Tag Archives: Intellectual Property

Brand Planning

Brand Planning – A Lesson Learned From A Golden Bear

Brand PlanningFor companies, brand planning is an important aspect in brand execution. As far as we know, the best brands are also the best planned brands including the legal side. In a recent turn of events Lindt, the Swiss chocolatier, has emerged victorious in a long-standing battle with Haribo, the German confectionary company that has been attempting to stop Lindt from selling gold chocolate bears since 2012.  According to an article published in the Guardian, Haribo had won the first round of the battle, when a German court banned future sales of the Lindt chocolate bears in December 2012. That ruling, however, has since been overturned on appeal, noting that there was no likelihood of confusion between the two products.

Interestingly, Lindt had lost its fight against German chocolatiers, Confiserie Riegelein, which was producing similar chocolate bunnies. One might say what-goes-around-comes-around when it comes to trademarks and confectionary sweet companies, however, Haribo is likely to be bitter about this ruling.

The point in case was that, according to Haribo, the chocolate bear wrapped in gold foil accompanied with a red ribbon was an appropriation of Haribo’s Goldbären brand and to that effect, the chocolate bear was consolidating a market position on the back of investment and brand awareness built by Haribo. Lindt, on the other hand, argued that the golden bear had been a variation of the golden eastern bunny chocolate and not an illegal imitation of the golden gummy bear or its corresponding logo.

Brands And Competition

Not long ago we wrote about Nestlé being blocked by rival competitor Cadbury’s in our post on: 3D Trademarks & Registered Designs – KitKat Loses Legal Fight for Four-Finger Chocolate bar.

What is easy to take from this is that where industries are particularly competitive, such as in confectionary food industry, it is a brand’s distinctiveness and the awareness surrounding that brand which allows it to survive on a global level. This is where brand planning comes in handy to assure that you know where your brand is heading, legally.

As a lawyer said “The cost of these cases is significant, but it’s about being seen to take action and ringfencing your brand and intellectual property rights as much as you can.”

This is important because trademarks are increasingly relevant in today’s digital economy, as the advent of the internet and development of internet based technologies has opened trade channels on a truly global level not seen before. Trademarks offer the most powerful forms of intellectual property (IP) protection for any brand logo or name and therefore, it is imperative that a certain amount of consideration is paid to trademarks as part of any business strategy.

Below are some trademark considerations from International Trade Mark Association (INTA) for you to bear in mind.

The Portfolio

Every business will have a trademark portfolio. This will comprise of everything from registered trademarks, marks or symbols which are in use but not yet registered, acquired trademarks through licenses, co-branding agreements with other companies and also domain names which include the trade name or trademark within it. Creating a family of trademarks and trade names will help create a stronger brand but can also strengthen the protection afforded that brand.

Brand Planning And Management

Securing rights as early as possible is always highly recommended. On that note, it is important to budget accordingly because registering a trademark in every country around the world can be both expensive and also impractical for a small-to-medium enterprises (SME) or early stage businesses. The strategy is to carefully consider which jurisdictions from a sales and marketing prospective are key to your business, conduct the necessary availability searches and register a trademark to perfect your brand in that territory as soon as it is practically possible.

An important note in managing your trademarks is also ensuring that they are used, or you risk them being revoked.


Keeping on top of a trademark portfolio does not mean just registering them. To increase and maximize the value in a trademark, a certain amount of maintenance is involved. This includes actively monitoring the use of your mark and actively policing your trademark with cease and desist and take down notices when you see that it is being used without authorization. A good way to police you trademark is to monitor competitor activities and trademark applications which are published in trademark journals. To do this, you may want to invest in a brand watch service which can help protect your trademarks in the most efficient way possible by bringing to attention any issues that arise as they come.

Given the online nature of most business, a good way to enforce your rights in your domain names is to make sure that you have a registered trademark and that name is contained in your domain name.

Azrights has helped many SMEs and ambitious entrepreneurs to help secure their rights, commercialize their brands and enforce their IP rights. Visit our trademark registration, trademark search, trademark disputes and brand protection services pages to see how we may help to implement an efficient and cost effective strategy for you. Alternatively, contact us and speak with one of our specialist team members to see how we can help in your brand planning.

