Tag Archives: Intellectual Property

Trademark Search Essentials

Trademark Search – Minimizing The Dangers Of Having Similar Names To Your Competitors

Trademark Search EssentialsTrademark search is designed to help minimize the dangers of choosing names for your business, brand, product, or service, which are similar to those of your competitors and which might land you in an expensive intellectual property conflict.

For this very reason, we were surprised to hear, then, that LG electronics, the South Korean technology giant, has filed a number of trademarks disputes which included the ‘EDGE’ moniker, more commonly associate with Samsung’s Galaxy smartphone and tablet product range. The ‘EDGE’ element, originally coined by Samsung for Galaxy Note Edge device which has a curvature on the side of the display, was later exported to the Galaxy S6 Edge and, now, to the S6 Edge +. In a bold move, LG has stepped into the ring with trademark applications for: Super Edge, Dual Edge, Upper Edge, Dual Side Edge, Side Edge, Double Edge, Two Edge, G Edge. According to G Edge filing which you can find here, it is apparent that the name is intended to be used for smartphones.

What’s The Play?

One can only speculate as to what LG’s legal team was thinking. An article on TECHTIMES.com has noted that aside from the trolling Samsung theory, perhaps this is LG’s way of saying how it too wants to join the curved display market for smartphones and tablets. A notoriously competitive industry, the smartphone market has been fraught with ‘wars’ between Apple and Samsung, and Motorola and Microsoft. We previously wrote about how the Xbox 360 was close to being banned in America in a patent battle with Motorola in our article – Motorola, Microsoft patent war rages on.

It could be that LG’s move might trigger another intellectual property war; this time for dominance in the curved edge displays market between LG and Samsung.

Similar Names

When it comes to trademarks, even a name which is different but similar enough to a prior trademark can result in litigation. Bigger companies with a reputation are more likely to litigate aggressively as a name and its associated reputation tend to be the differentiating factor in highly homogeneous markets, such as the smartphone market.

It is easy to see how a name of a product or service is highly relevant. The old adage ‘a death by a thousand cuts’ rings true for products and services with a distinctive name and renowned name. Should a name be used for a variety of goods and services, the distinctive sparkle fades and the market position soon starts to evaporate.

See our article on Naming Strategies – Google’s New Brand Strategy for more highly distinctive names that run the risk on becoming generic from being overused.

Trademark Search Essentials

When choosing names, it is important that you avoid names similar to your competitors. This is primarily to ensure, as much as possible, that the name you have chosen is distinctive and readily associable with your brand, product or service and your business values, and not those of your competitors.

A trademark search will help you ascertain which names you can and cannot choose. Further, a trademark search on the registers of each relevant target market will clear the options available to you and the best relevant strategy to employ to your market position and that of your competition.

Having said that, LG’s aggressive play presents a different strategy altogether, and one which tends to be permissible only to those with deep pockets. Applying for names similar to competitors will most likely prompt litigation. If you have the resources to fight it out with expensive lawyers, it can be a risk that you will take. Nevertheless, litigation can only go one of two ways.

First, is that you lose the opposition and you start from scratch with a new and different name. For a lot of companies, a re-brand can be as fatal as the rate of consumer consumption far surpassing brand loyalty (just think of Apple who has resorted to clever ways to lock you in with their entire product range). For a ‘Small And Midsize Enterprise’ (SME), this can be dangerous play.

For a company like LG Electronics, however, it can be a mere way of publicizing a challenge which can put them in the spotlight as a newcomer and will undoubtedly disrupt Samsung with legal costs (as Apple did in 2012 when the Court ordered Samsung to pay Apple an eye watering $1Billion in damages). In the event that they become successful in registering the ‘EDGE’ moniker, it will have the wider effect of knocking Samsung down one more peg and steal its curvy display thunder with something which is newer and potentially more innovative.

If you are thinking about starting a new company or launching a product or service and need a new name, here at Azrights we can do international trademark searches and provide you with an opinion on how to avoid getting caught in an expensive trademark battle. See our trademark search page for more details on how we can help.

Copyright Infringement Laws

Copyright Infringement Is Claimed By Hacked Dating Service Ashley Madison

Copyright Infringement LawsCopyright infringement is allegedly the basis on which dating service Ashley Madison is trying to prevent the spreading of its stolen member database.

