Tag Archives: Brands and Trademarks

Naming a brand

Naming A Company? How Can You Avoid Trademark Disasters?

Naming a brand When choosing a new name, it can be confusing to know the order in which to do things – such as registering domain names, a company name, designing a new logo and so on.

People tend to do all these things and then only at the end of a branding project do they turn to a lawyer to protect the brand. This is the wrong way to go about it because if you’ve chosen a name that infringes on somebody else’s rights, it leaves little scope to choose a better name. You will have invested time and resources in the name, and may be tempted to continue to use that name, despite the very real and serious risks.

So, what due diligence can you carry out yourself? And when do you need the expertise of an appropriately experienced intellectual property lawyer?

Well the first point to be aware of is that the domain name or company name’s availability does not mean you may use the name. It depends what you want to use the name for.

Carrying out your own checks to settle on a shortlist 

A key question is whether the name is in use by a competitor, who may have registered it as a trademark or built up unregistered rights in the name.

So, do some Google research. If you find somebody else is already using the same or a similar name within the same or a similar industry sector, then beware.

However, if someone is using a similar name, the next question is to look at where they are located. If they are based outside the geographic area in which you will do business, then you may be alright to use the name. However, it does depend.

Assess the Google search result by asking yourself whether the country the other entity is based in is relevant; whether they are potential competitors, and whether they have customers in your territory or online. If the entity using a similar name might be selling their product in the UK (say via an estore), then you may have problems using the name.

If you find nothing, this is not conclusive. For example, not all websites are search-engine friendly, and not all products are promoted by names online. In some cases, someone could have registered a mark and not started using it yet, as it’s possible to register a name for up to five years before using it.

Checking the trademark registers.

That’s why you also need to do a search of the trademark registers.

The trademark registers are public, which means that anyone can search them to discover whether someone else has already registered the same brand name. If the name is registered that means you can avoid investing on marketing, graphics, websites and so on using that name.

This is a central function of the registers, putting others on notice of their rights. However, if the name is not already registered it does not mean you’re in the clear. Is a similar name registered?

Increasingly, the search facilities provided by the trademark registries are quite sophisticated so that it’s possible to find out whether similar names are already registered too – not just exactly the same name. If you do find similar registrations, then you need to take a view as to whether the owner of one of those marks might object to your use of a similar name. If you can’t work it out, then you should pay a lawyer for a legal opinion.

How a professional can help

While I’m more than happy to provide information to help people assess the risks for themselves, it is not possible to provide opinions on specific names without being engaged to provide the service.  Often it is necessary to consult the registers before an opinion can be provided.

It’s important to appreciate that initial checks do not replace the need for legal advice, but are a step to take before settling on a few possible names.

By carrying out these searches, choosing names carefully, and immediately discarding names which are obviously already in use by others, you will save yourself a lot of expense and disappointment. You will also find a shortlist of worthwhile names to ask a lawyer to assess for you.

If you get the green light, you should consider registering a trademark at the same time. That is the way to ensure the name is uniquely yours to use and that someone else doesn’t start using the same name in a way where your two  businesses might be confused for one another. It costs a lot of money to resolve such disputes. A registration is much cheaper than costly litigation.

As a firm we suggest clients use the resources available for preliminary due diligence of their own, and then take professional advice if it matters to you to avoid litigation, or to have a name that you can uniquely own.

Finally, remember that not all names are capable of being trademarked, so a lawyer can add significant value to any naming exercise as they are best placed to advise whether your chosen name is capable of functioning as a trade mark. .

Learn which countries are part of the Madrid Protocol

International Trademarks – Madrid Protocol System

Learn which countries are part of the Madrid ProtocolWhile it is not possible to register “international trademarks”, the Madrid Protocol system provides the next best solution if the country in which you want to register has signed up to the Madrid Protocol.

The current list of countries within the Madrid System has some notable gaps, such as Canada, South Africa, Hong Kong and many South American and Middle Eastern countries.  So, it is gratifying that more and more countries are signing up every year.