Intellectual Property Costs

Intellectual Property Costs Deter Innovation

Intellectual Property CostsIntellectual property (IP) costs should be taken into account in the business plan. Few entrepreneurs know exactly which rights relate to their business and even fewer know how much it will cost to protect them. The cost of IP protection involves paying official fees, and legal fees.

Litigation is not a cost that all businesses need to spend money on, and therefore, need only be planned if there is an actual dispute involving the business. Indeed, protecting a company’s IP will often reduce the likelihood of litigation.

Costs involved in protecting your ideas

When compared to the costs involved in litigating to protect your ideas from being copied, the cost of protecting your rights through registration or contracts are insignificant.  As we wrote in our previous blog “SMEs And IP – FSB Reports They Struggle To Protect Their Intellectual Property”, that is the case especially with small-to-medium enterprises (SMEs) which do not have the budget to protect their IP rights. They suffer losses as a consequence.

Think about the following interesting comparison made by the Financial Times. To fund the International Space Station over ten years’ costs about €100 billion. The patent war in the smartphone industry, on the other hand costs $20 billion over two years. That is a lot to spend even for giants like Apple, Samsung or Motorola who all battle to protect their IP. Such costs are unbearable for start-ups and SMEs. As the Financial Times interestingly states, “the costs of litigation are astronomical and the outcome, too uncertain”.

The Vicious Circle Of Intellectual Property Costs

This is why companies end up in a vicious circle. If a company cannot afford to protect its IP rights, it suffers losses as a result. If it invests in IP protection, and cannot afford to litigate its rights should that be necessary, it cannot protect what it owns.

The research of the Federation of Small Businesses (FSB) surveyed more than 1,000 of FSB’s 200,000 members. Only 32% had actually spent money to secure their IP rights within the last five years, 22% of whom invested more than £5,000. Furthermore, around 25% of the businesses surveyed responded that they have suffered some form of violation or misuse of their IP and a third of them took no action over the theft because of lack of resources and information as to the correct routes and costs involved.

Governmental Actions Needed

The reality, therefore, is that IP law must adapt to change because, as the Hargreaves Report warned, innovations are stifled by the current framework.

The onus is on the Government to better promote the IP services available and install effective instruments that will enable adequate protection. The Hargreaves Review suggested that “there are outstanding uses that need to be resolved”. Therefore, there is a need for a collective action to resolve this problem. However, given that the UK Government is planning to double the fee for issuing civil lawsuit, it will be another deterrent to small businesses to protect their intellectual property.

Nevertheless, businesses should make sure their IP rights are protected adequately and be on the safe side if they need to litigate them. Litigation is more unlikely if intellectual property is effectively protected. Therefore, IP protection should be top priority for any ambitious business.

Photo Copyright

Photo Copyright – Intellectual Property For Monkeys?

Photo CopyrightRule of thumb for photo copyright is that photographers own copyright in any photo taken by them. A copyright lawsuit was filed in San Fransico, USA last week to determine ownership of copyright in a selfie taken by a monkey. The action was filed by People for the Ethical Treatment of Animals (PETA), and has attracted a lot of attention in the intellectual property (IP) world.

Apparently there is no language in the US Copyright Act limiting copyright ownership to humans. Jeffrey Kerr, a lawyer for PETA, said they have a very strong case. Michigan State University law Professor David Favre, on the other hand, commented that Peta “have a fair argument” but it would be “an uphill battle”.

It remains to be seen what the outcome of this interesting dispute will be and, in the meantime, many questions are left unanswered. Have animal rights gone too far? What impact could such a ruling have?

Let us know your thoughts.

For more details, see the Guardian’s article here.

Copyright Lawsuit

Copyright Lawsuit – “Happy Birthday” Song Copyright Claim Over

Copyright LawsuitA copyright lawsuit involving the world-famous “Happy Birthday” song has ended following a ruling this week. The dispute about the famous song has been finally resolved a BBC Article reports. Watner/Chappell Music will no longer be collecting royalties for the song Happy Birthday following US District Judge George H. King’s ruling.