Last week, more than 33 million records of Ashley Madison users, containing information such as names, profile information and even partial credit card information were released online.

Although it has not yet been officially confirmed by the company to be legitimate records, outside investigations have indicated that they are.

Claim Of Copyright Infringement

The infidelity-focused dating service Ashley Madison is reportedly using copyright notices to persuade websites to remove the leaked data.

Motherboard journalist Joseph Cox wrote that an employee of Avid Life Media, the company behind Ashley Madison, sent a Digital Millennium Copyright Act (DMCA) takedown notice after Cox posted three tweets containing fragments of the leaked material. The notice, according to Cox, also confirmed the leaks’ veracity: “Avid owns all intellectual property in the data, which has been stolen from our data center, and disclosed in this unauthorized and unlawful manner.”

Notice Of Copyright Infringement

Copyright notices are a common way of suppressing criticism or leaked secrets, a practice that might be most strongly associated with the Church of Scientology. Filing a DMCA takedown on Twitter is as easy as filling out a short form. Anyone could theoretically send one under any name to require Twitter to investigate the submissions internally. It could only result in legal penalties.

However, tweets are hardly copyrightable materials. Emails, names, credit card details and other mere lists of information are not copyrightable unless arranged with sufficient originality invested by the author. Automatically arranging the already sorted information in a spreadsheet would not even suffice.

Furthermore, in 1991, the US Supreme Court said that the telephone directory white pages cannot be protected by copyright law.

Interestingly, experts have already commented on this issue warning users not to download the Ashley Madison database mainly because it will be considered stolen property. However, it depends on what Ashley Madison claims to be their copyright. For example, the text written in each user profile belongs to the author and owner of the profile while it is contained in a copyrighted website.

The terms of service of Ashley Madison states that:

You acknowledge and agree that all content and materials available on our Site are protected by either our rights, or the rights of our licensors or other third parties, of publicity, copyright, trademarks, service marks, patents, trade secrets or other proprietary rights and laws.

This particular section is vague, ambiguous and gives no guidance on, for example, transfer of ownership or if these terms are not signed by users.

The issue of hackers and how “invincible” they could be is well illustrated with our experience a few years ago when one of our websites was hacked. Fortunately, we were prepared and we quickly identified the nature and extent of the hack and restored the website.

Ashley Madison will allegedly claim copyright infringement against those who publish and open their database, including those who hacked into their data, however, it may be very difficult to precisely identify individuals who stole and leaked their records.

Whether an intellectual property dispute will arise or not, it is a very interesting development to keep an eye on.

Your name, know your game.

Trademarks In China – How Difficult Is It To Protect Intellectual Property?

Trademarks In China : Your name, know your game.Trademarks in China are among the many difficult challenges for businesses operating internationally. Chinese intellectual property legislation has been notoriously difficult for Western companies to deal with as we outlined in our previous blog post trade mark registration and brand extension in China

Michael Jordan and his sneaker brand is the latest to be caught in the snare.

A Beijing court has dismissed a trademark opposition brought by Michael Jordan against a company using the name ‘Qiaodan’, which is the Chinese version of Jordan’s name, but also one with a similar pronunciation and uncreative similar logo. The Chinese company had effectively constructed an entire brand based on the Nike-produced brand.

A Reuters’ article reported that a Chinese sportswear company had built around the world-famous basketball player’s Chinese name and even his famous basketball jersey, number “23″, without his permission. However, it seems that the battle is set to continue according to Advertising Age who reported that Michael Jordan’s legal counsel confirmed last week that they plan to file for retrial by November.

Big Names And Their Trademarks In China

Unfortunately, this tends to be quite a common occurrence in China, whose system gives favour to those who are first-to-file, unlike in the USA, where favour is given to those who are first-to-use. In 2012, the tech giant Apple Inc. had to settle a $60 million lawsuit to a Chinese firm, Proview, in order to use the ‘iPad’ name. A steep price for not getting in early, and, recently, one which is set to be even steeper for the new Apple iWatch as we wrote about in our earlier blog post “iWatch Trade mark – Apple In Multimillion Dispute”.

However, Apple was not the only victim with their trademarks in China. Pfizer has not registered the Chinese equivalent for the name ‘Viagra’ which it had trademarked and consequently ended up losing it to a local Chinese company that had claimed ownership over it. Luxury fashion brands Burberry and Hermes have also run into similar problems. The importance of your company’s name has never been as important as it is today.

