advantage of, or is detrimental to, the reputation or distinctive character of your mark, that may also constitute infringement.

So, the strongest case arises when an identical trademark is used for identical goods or services, but neither of these elements are essential.

Returning to the recent dispute over use of SKYDRIVE on the basis of the registered trademark SKY, the court found that although the two trademarks were not identical, there was sufficient similarity between the two marks, and between the goods and services for which they were used, that a claim for infringement should succeed.

The court also found that there was infringement on the basis that Sky’s reputation in the UK is strong, that use of SKYDRIVE would reduce the distinctiveness of the SKY brand, and that Microsoft was not compelled, or otherwise had due cause to use that particular wording.

There are a vast range of factors which influence such a decision, for example in this case the fact that the word “Drive” is arguably descriptive of the service Microsoft provides, that the core goods and services provided by each business were complementary, and that third parties have created apps based on SkyDrive, such as SkyWallet, all supported the court’s judgment.

Serious repercussions can arise from unjustified claims so, given the wide range of factors that are relevant when assessing whether trademark infringement has taken place, it is important to seek specialist advice before taking action yourself.

Microsoft have said that they will appeal the decision, so the dispute is far from over, and it will be interesting to see if the company chooses to continue using the brand name despite this ruling, in the hope that they are ultimately successful.