Copyright Validity

The song’s original copyright was acquired by music giant Warner/Chappell who have made around $2 million a year from royalty payments whenever the song is used in a film, television episode, advertisement or other public performance.

The tune was composed by two sisters Parry and Mildred Hill in 1893 under the name Good Morning all and was acquired by Warner/Chappell in 1935 and, without the court judgement, it would not have been freely available in the public domain in the US until 2030 and in the EU until 31 December 2016.

Copyright Lawsuit And The Ruling

The case was filed by Rupa Marya and Robert Siegel in 2013 because they are making a film about the song and did not want to pay royalties. They argued the song is in the public domain and should not be subject to copyright fees.

The judge ruled that the original copyright granted to the defendants was only for specific arrangements and is not exclusive. Therefore, they do not own a valid copyright in the song. The ruling can be read online here. However, this still does not mean that the song is freely available in the public domain to use because, as Chloe Smith reports for the Law Gazette, there still may be elements of the song that are copyright protected.

Read the full BBC article.

3D Tradermarks

3D Trademarks & Registered Designs – KitKat Loses Legal Fight For Four-Finger Chocolate Bar

3D Trademark3D trademarks are notoriously difficult to register, as Nestlé found out last week just short of a few broken fingers. Earlier this summer we wrote about the Advocat-General’s (AG) opinion of the European court in our blog post 3D trademarks – No breaks for KitKat. It was reported that the AG’s opinion is normally followed by European judges and, unfortunately for Nestlé, the European court of justice has, according to the AG’s opinion, ruled that the four-finger chocolate bar lacks acquired distinctiveness for trademark registration.

Why Have 3D Trademark?

Trademarks are powerful intellectual property (IP) assets. They create scarcity where none exist, help drive away competition by protecting your trademark from same and similar marks and build brand associations which can be more valuable than the goods and services themselves.

3D trademarks can therefore be incredibly useful tools in your IP portfolio. This is because shapes can be more symbolic and also more powerful than words or logos. However, registering a 3D trademark has always been a tricky effort, especially for Nestlé whose KitKat shape was said not to comply with EU law. So why go to all that effort? For Nestlé, it may have simply been a question of one-upmanship in a tit for tat battle with Cadbury’s, one of its main competitors. Following a street survey which revealed that 90% of consumers recognized the chocolate bar (without its packaging) as a ‘KitKat’, you might understand why Nestlé went for the break.

Alternative Forms For Shape Protection?

One thing that should not be forgotten is that shapes can also be protected as a registered design which, in the UK, can last up to a maximum of 25 years. Protecting a shape as a registered design can therefore be seen as a viable alternative to a difficult to obtain 3D trademark. The two forms of protection are not mutually exclusive and there is nothing to prevent a trademark from also being a registered design. And, to this extent, the two IP regimes can offer complimentary forms of protection.

Why Apply For A Registered Design?

The main reason why you may decide to apply for design protection is that it is easier to obtain a registered design for a shape than it is obtaining a trademark. A trademark needs to be inherently distinctive, or have acquired distinctiveness through use, and must be capable of distinguishing the goods and services from one undertaking to those of another. A registered design on the other hand does not have such onerous requirements of distinctiveness, only that they are new (different from similar products on the market) and do not serve a technical function.

To give a modern example, take the iPod. It was reported in 2008 that the United States Patent and Trademark Office (USPTO) had granted Apple the 3D trademark for the infamous iPod music play. The Wall Street Journal noted that Apple’s campaign involved a substantial marketing campaign, product development and legal strategy to ensure that the product design was unique. The multi-layering of IP strategies helped Apple to dominate the market, reportedly amounting onto 70% of the market share in 2005. Such is the efficacy leveraging one IP asset against another.

Are you thinking about protecting the shape of one of your products? If you have a design which you think is particularly unique, Azrights can help you determine what the best strategy is for your product or design. Contact us for more information or alternatively visit our trademark registration and registered design pages.

What's in a Name?