Our Intellectual Property Advice

Here are some tips when it comes to your trademarks in China or in other parts of the world:

1.     Move Fast

Most people tend to see intellectual property as a burdensome cost at the beginning of an entrepreneurial venture. Whilst it is true that intellectual property registration can be a costly exercise, investing in your intellectual property early will save you thousands, if not millions down the line. This is true especially if you intend to take your brand to ‘first-to-file’ jurisdictions like China. There is no end to those who will try and appropriate from you, make sure they do not appropriate your intellectual property by registering before you do.

2.     Have An Intellectual Property Strategy

Intellectual property is territorial, meaning that where it is registered it is a valid right. It would be expensive and also impractical to be registered in every corner of the world, no matter how ideal that would be. Having a strategy means having the foresight about what your product is, what your brand encompasses, who are those that are likely to invest into your brand and what markets they are operating in. Before you set foot in that territory and gain large exposure, seek to register your company name and branded products so that the foundations for your commercial operations are already set.

3.     Know Your Name

For long, many creative and branding agencies and the like, have been churning out names based on a few online checks. The reality of what is a good name and what can be a valid trademark are two completely separate issues. For example, Pfizer not knowing what the Chinese equivalent name for “Viagra” cost them dearly.

Recently, last April, a New Balance affiliate ordered to cough up $16 million in compensation to a Chinese show manufacturer who had registered the Chinese brand name “Xin Bai Lun.” New Balance knew about the trademark but continued to operate under the impression that there would be no consequences. If you are going to places such as China, undertaking the correct international searches and working with intellectual property lawyers and translators are crucial in this process.

Visit our Trademarks services page to learn more about trademarks. We can help whether you need an international name search, want to know more about registering your trademark overseas, or want to brainstorm a solid IP strategy to leverage your brand and prevent others from using your trademarks in China or in any part of the world.

Googles New Brand Strategy

Naming Strategies – Google’s New Brand Strategy

Googles New Brand StrategyIn terms of naming strategies Google’s recent decision to introduce a holding company, Alphabet, which we wrote about in our blog post, Google vs BMW – Trademark Dispute Over Google’s Choice of Alphabet Name?, indicates a move away from the house brand approach to branding. We discussed Google’s naming strategy back in 2011 in our blog, Google Plus Brand Naming Strategy. In particular, we highlighted how Google’s decision to create its social media site Google Plus under the Google brand was both criticized and praised in equal measure at the time.

Google’s decision to adopt a single brand name in 2011

On the one hand, Google’s decision to launch its products under the Google brand name, and to rename its longstanding products Picasa and Blogger as ‘Google Photos’ and ‘Google Blogs’ had the benefit of being straightforward, and unifying. However, on the other hand, the problem with using the name Google for its new social media network was that the name ‘Google’ is associated with a search engine rather than a Social Network. When people hear the name Google, ‘social’ does not enter their heads. The lack of success of Google Plus as a social network may have something to do with Google’s current decision to cease using the primary brand across all its products and services.

House of brands v. house brand

Google has now adopted the same approach as Procter & Gamble, which is a well-known example of a ‘house of brands’ approach to branding. That business has many brands, each one being a stand-alone name. So, Proctor & Gamble’s products include household names such as Ariel, Tide, Wella, Head & Shoulders, and Olay. The name Procter & Gamble is not as well-known as the names of many of its products. If Procter & Gamble were to start trading under a different business name, the effect on its products would be minimal and the majority of consumers would be unlikely to even notice. When buying Head & Shoulders shampoo, customers do not choose it because it is made by Procter & Gamble. They buy it because they have trust in the Head & Shoulders brand. A great example of a successful ‘house brand’ approach where the company focuses on one main brand, which runs through all its subsequent product names is Virgin. The same name is used across a number of different businesses, with the addition of descriptors such as Virgin Atlantic, Virgin Hotels, Virgin Media, Virgin Records, and so on.

Google’s naming strategy

Back in 2011 Google changed its branding strategy to focus on launching its new products under the Google brand name. One of the primary questions raised by this move to brand all products under the same name was whether these products will benefit by association, or whether the Google brand will suffer. Some argued that by creating a variety of different products under the same brand name, one risk was that the main brand would become diluted. The reason why Google as a brand name is powerful is because the brand is immediately associated with its main service as a search engine. Its decision to adopt the same name across all products held the danger that the brand was trying to cover too many products and services. In branding, it’s important for a product to have a specific connotation that’s related to the brand, to establish a foothold within the market.