Additional countries that have joined the Madrid System recently, according to WIPO, are the OAPI (African Intellectual Property Organization) countries and Zimbabwe.

The OAPI countries include: Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.

India and Mexico signed up in 2013 and China in 2012. Cambodia will join in June 2015. It is also rumoured that Canada, one of the notable gaps mentioned above, will soon become party to the Madrid Protocol.

How the Madrid Protocol works in practice

The first step to securing wider protection globally is to register a trademark in your home country as a starting point.

For UK companies or those operating within the EU, the base application will either be a UK or EU trademark.

Then once that UK or EU application is filed, you may extend your registration by using a single application. In that application you designate your desired countries (which must also be party to the Madrid system).

The overall costs will depend on the applicable official government fees of the countries in which you are applying to register, and the number of classes.

Note that the application must use the same classes as the base application, although it is possible to apply in fewer classes than your base application.

The official fees vary a lot from one country to another. To get an indication of the official fees, use our official fee calculator. The legal fees will depend on the number of countries and classes involved.

Conclusion

With more and more companies doing business online, businesses nowadays have to think about international trademark matters from the word go.

Before the Internet became the main route to market for so many companies, global trademark issues would only have arisen for them once companies were substantial enough to move into other countries.

Nowadays, being online means you do business worldwide, so that it is increasingly important to check the trademark registers in other jurisdictions before making a final selection of a name. This is often overlooked by businesses, even substantial ones, with serious consequences. For example,as mentioned in our previous post SkyDrive Set for a Skydive? Microsoft recently had to rebrand to One Drive,

Once a company has done its due diligence in other markets and settled on a name it needs a clear strategy for registering in other markets. And the Madrid System provides a cost-effective way to obtain multiple registrations worldwide. The cost of applying in 3 classes in 10 countries could come to less than it would to register in 2-3 countries that are not party to the Madrid system.

Have you registered your rights in other countries? What was your experience? Please do share your experience with us by leaving a comment below.

 

Aston Martin file suit alleging that former employee copied their designs

Design Infringement Claimed By Aston Martin

Aston Martin file suit alleging that former employee copied their designsOn 27 Friday 2015, Aston Martin filed suit against Galpin, in the Central District of California on the grounds that Galpin’s new prototype design for the Thunderbolt infringed their intellectual property rights. In particular, the claim is that the Thunderbolt draws on similar design features to the Aston Vanquish, such as the wings logo and side vents.

Interestingly, the Thunderbolt was designed by Henrik Fisker, a former Aston employee. During his tenure at Aston, Fisker participated in the design of the famous DB9 and Vantage (the predecessor to the Vanquish).

Aston Martin said, “Fisker’s bad faith intent to free-ride off the tremendous goodwill associated with the famous Aston Martin mark, wings logo, side vent mark, and Vanquish mark could not be more transparent.”

The Court will now determine whether the similarity between the two cars is permissible.

For details of this case see: http://www.bloomberg.com/news/articles/2015-03-30/aston-martin-empire-vodka-philips-intellectual-property

Eight points to consider before you name your product or service

Brand Name – 8 Points To Consider Before You Name Your Product Or Service

Eight points to consider before you name your product or serviceAlthough household name brands invariably have distinctive visual identities – for example, Coca-Cola’s bottle shape, and Nike’s swoosh – the primary sign through which any brand is identified is its name.

It is worth thinking about your name carefully given that it is what you will be using to answer the phone, and to promote and advertise your business. It’s also what your customers will use to recommend your product or service.

This quote, from Oscar Wilde’s The Importance of Being Earnest, demonstrates just how much faith can be placed in a name alone.

“It had always been a girlish dream of mine to love someone whose name was Ernest. There is something in that name that seems to inspire absolute confidence.”

Undoubtedly, a name can evoke certain reactions and emotional responses. It can give customers an idea or feeling about your business from the outset, before they have even experienced working with you. Therefore, choosing a name for your brand is an important task that should not be taken lightly. Here are 8 points to bear in mind:

1. Choose an appropriate name

The name you decide to brand your company under should be well thought-out in order to ensure you pick the name that suits what your product or service is trying to do. When choosing a name, think: what is unique about the brand I am trying to create? Who is my target audience? How do I want to make people feel?