Trademark Infringement Ruled Following Costco’s Selling Of Counterfeit Tiffany Rings

Trademark Infringement: What's in a Name?Trademark Infringement by Costco – the largest US warehouse club chain, was ruled by a Manhattan federal judge recently. Costco has allegedly sold counterfeit diamond engagement rings using the luxury retailer Tiffany’s name on the ring’s case signs.

Recently, we wrote about another high profile trademark infringement disputes E-Commerce Giants Sued For Online Selling Of Counterfeit Goods. Costco was selling counterfeit goods as well, but just not online.

Trademark Infringement Case

The famous dispute ironically dates back to the Valentine’s Day of 2013 when Tiffany & Co filed a lawsuit against Costco, saying the chain’s customers have bought hundreds (or maybe even thousands) of engagement rings in the erroneous belief that they were authentic Tiffany products.

The recent ruling had Costco send a letter to customers who bought the rings offering a full refund if they were unsatisfied. It would be interesting to know how they were able to trace all their client’s personal details and communicate this effectively.

Likelihood Of Confusion

Costco tried to argue that Tiffany’s trademark was invalid because, as reported by the American Genius, it prevented anyone from describing the ring setting. Nevertheless, after roughly 30 months, the judge found that Costco’s actions violated Tiffany’s brand by wilfully infringing its trademarks. The federal court judge, Laure Taylor Swain explained that “Despite Costco’s arguments to the contrary, the court finds that, based on the record evidence, no rational finder of fact could conclude that Costco acted in good faith in adopting the Tiffany mark”.

Following this judgment, Tiffany can now take Costco before a jury to seek damages. These might include a recovery of the profits made following the sale of all engagement rings as well as punitive damages (i.e. deterring Costco from engaging in similar conduct again).

What’s In A Name?

Following Robert M. O’Connell’s interesting analysis, there are a few tips that everyone should bear in mind when it comes to choosing names for businesses and products.

1) Distinctive Names

Tiffany & Co was founded by Charles Lewis Tiffany in 1837 and since then it has become the world’s best known jeweller. The general rule under US trademark law is that one cannot protect a surname as a trademark as this would be unfair to others and restrain them from using that name simply because their surnames coincide. However, a name acquires distinctiveness through long-term exclusive use and establishes itself as a brand. It is then easy for consumers to recognize this name and relate it to the goods or services in question. The name, which previously was simply a surname, is now equivalent to a particular brand and gains a secondary meaning as a mark which could be protected. This is also how Tiffany has got so many marks protected and why Costco was not able to claim that monopoly over a surname should be invalidated.

2) The Power Of A Name

How this lawsuit came to be is through a person shopping at one of Costco’s stores in California who complained to Tiffany that she was disappointed to see a warehouse club chain offering Tiffany diamond engagement rings for sale and promoting the offer with signs. In the information era, where nothing can be left hidden, one should be very careful how one labels products or promotes a business. Otherwise, the result could be paying a lot of damages and hefty legal fees. Costco tried to argue that the word Tiffany has already become the generic word for the ring setting in question and this is the meaning they used to promote and sell their product. Tiffany & Co., on the other hand, proved its success by introducing a survey where 9 out of 10 respondents submitted they recognize Tiffany not merely as a generic word, but as a brand. It is astonishing how powerful a name could be and from one moment onwards, it could start “working for you”.

The Tiffany and Costco case continues and another hearing is set for 30 October. The judge directed both sides to “make good faith efforts to settle the outstanding issues”. We will be following the development to find out how much Costco will have to pay for using this “generic word”.

The case is Tiffany & Co v Costco Wholesale Corp., case number 1:13-cv-01041, in the U.S. District Court for the Southern District of New York.

Community Registered Designs and Patents

Design Registration – YSL Wins Over H&M

Community Registered Designs and Patents Design registraion is an important way in which to protect the unique shapes or surface designs that a company’s designers produce. Generally, there is no requirement to prove novelty in order to register a design. It is only when you want to rely on your design registration that it is relevant to prove novelty.So, the recent decision where Yves Saint Laurent (YSL) claimed victory over H&M because it indicates that it is not necessary for designers to come up with something radically different to what is on the market to qualify for design protection.