Benefits of ‘house brands’

The benefit of the ‘house brand’ approach is that it’s financially more economic. By taking one strong brand, and ploughing all your brand meaning into it, while differentiating each product with descriptors instead of brand names, you avoid the need for legal clearance and trade mark registration each time you release a new product. When you have one main brand, resources can be focused on creating and building this brand, rather than having to spread them by creating several different brands, and then trade-marking these. This method is more cost-effective. By creating a strong main brand, any new product immediately benefits from its association with the main brand.

Unilever’s experience

An example of how the use of one brand name across all a company’s products risks the brand as a whole being damaged if one of the products develops a bad reputation is illustrated by Unilever’s experience. Unilever started off using the ‘house of brands’ approach, and all its products stood alone, being completely separate from Unilever itself. However, because of the lack of recognition of the main Unilever brand, the company decided to take a ‘house brand’ approach and endorse all its products with a ‘U’ logo. But this transition backfired, after it launched an ad for Dove cosmetics that campaigned for ‘real beauty’. After the launch, there was much debate concerning the different ideals promoted by Dove compared to those promoted by its Lynx ads, which have a reputation for being sexist. This conflict in ideology arising from having two products under the same brand was heavily criticised. The negative outcome stemmed from the connection created between previously seemingly unconnected products. As a result, Unilever’s desire for the main brand to become more involved in the marketing of its products was unsustainable.

Importance of holding same values in house brand naming strategy

The Unilever example demonstrates how, in a ‘house brand’ situation, it’s important for all the products and services to represent the same essential values. If this is not feasible, then using the Procter & Gamble ‘house of brands’ approach would be more appropriate. None of its brands are associated with the company itself. They are created, marketed and branded individually, and each brand stands on its own feet. Many people do not even realise that certain products are under common ownership. In this example, Procter & Gamble’s brand name does not add any extra credibility to a product. However, Procter & Gamble still has an extremely successful business, having established many different, well-respected brands. One advantage of this ‘umbrella’ approach to branding is that it enables a number of different products to be created. Each new product can be marketed separately and aimed at different audiences without diluting the main company’s brand. Each product is then able to establish itself on its own grounds, without being constrained by assumptions associated with the main brand. Each brand stands for completely different values and represents unrelated products, from snacks to personal grooming. With such a range and variety of products, it would be impossible to brand them all under the same umbrella brand name, and the ‘house of brands’ method is the most appropriate for this business model.

Alphabet

Therefore, it’s clear that as Google is now adopting the house of brands approach to naming, its current plans to use Alphabet as a holding company mean that Alphabet is unlikely to become well-known. As such, if it were necessary for Alphabet to rebrand, which probably it won’t need to do given that it does not intend to develop products and services under that brand, it could easily do so with little impact on its portfolio of brands.

Patents - Novelty or Reform?

Patent Registration – Does It Lead To Greater Innovation?

Patents - Novelty or Reform?Patent registration is the first form of IP many businesses want to explore when they have an idea for something new. A patent is defined in the dictionary as a sole right to make, use or sell an invention for a set period.

The key word here is ‘invention’ which presumes innovation.. Therefore, patents should lead to the spread of knowledge and greater novelty. However, arguably the patent system has the effect of setting innovation back according to a recent article by the Economist.

Problems with patents

The article suggests that stronger patent systems do not result in more private research or an increase in productivity. The broadening of the patent regime in the 1980s following the USA’s recognition of the potential of crop science failed to galvanise progress in agriculture, and the article  also highlights how patent litigation is on the rise.

As a popular article recently stated: “most of the wonders of the modern age, from mule-spinning to railways, steamships to gas lamps, seemed to have emerged without the help of patents. If the Industrial Revolution didn’t need them, why have them at all?”

What is worse, as we wrote in our previous post “Patent Troll Problems – The Good, The Bad, And The Ugly”, the system has created a ‘web’ of trolls and defensive patent-holders which exist solely to exploit rights in patents often obtained from another company to block innovation.