2. Find a name that people will easily associate with your product or service

The big household names that have built such solid reputations have generally based their brand on something they believe suits that which they are trying to create.

Talking about Google’s name, co-founder Page stated in Business Week, “We spent a lot of time on the name … because we figured that it would be important for people to be able to remember it” Google’s search engine was originally called BackRub, but the company decided the name was unsuitable, and Google was then settled on. The name originated as a play on the word ‘googol’, a mathematical term for the number 1.0 × 10100, to reflect the search engine’s ability to sort through a seemingly infinite amount of information on the web.

‘Apple’ is similarly not just a name given to the tech-giant without any forethought. Apple is currently the world’s most valued brand, and is known for its sleek designs and good-quality products and the very name of the company helps to create this image. In Jobs’ biography, written by Walter Isaacson, he explained that he was coming back from an apple orchard when he thought the name sounded ‘fun, spirited, and non-intimidating’. Steve Wozniak, Apple’s co-founder, in his book iWoz: Computer Geek to Cult Icon explained that “We both tried to come up with technical-sounding names, but we couldn’t think of any good ones. Apple was so much better, better than any other name we could think of”. And like the name itself, the company and the brand became much more innovative and forward-thinking than previous technical companies.

3. Make sure your name translates into other markets

Not only should a name accurately reflect your business, but it must also be something that works in different countries as well. There are many examples of company owners who have not realised that their chosen name in one country might have a completely different meaning in the next. For example, Chevrolet launched its Chevy Nova car in Spain under the same name, which translates as ‘Does not go’. American Airlines advertised the luxurious aspect of flying business class to its Mexican customers by focusing on the leather seats, using the slogan ‘Fly in Leather’, which translates as ‘Vuelo en Cuero’ in Spanish. The Spanish dictionary neglected to inform American Airlines that the phrase ‘en cuero’ is a slang term for ‘in the nude’. Unsurprisingly, there was little demand for mile-high naturism among Mexico’s business flyers. The beer-maker Coors discovered that its slogan, ‘Turn it loose’, translated into Spanish as ‘Suffer from diarrhoea’.

4. Get legal title to your brand by registering  your trademark

The name does much more than carry the goodwill of the brand.  Some people equate trademarks with goodwill, but they’re not the same thing.  Goodwill is a term used by accountants to refer to the customer base a business develops.

Trademarks can protect goodwill, but they do far more than that.  The reason you need a trademark isn’t to protect your goodwill, which is protected anyway, but because a trademark is a tool to capture the economic potential in your business.  When you register a trademark you get legal title to your name so you are better placed to control use of the name by third parties. You can then monetise the business by granting licences, and extend the brand to other goods and services if you are successful.

5. Be aware of the value an appropriate trademark  creates

As the business develops and expands, so its name will increase in value, and evoke a reaction in its target consumer which then enables the brand to charge a premium for its product or service. For example, people are willing to pay significantly more for an item of clothing made by Louis Vuitton than they would pay for a similar-looking item made by an unknown designer. The value of one item of clothing over the other is purely down to the name and so the brand is what adds that extra value.

6. Bear in mind that the name could be a most valuable asset, but only if you choose well

Also, when a company is being sold it is the brand, as well as the goodwill associated with the name, that the purchaser is buying into. Therefore, it is important to begin any project by realising that the name you choose for it is potentially one of the most valuable assets the business will generate if it succeeds. It should be treated as such and appropriately protected.

7. If the name you like is not legally available find another

A name must be protected. Given that the value of a brand lies in its name, it’s no good to just focus on coming up with a catchy, memorable name if this name is not protected.  If, once you have conceived a name and have gone on to have designs and branding produced, someone claims you are infringing on their trademark, nobody is going to care that the name is ‘just perfect’ for you. For a name to really be perfect for your business, it must be legally available, and hence be suitable from both a marketing and a legal perspective.