Overall Individual Character Wins

Last week the luxury fashion house YSL emerged victorious from a nine-year legal battle with the high-street retailer H&M over the validity of its two EU registered designs for its handbags.

H&M challenged the two registered designs, pointing to previous designs as evidence that the YSL designs lacked the required “individual character” to qualify for valid design protection. However, on the 10 September, the European General Court confirmed the previous decisions made by the Office for Harmonization in the Internal Market (OHIM) that YSL’s handbag designs had key differences from what H&M had cited as evidence. In passing the judgment the court held: “it must be held that the differences between the designs at issue are significant and that similarities between them are insignificant in the overall impression which they produce”. For a full summary of the judgment, see the official press release by the General Court of the European Union here.

YSL’s design:

YSL’s design

H&M’s evidence of prior design:


Brand Identity

Brand Identity – 3 Trademark Lessons From The Beer And Microbrewery Industries

Brand IdentityBrand identity is an essential component of any business. Put simply, the name of your brand is the first point of communication for your business to your target market. It is a vehicle for the associations related to your product, service, reputation, quality, value, or perceived value, and so on.

The UK beer market has seen a considerable rise in trademark applications. According to an article published by the Telegraph, trademark registrations in the UK rose by 12% or 1,485 in 2014, as outlets have increasingly sought to stock craft and artisanal beers, said City law firm RPC.

Brand Naming In Overcrowded Markets

The difficulty with niche industries is that once they start to become overcrowded, you soon find yourself hard pressed at finding suitable names for your products that don’t overlap and infringe on the rights of others. This is because the more niche a market is, the more finite the descriptive naming options become. Consequently, it becomes harder to think of a name which hasn’t already been used.

For example the term ‘Hells’, derivative of the German of ‘Helles’, is a generic description for a light lager. So, Camden Town, who registered the trademark ‘Hells Lager’, prevented another brewery, Redwell, from selling under the same name. They also claimed exclusive rights in the word ‘Camden’ for bee, and prevented another London based brewer, Weird Beard Brewery Co, from using ‘Camden BeardD’.

The sticking point is that in such homogeneous markets, brand identity plays just as important a role as the taste or quality of the product. According to new reports, figures show that an estimated 3 new microbreweries open every week, whilst 30 pubs per week are closing. In these market conditions. The rat race for market dominance becomes a battle of the brands.

Brand Identity Lessons For Entrepreneurs

Most industries are relatively overcrowded, and this is largely because of the prolific use of the internet which has allowed us global access to virtually any product and service we can enter into a search engine. Getting into the game can therefore be quite daunting, and even full on intimidating. Here are a few tips on establishing your brand identity according to Entrepreneur.com:

  1. Know Your Market And Pre-Empt Your Competitors

Whilst it seems pretty straightforward, knowing your industry is not something which all take into full consideration. Take the above example with ‘Hells Lager’. Understanding an industry requires frequent stock taking and closely studying your competitors. It also means collecting this data and analyzing your business periodically against it to figure out what works and what does not. For example, which Intellectual Property (IP) assets are building more goodwill and which ones are not? Only in this way can you hope to build a brand identity strategy that works for your product or service, and you can keep one step ahead of your competitors, as opposed to infringing on their rights.

  1. Do Your Research And Trademark As Soon As Possible

The value of trademark searches and early trademark registration cannot be stressed enough. At the very least it saves you immeasurable time, money, and effort spent on trying to defend an opposition later down the line, and at best it can save you from a crippling rebranding or an expensive lawsuit.

  1. Collaborate And Co-Exist

Not all conflicts have to be a win-lose scenario. Most people are non-confrontational and do not want to engage in expensive legal fights. There might be scope for collaboration or registration of your trademark rights whereby you can come to mutual understanding as to the scope of use of the mark and create revenue together, or separately, without the anxiety that your brand might get shut down. Then you will have to get back to the drawing board.