Too expensive

The patent system is extremely expensive and even if individuals can afford to register a patent, any litigation afterwards is likely too costly to fund. This is also noted by Rubin who points out how “most inventors barely have enough money to file for a patent application. Even if the inventor can afford to get the patent to grant, patent litigation is exorbitantly costly, frequently requiring millions of dollars to fund. Individual inventors, and even small or medium-sized companies, cannot afford such fees without another company to finance the litigation or at least to license or buy the patent…The inventor may never realise any benefit from his toils.”

If patents lead to innovation and are so expensive to uphold, then it turns out innovation is expensive – probably more expensive than it should be. As innovation “fuels” the knowledge economy, it is the engine of development, and perhaps what we need is a “clear, rough-and-ready patent system” – to  encourage novel and fresh ideas. One that does not set innovation back.

Read the full Economist article

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Intellectual Property Reforms Prove Successful – From Zero To Hero

IP Reform is SuccessfulAn independent report commissioned by the IPO entitled Evaluation of the Reforms of the Intellectual Property Enterprise Court 2010-2013 was published very recently examining the effect of the recent reforms in the Intellectual Property Enterprise Court (IPEC), the former Patents County Court (PCC).

The primary objective of the recent changes were to improve the litigation procedures and reduce litigation costs and, as a result, to increase access to justice in IP matters with special focus on individual claimants and SMEs who struggled financially to fight IP cases. Yassine Lefouili, one of the co-authors of the report, affirms the positive developments following the changes resulting in qualitative and quantitative evidence that there has been large increase in the number of intellectual property cases.

Governmental support

Introducing the report, IP Minister Baroness Neville-Rolfe praised the changes and confirmed that small and medium sized businesses and entrepreneurs now have better chances to actually defend their IP rights. This is good news, especially following a recent FSB research we wrote about in our article “SMEs And IP – FSB Reports They Struggle To Protect Their Intellectual Property” which revealed the struggle of SMEs and start ups to protect their IP.

The improvements come as a result of the costs cap and the 2010 active case management process. These amendments speed up the litigation process and also serve as an awareness tool for litigants to understand better their exposure before filing a claim. What is more, as Chloe Smith underlines for the Law Gazette, changes have opened up IPEC for patent and trade mark attorneys who are now able to represent their clients in court more often.

This suggests that reforms have paid off and, as the PatLit suggests, with the introduction of the Small Claims track we might as well have even better news in a following report.

Famous Marks – Trade Mark Classifications

Famous Marks – Trade Mark Classifications

Famous Marks – Trade Mark ClassificationsWhilst the classification rules apply to the majority of trademarks, famous marks operate under slightly different rules. A famous mark has a much broader scope of protection than an ordinary mark. This is due to its widespread reputation or recognition which means it is not subject to classification restrictions. It enjoys the same protection as if it had been registered in each of the 45 classes. This broad protection given to well-known marks is afforded by most industrialised countries.

A while ago we wrote about famous names as trade marks which have resulted in numerous high-profile disputes. The situation is no less complex and tricky today. The basic rules about famous marks are outlined on the INTA website. Essentially, the significance of the rules is that when you’re picking a new name for a product or service, you need to beware of adopting famous brand names such as Martini or Coca-Cola for your business. This is because even if you had nothing to do with drinks, and were in a completely different industry, Martini or Coca-Cola could stop you from using their name.

For example, although you might see multiples of the same name used for other brands, such as Polo, you will probably notice that there are no multiple Microsofts or Coca-Colas.

Marks that became famous long ago, or quickly, such as Twitter, or Google, are famous enough to Twitter drinkhave a complete monopoly over their name worldwide. There have been applications to register Twitter for wine, beer and other alcoholic drinks, as well as attempts at other categories. The objection to such applications is that by using the sign, the applicant is taking unfair advantage of the mark’s fame and its use could have a detrimental impact on the well-known trademark.

Trademark infringement and famous marks

For trademark infringement cases involving famous marks, the requirements for proving infringement are different from those found in other cases. Rather than having to prove that someone else’s use of a name is confusing to customers, the trademark owners instead have to show that the other user is ‘diluting’ their brand by ‘tarnishing’ or ‘blurring’ its famous mark. A case demonstrating how a famous mark is protected from being ‘tarnished’ involves Hasbro Inc.

Hasbro Inc. v. Internet Entertainment Group

One of Hasbro’s most popular games is a board game called ‘Candy Land’, which is targeted at young children and since 1949 has been advertised as a ‘child’s first game’. The whole design of the game was focused on using bright colours, and wholesome images, which helped make the games so popular. .