8. Do your research before you start using a name

Apple v. Apple Corps – Although Jobs decided that Apple was the most suitable name for his company and that it would work well from a marketing perspective, the name has proved less suitable from a legal perspective. Apple Inc was locked into legal disputes from 1978 to 2006 over the name with Apple Corps, the record company owned by the Beatles.

Once the initial dispute was settled by agreeing that Apple could use the name on the basis that it would not expand into the music industry, there were problems on several subsequent occasions when Apple’s business expanded to cover the iTunes store and the iPod product. The dispute caused several losses for Apple, first preventing it from launching a computer with recording software installed on it, and then leading to the Beatles’ music initially not appearing on the iTunes music store.

The dispute has now been resolved between the two companies, with Apple buying the rights to use the name in all industry sectors and allowing Apple Corps a licence to the name. However, this resolution should not be seen as something most businesses could achieve. The process proved extremely costly and time-consuming. Such problems would have forced less well-resourced companies to rebrand. This is why the legal aspect of names should never be lost sight of.

Conclusion

Names are an important way in which the law protects a business against various unfair practices that tend to arise when a business succeeds. So, make sure the name you have invested so much time and effort in creating and around which you have built your good reputation, is one that can remain exclusively yours.

Protect your business against copying

How To Protect Your Business Against Inevitable Copying?

Protect your business against copyingCopying is so rife in business that if you have a profitable niche or concept, it would be surprising if competitors didn’t sooner or later try to capture some of your market share.

They will borrow freely from other businesses that they believe have identified lucrative market opportunities. If they cross the bounds of acceptable, legitimate competition and engage in unethical practices, how will the law help you?

What is unacceptable copying?

This automatically raises the question what is acceptable and unacceptable copying? What legal protections might a business use in such situations?

For example, Airbnb and Groupon came up with novel business concepts which were quickly copied. An example of how quickly competitors copy a new business idea is apparent when you consider the numerous Airbnb competitors that have sprung up, such as Gogobot, Atraveo and SunnyRentals using similar business models to Airbnb

Whether the business model is copied in the same country or elsewhere, there is nothing that can be done to prevent others copying what is merely a good idea.

Tropicalisation

Indeed, ‘tropicalisation’ is a term which refers to the practice of investing in start-ups which take an established business model and adapt it to an emerging market. Examples include Peixe Urbano a Brazilian clone of Groupon which is arguably even more successful than the original, Weibo the Chinese Twitter-like microblogging platform, RenRen the Chinese version of Facebook, Baidu the Chinese take on Google and Alibaba a Chinese copy of eBay. Alibaba is now one of the most successful online businesses.

Investors are keen on these projects as the business models are proven already, and from an IP perspective there are few legal barriers to this tactic, as the law does not protect bare business models, whether through patents, copyright or otherwise.

That said, a patent can protect the technology which is central to a product, copyright can protect the expression of a concept, for example training and marketing materials, videos, source code and other key materials like your business plan itself.  Trademarks protect your business and product names, and designs protects aesthetic aspects of your products, software or website.

Securing rights over your name is how you protect the underlying business

So, although there is little you can do to prevent a competitor from creating a new business based on your model it would be a mistake to ignore IP rights as mentioned in my blog post Intellectual Property Rights – Why Ignoring Them Could Be Disastrous For UK Business.  Your business name provides an important opportunity to prevent others from taking unfair advantage of your efforts, and trading on the back of your success.

So there are ways in which you can put a stop to some unfair competitive practices by properly protecting your business. When businesses copy others they tend to adopt a similar name in order to attract business towards themselves.

Scrabulous

When Scrabulous set up its online game it wanted to suggest to the market that this was a similar game to Scrabble, so it used a name suggestive of Scrabble. Because trademark law helps you to prevent piggy backing off the success of your brand, Scrabble was able to get Facebook to pull the Scrabulous App off Facebook even though it was extremely popular.

There may be other practices businesses engage in, such as stealing competitive information, taking your staff and using your confidential information, or even stealing your database.   In all such cases you are likely to have an uphill climb during litigation unless you have taken steps to have the right contracts in place and to establish your rights to the maximum extent possible, so that it would be easy to prove your case.