Azrights deals with a plethora of different businesses on a daily basis. We can help with your business name search and offer our opinion, help you understand your most valuable IP assets through our Intelli & IP audit services and ultimately help you protect your brands through trademark registration. Get in touch with us if you have any questions about starting up in your industry.

Trade Mark Infringement

Trademark Infringement – E-Commerce Giants Sued For Online Selling Of Counterfeit Goods

Trademark InfringementTrademark infringement claims are on the rise with recent disputes related to the sale of counterfeit products on platforms such as eBay and Alibaba. In our previous blog post, Online Selling And Your Obligations To The Consumer, we highlighted the basic issues in relation to online selling regulations. At the heart of it, online sellers need to make sure they are in conformity with the law but, according to a recent article by Lawyers and Settlements, it seems that eBay and PayPal, as the online payment system, have failed to comply with these requirements.

Trademark Infringement Cases

A lawsuit has been filed against eBay and PayPal for trademark infringement following the sale of fake products on eBay’s platform. The filing itself notes that counterfeiting is a big business, costing retailers in the industry between $200 and $250 billion dollars each year and in addition, dilutes the trademarks of the protected products.

eBay’s Liabilities

The suit was filed by Wimo Labs – a company with many registered trademarks mainly for iPhone and Apple watch cases and alleges that as many as 2,000 eBay sellers (who are also named as defendants in the lawsuit) are using their trademarks to sell counterfeit products and deceive consumers. The way eBay and PayPal are involved in the infringing activities is that they have knowingly and deliberately facilitated and profited from the sale of the fake products. What is more, eBay is alleged to have engaged in soliciting eBay buyers to purchase fake products.

According to Deborah Klar, co-counsel with R. Rex Parris Law Firm on the claim, the claimant company has sent more than 5,000 notices of claimed trademark infringement to eBay since 2013, requesting the e-commerce giant to remove the fake products. Additionally, rather than responding to a third-party from The Counterfeit Report, eBay instead opted to change commentary on the report’s sites and blocked The Counterfeit Report’s corporate accounts.

Klar also commented that “the sale of fake products causes consumer confusion, adversely affects their brand and also means our client has lost sales.” She also adds that “as a result of the sale of these fake products on eBay, our client has suffered substantial damage.” The problem with fake products is that they are widespread on eBay and have a tremendous impact on the sellers invested in protecting their brands.

Paypal’s Involvement

Regarding PayPal as a defendant, according to Wimo’s counsel, the former eBay unit is the link between eBay buyers and counterfeit sellers. As such, the company is actually in a position to stop eBay’s practices by simply removing the ability for those sellers to get paid.

Alibaba And Their Approach

On a separate note, Chinese e-commerce giant, Alibaba, has recently been criticized for being too soft towards counterfeit sellers. As a result, Alibaba has launched a new English version of its counterfeit reporting system called “TaoProtect”. Although AliBaba has another platform called “AliProtect” which covers its other websites, TaoProtect has been developed exclusively for dealing with a range of Intellectual Property (IP) complaints such as copyright, patent and trademark infringement and unfair use of those IP rights. This reveals the scale of the problem as well as the serious steps conglomerates such as Alibaba take to ensure IP rights are effectively protected.

The launch of the English version of TaoProtect, UK and other Western European companies would be able to access easily the counterfeit reporting system. Alibaba’s US-based senior IP protection manager commented that “because the success and integrity of our marketplaces depend on consumer trust, we have comprehensive policies and practices in place to fight IP infringement.”

The improvement in their system comes partly as a result of the lawsuit filed against Alibaba by companies like Gucci and Yves St. Laurent. The suit was filed by Kering (the fashion house which owns these brands) last May and a US District Judge in Manhattan granted to some of them an immediate order barring sales of goods on Alibaba.

Lexology commented that, generally, for brand owners having secured trademark registrations in China, the US and wherever else your business operates is the safest route to tackle online infringement.

This article aims to be an informative piece, providing you with the latest developments in the IP and commercial world. However, it is likely that your business faces similar issues. Therefore, if you need specific help to your situation, we can help. We have experience of dealing with different platforms online related to Trademark Infringement.