However, in 1995 Internet Entertainment Group (IEG) acquired the Internet domain name candyland.com, using it to launch a sexually explicit website. Hasbro launched a lawsuit against the company on the grounds of trademark infringement.

There is no danger of people confusing an adult entertainment site with a kid’s board game, so under normal trademark regulations Hasbro would not have been able to prevent IEG from using the Candy Land name.

The issue Hasbro was taking IEG to court over was that its use of the Candy Land name would tarnish Hasbro’s own trademark.

‘Dilution by tarnishment’ is defined as ‘the association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark’.

IEG lost the case, and was ordered to stop using the ‘Candy Land’ trademark and turn over the candyland.com domain to Hasbro. The outcome of the case was extremely costly for IEG as it had paid over $20,000 to acquire the domain name, and had spent an additional $150,000 on advertisements for the site.

Blurring

An action involving trademark dilution by blurring has to prove that the similarity between a mark and a famous trademark will damage the uniqueness of the original mark through blurring.

An example of blurring would be if a company were to start selling shoes under a famous name such as Kleenex. Again, in this case it would not matter if the two products had no chance of being confused, and that customers would realise each product is made by different entities. What matters in such cases is that the distinctiveness of the mark is lessened. No longer would people associate Kleenex only with the tissue company, but also with shoes, ‘blurring’ the famous mark.

What makes a mark ‘famous’?

Beyond household names the issue is not always straightforward. A mark may be well known in one country but not in another, and it depends on whether the public in the given territory is familiar with the mark.

Absolut Vodka v. Absolute Radio

An example of a case where a well-known mark failed to stop another business using its name is the drinks company V&S, Vin & Sprit, which owns the Absolut Vodka brand. It issued proceedings against Virgin’s Absolute Radio for trademark infringement and passing off on the basis that there was a risk of confusion with its brand. Absolute Radio was registered as a trademark in 2003, and Absolut was aiming to have the trademark revoked.

After 18 months of wrangling, a confidential settlement ensued whereby Absolute Radio was able to continue using the name.

In conclusion, avoid using the name of a mark that is well known in the country in which you intend using it, otherwise you could be required to rebrand even if you have secured trademark, domain or company registrations.

Multimillion Apple Dispute Over ‘iWatch’ Trade Mark

‘iWatch’ Trade Mark – Apple In Multimillion Trademark Dispute

shutterstock_472863_jpgIn April this year Apple released their newest product – the Apple Watch. Only a few months after the release date a petition was filed in a Milan court accusing Apple of violating the iWatch trade mark. You may recall that in 2012 the tech giant agreed to pay $60m to Chinese firm Proview to settle a dispute involving rights to the “iPad” name. Now another high-profile dispute is on its way.

The dispute

On 26 June an Irish sAppleWatchoftware development company Probendi filed an urgent procedure concerning Apple’s use of the name owned by them – iWatch. Although their “iDevices” have been very popular, Apple did not use this name for their watch. It seems they have learnt their lesson from 2012 because their innovative watch is in fact called ‘Apple watch’. They probably knew this name was already owned by another company. The problem is not, therefore, in the name of the product.

Apple has, however, used the ‘iWatch’ name in another way. In our blog Bidding on competitors’ trademark in Adwords we wrote about Adwords and trade mark infringement. Both issues seem relevant in this dispute as well. It is a fact that Apple paid for Google AdWords to use the term ‘iWatch’. When users search for iWatch on Google, they are directed to Apple’s store even though this was not the actual name of this product. As Probendi’s petition claimed, “Apple has systematically used iWatch wording on Google search engine in order to direct customers to its own website advertising Apple Watch.”

Probendi’s plans

While Apple managed to settle with the Chinese company Proview and buy out the rights in the ‘iPad’ name, it is more likely than not that they will not succeed to do this with Probendi.

Probendi co-founder and CEO Daniele Di Salvo said the company had warned Apple against using this term.

It is expected that the Irish company will take full advantage of its registered trade mark. Di Salvo said his company plans to develop their own ‘smart watch’ which will run on Android and have a touchscreen display too. It is not difficult to guess what its name would be. Probendi’s iWatch will benefit from all must-have features and undercut the Apple Watch in price.