Competition

As Seth Godin says of competition in Purple Cow (Penguin Books, 2003): “Why do birds fly in formation? Because the birds that follow the leader have an easier flight. The leader breaks the wind resistance, and the following birds can fly far more efficiently”.

So if you demonstrate a breakthrough idea, and others can see that it’s a good one, they will copy it. They will benefit from the fact that you’ve shown them the way forward to possibly implement the idea even better than you did.

The way to have strong IP protection in your business is to secure as many of IP rights as you can afford to secure because each IP right protects you in subtly different ways and situations. However, there is a lot more to it than just IP registrations. Often it will involve having the right employment and confidentiality agreements in place too, and having effective terms of business.

If you’re worried about protecting your IP, why not start by taking our 3 minute test.

Internationalisation of IP

International Business & Globalisation Of IP

International Business & Globalisation Of IPNowadays many businesses are global from day one.

Even though you may just operate out of a bedroom in your home, when you sell online, you are potentially doing business in every country worldwide. That’s because the Internet is borderless.

In contrast, IP laws are territorial. This means your rights only cover the country in which you register or otherwise acquire rights.

So, it’s essential for an online business to adopt a strategic approach to their domains and trademarks.

Resources are bound to be limited because when you start a company it’s difficult to know how successful you’ll be. It makes sense to keep costs down and overheads low.

The Name

Names are an important way in which the law protects a business, so make sure you choose a good one. The name is one of the most valuable IP assets your business has if it is successful, and the choice you make impacts upon the value of the business.

It’s essential not only to find out whether your proposed name is available to use in all your intended markets, but also whether the name is legally effective (that is, whether it can function as a trademark).

The principle of territoriality means that if you register a UK trademark you simply get a right to use the mark in the UK.  If someone in another country uses the same name for a similar business you would not be within your rights to use your brand in their country.

The current international trademark system is designed for a very different business environment, one that’s more suited to the pockets of well-resourced, well-funded multinationals that gradually move into new markets. Nevertheless, if you want to be able to protect your business, using the same brand worldwide, then checking the trademark registers is essential. Then you should consider your strategic approach to registering a trademark, in other countries too.

What you don’t want is to have a local business use your brand to block you from selling to their local market by using their trademark rights against you.

International priority protection

Once you have checked out a name, the next step is to file a trademark. The base application would be filed in the country in which you are based. For UK ecommerce businesses this will typically be an EU registration, although some online businesses prefer to just file a UK trademark.

The way international protection of IP works is that it is possible to secure protection in other countries under the international registration system known as the Madrid system.

You get a priority right for up to six months from the date of the base application. This gives you up to six months to extend your trademark protection to other countries.

Although you can then extend protection to any Madrid Protocol country using a single application, the costs can be high as the official fees are significant. We have a calculator on our website which can give you an idea of the official fees.

A fictional case that illustrates the importance of filing trademark applications in other countries as your business begins to expand is outlined below.

Raxisia

This ecommerce site had been selling its products in the United States for more than 8 years without having registered a trademark there. A competitor then set up a bricks and mortar shop in the United States selling similar products and also called itself Raxisia.

The original Raxisia company was alerted to this when publicity surrounding the new shop was spotted by one of its existing customers who emailed to congratulate it on its new venture in California.

Raxisia was lucky that it had customers in the United States. So, it was able to prevent the local shop from trading off its goodwill. Using lawyers they filed a trademark application in the United States and after much correspondence, the other party decided to rebrand. The legal costs were hefty because among other things the lawyers had to contact the numerous customers that the company had in the United States and in California.

The company could have avoided the hefty legal fees if it had registered its mark in the United States as soon as it began selling its products there.

Domains

Once you’ve settled on a name, a related consideration is what domains to register and when to buy further domains. For example, a UK ecommerce business might typically start by registering a co.uk, .com, and .net. These will be relatively inexpensive. But should you register other CCTLDs – Country Code Top Level Domains? If say France is a market to which you will sell, should you also register a ‘.fr’ name, and if China is important to you should you buy a ‘.cn’ name, too?