Bloomberg reports about an audit conducted by Barzano & Zanardo valuing the iWatch trademark at €87 million ($97 million) – significantly more than the $60 million Apple paid Proview.

Google’s approach

Many companies have tried to challenge Google or its advisers over trademark use but more often than not these actions have been unsuccessful. Google’s policy terms for its ad service states that trade mark complaints are dealt with on a case-by-case basis and that certain restrictions may be enforced. Probendi’s lawyer has said no action was taken by either Apple or Google following their requests and objections.

It is fascinating to explore how powerful the right branding strategy could be – out of curiosity I asked a number of my friends what they thought the name of Apple’s watch was. Unsurprisingly, all of them were convinced it was ‘iWatch’. That’s the power of strong intellectual property and excellent marketing strategy.

Even though Apple tried not to repeat the mistake from 2012, Techradar summarise the issue by saying that “Apple is being sued for not using the iWatch name”. We will be expecting more information on 11 November when the hearing Is scheduled.

So far when you type ‘iWatch’ into Google search, the top result will be an ad for the Apple Watch followed by link to the Apple’s website.

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SMEs and IP - FSB Reports They Struggle To Protect Their Intellectual Property

SMEs And IP – FSB Reports They Struggle To Protect Their Intellectual Property

SMEs and IP - FSB Reports They Struggle To Protect Their Intellectual PropertyA recent research from the Federation of Small Businesses (FSB) has revealed that the price to be paid by UK’s small firms and start up businesses to protect their intellectual property would very often cost them their ability to develop and innovate.

That is because taking care of your IP is costly and time-consuming and businesses often find the instruments provided by the IPO to help secure IP rights too hard to use. As discussed in our Guide For Start Ups Part 1 and Part 2, protecting intellectual property is crucial for the UK’s growing knowledge economy, and it is questionable whether companies should be directed to do the work themselves.

Many companies suffer losses because they do not effectively protect their range of IP rights.

The research 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. These figures speak about the lack of awareness of SMEs as to the importance of IP protection for their businesses and how much damage it could cause. More importantly, 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.

Unregistered rights

Interestingly, most of the infringements outlined are related to unregistered rights like copyright. This underlines the severity of the problem, namely that SMEs and start ups are not aware of the significance of their IP rights for their businesses, hence their passive attitude towards protecting them. They need to be “educated” on these issues and learn how to protect them so they can profit from their intangible assets. Once they realise this is possible, it will then make sense for them to take actions against perpetrators. Currently, only a small portion of those questioned acted upon IP infringement.

The FSB chairman, John Allan has also underlined this issue by stating that ‘The knowledge economy, which runs on innovative ideas and brands, is becoming ever more critical to our economic success. Left unchecked, theft and infringement of ideas, patents and brand costs small businesses and diminishes their appetite to invest in their business, ultimately hampering the UK’s long-term economic growth.’

The proper protection of IP is a “mainstream issue which deserves a mainstream focus”, continues Allan. Therefore, we need effective tools to help secure and protect intellectual property rights.

IPO tools

The Intellectual Property Office has addressed this problem by putting in place various tools and services to deal with the effective protection of IP. The IPO’s mediation service, the IP Enterprise Court’s small claims track and the intellectual property finance toolkit are good examples. And yet SMEs find them too costly or difficult to work with. The FSB is advocating for simplification in order to encourage a proactive approach to IP by SMEs and start ups.

The onus is on the Government to better promote the IP services available and install effective instruments that will enable adequate protection. Back in 2011, 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.

On the one hand, those who are aware of the strength that IP brings it, should promote this idea persuasively, and, on the other hand, the Government, the IPO and other institutions need to make sure they provide the most effective tools for this to happen. In the end, the benefit will be for all of us – because in UK’s growing knowledge economy, businesses increasingly rely on their intangible assets. And more often than not do these assets turn out to be more profitable than the tangibles.

Arbitration As An Alternative Dispute Resolution Method in IP – Pros and Cons

Arbitration As An Alternative Dispute Resolution Method In IP – Pros And Cons

Arbitration As An Alternative Dispute Resolution Method in IP – Pros and ConsWith the recent launch of the Independent Press Standards Organisation’s (Ipso) consultation into setting up a pilot arbitration service to widen access to justice, it is interesting to consider the advantages of arbitration as an alternative dispute resolution method.

Arbitration has increased its popularity in recent years, and could be very advantageous in IP matters due to its flexibility, private and confidential nature.

Before agreeing to use arbitration to resolve a dispute, it’s important to explore the pros and cons of the option. The main arguments in favour of arbitration in IP disputes include:

+        Privacy

When it comes to IP, especially with trademarks and patents, companies with rich IP portfolios have an incentive to keep any dispute private so that their IP does not suffer in any way. One of the perceived advantages of arbitration is its confidentiality. Parties can keep the nature of their dispute and all other details private. This is essential in some IP disputes especially when sensitive and secret information is involved. For example, in a dispute relating to a trade secret or a patent, a lot of confidential matters will be discussed. In such circumstances, it would be crucial for the owner of the IP to keep the matter private and confidential and make sure any business secrets remain hidden.

Of course, it should be noted that courts in civil litigation would also treat particularly sensitive information as confidential as well, and in this sense there will not be huge difference between both.

Another consideration is that parties could adopt strategies and measures that wouldn’t be available to them if the dispute were public in case it would be harmful or embarrassing to their reputation. In that way a party could act unfairly or inequitably, and yet be awarded the relevant remedy.

Still, one of the main advantages when it comes to arbitration is the very high level of confidentiality of the dispute it guarantees. This is fundamentally crucial for businesses whose reputation and future success are primarily based on intellectual property.

+        Flexibility and better price

Arbitration brings with it the choice of jurisdiction, arbitrator, and language and by doing so ensures an impartial and neutral process. The chosen arbitrator would be an expert in the field. And in a technical and specialised field such as IP, it is important to have someone with industry knowledge to have the competence to decide the matter. However, in jurisdictions where the court systems provide experts in the IP field, this advantage of the arbitration system would not be that significant. What is more, sometimes the act of choosing the arbitrator could lead to suspicion of bias and unfair outcome.

It is also suggested that arbitration is a better option from a financial point of view and is less time consuming as well. The International Survey on Dispute Resolution in Technology Transactions concluded that survey participants spent significantly more time and had higher costs in court litigation than in arbitration and mediation. In US terms this means that in courts parties spent approximately three years and $475,000 while arbitration lasted only a year and cost around $400,000 (WIPO, 2013). However, linking this to my next point, often the length of the dispute could be a reason for the increased cost of arbitration. For example, sometimes it takes from six to nine months just for the arbitration panel to be settled.

+        Shortened procedure

Generally, it is said that arbitration is much faster than court proceedings and there is practical evidence for this as mentioned above. This is due to various reasons related to the characteristics of arbitration one of which could include one of its disadvantages, namely the finality of appeal.

And although it is assumed that arbitration is usually the faster dispute resolution method, there are some arbitration cases which have lasted so long that arbitrators retired and were replaced by their colleagues. This is because the longer the dispute, the higher the price.

These were the main reasons why parties decide to go ahead with arbitration. But one needs to be fully aware of the contra-arguments related to this method. The negative side of arbitration is related more to the consequences flowing from that choice of ADR.

-          Not necessarily that cheap and quick

At first arbitration may seem the better choice from a financial point of view especially if the court litigation is as pricy as in the UK. And in many instances it would be. However, as already mentioned, some disputes may last for so long so as to incur costs leading to bankruptcy of a business. Therefore, one needs to explore the options in detail, bear in mind this danger and consult with a professional as to what the impact for the business could be. And in the context of IP, where IP rights are all a business has as an asset, it is likely that the business gets in trouble simply because it is too difficult to evaluate IP rights and use them as a collateral for a loan for example. And it could end up in a situation where the business does not have the money to proceed with arbitration.

-          Finality of appeal

In contrast to court proceedings, arbitration does not give the parties an opportunity to appeal a decision. That is, the decision of the arbitrator is final and binding and that would be the end of the matter. This is of fundamental significance and should be acknowledged when the decision to agree to arbitration is taken. And the chances to be satisfied by the arbitrator’s decision are as high as the chances not to be. Therefore, one needs to balance the pros and cons and decide whether to take the risk.

To summarise this brief outline of pros and cons for arbitration, it is crucial to say that arbitration could be a double-edged sword. On the one hand, it could be helpful for your business especially where reputational issues are at stake. However, on the other hand, it could be a big risk to take especially for SMEs with small IP portfolios who may not be able to bear the eventual high cost of arbitration.