As your business grows and you get customers in other countries you’ll need to consider whether to buy your name in other country codes.

There are more than 250 country code domain names. It would be expensive to buy your name in all of them. The strategic considerations will differ for every business. Typically, many wait until their business starts to take off before looking at more extensive domain registrations. The key is always to look at where you are doing business or might be doing business soon.

So, the priority should be to register in those markets in which you have customers or in which you think you will be selling in the near future.

Unlike the GTLDs — generic top-level domain names, – .com, .net, .org – where there’s a lot of uniformity, the rules for country codes are different in every country, as are the prices. Sometimes you need a trademark to get a registration. Other times you need a local business registration. And in some cases you may need a local presence or a local address. So, the CCTLDs usually cost more.

Cybersquatting

Some of the considerations with domains is what happens if someone in another country steals your name and registers your domain with the local CCTLD. This is called cybersquatting. What can you do about it?

It may be difficult to block another person from using your name in another country. So the strategy for registering domains needs to bear this in mind, and be combined with your trademark registration strategy.

You will need access to advice as to the remedies available for the individual CCTLDs. Sometimes your rights may depend on whether or not the name you are using is trademarked. It will also depend on the country’s dispute resolution policies. Each country has different dispute policies, and different procedures for granting relief.

For example, in the UK the dispute resolution body that deals with co.uk issues is Nominet. Nominet will typically consider whether you have trademark rights (which does not necessarily entail having a registered trademark), and whether the registration or the use of the domain name is in “bad faith”. That is, whether the person who registered it likely did it in order to resell it to the person who has the name or in order to divert revenue to themselves for economic gain.

The first step in these administrative style dispute procedures is to file a complaint. There is no court involved as it’s an arbitration.  Once you’ve complained, the other party must answer the complaint and the arbiter then decides whether or not the person who you have complained against should be able to keep the domain name or should release the name into your ownership. The decision is purely based on the pleadings. You don’t have a day in court.

For other domains, such as .com the registry designate groups such as the World Intellectual Property Organization or WIPO or the National Arbitration Forum or other groups to decide the dispute.

These arbitration groups have a lot of experience and history in handling domain disputes.

So in conclusion, it’s essential to get advice, and to set a strategy to determine where you register domains.  This will partly be dependent on the rules of the different countries. For example, if a local business registration is needed in order to register, you might decide the risk of cybersquatting is low risk, and perhaps just register a trademark.

Once you’ve taken all the issues on board you will end up with a priority list based on the intrinsic risks.

Temporary name?

As names involve legal complexity and potential costs it makes sense to have a strategy for the early days if you want to keep your expenses down.

One possibility is to choose a temporary, descriptive name that informs the market what your business does.

This can be useful in the early days when nobody knows you exist and could later become your tagline when you are ready to name the business.

Unless you already have a good understanding of your market and the gap you will fill in it, it could save precious resources in the early days 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.

JeSuisCharlie Creator

#JeSuisCharlie Creator: Phrase Cannot Be A Trademark

JeSuisCharlie CreatorConcerns have been raised over attempts to monopolise a phrase made famous in the wake of an international tragedy.

Jaochim Ronson, the creator of the image portraying the words ‘Je Suis Charlie’, has voiced his concerns that commercial interest in the phrase could ruin the sentiment behind it. To Ronson, ‘I am free, I am not afraid’ is the true meaning behind the words, his interpretation of the phrase after first hearing of the Charlie Hebdo attacks in France.

The #JeSuisCharlie hashtag was considered to be one of the most retweeted news-related hashtags of all time, with others taking their own view of what the phrase means to them.

Soon after, reports suggested that there were over 50 separate attempts to register the phrase as a trademark in France alone. These attempts have resulted in Ronson seeking legal advice to ensure the phrase never becomes legally owned.

You can read more on Ronson’s opinions over the attempts to register ‘Je Suis Charlie’ in the BBC blog, #JeSuisCharlie creator: Phrase cannot be a trademark.

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.

as

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

Adwords Trademark Policy – 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.