Brand name disputes occur all too frequently because the trademark registers are increasingly cluttered and it can be difficult to find available names. You may be found using a name for one purpose, but as soon as you use it for another purpose you could actually be facing a brand name dispute.
When you use a name or other brand symbol that someone else claims to have a better title to, or if you find someone using confusingly similar branding to yours and want to challenge it, you have a dispute to deal with.
As it is not widely appreciated that it is necessary to check the trademark registers before using a name, brand name disputes are one of the most common ones we see. For example:
A client secures their desired domain name, sometimes spending thousands of pounds, only to receive notice that its use infringes on someone else’s trademark rights. The rights to use of a name stem from trademarks not from domain or company name availability.
If a domain name is registered that is deemed to be a registration in bad faith, then you could be challenged to return the domain to its rightful owners. For example, even if you have managed to buy a domain name for the name cocacolaclothing.co.uk for your online clothing business it does not mean you are entitled to use that name to sell your line of clothing.
A logo is registered as a UK trademark, but an EU trademark owner believes it infringes on their word trademark and sends a cease and desist letter requiring the withdrawal of all products bearing that logo.
Sometimes someone may simply be using their own name in the business, but this may conflict with a registered trademark. For example, if your name is Paul Smith and you are a fashion designer, you would have a potential dispute to deal with if you decided to set up shop as Paul Smith, given that the trademark rights of the famous designer Paul Smith in fashion and clothing would block you.
Resolving the dispute
Brand name disputes usually take one of three forms:
Either the dispute is in relation to registered trademarks – these may involve opposition to a trademark application or a cease and desist letter threatening court proceedings.
Brand name disputes can also occur if someone is using a name but hasn’t registered it as a trademark. In that case, they would argue ‘passing off’ and possibly threaten court proceedings. Or if you have applied to register a trademark they may either oppose your trademark application based on their earlier rights or apply to cancel your registration if you have already registered the mark.
Domain name disputes – now whether or not the brand name is a registered trademark, and no matter how strong or weak your position may be, the starting point for addressing any brand name dispute is to get specialist advice so as to decide how best to respond.
You may need to change your name and will need to use someone who both understands brands and names. It is so important to use a trademark expert who ‘gets’ branding rather than simply asking a brand agency to help you. Leaving the legal dimension till after the choice has been made could expose you to a further dispute, or leave you with a name that can’t uniquely belong to you.
If you’ve ever received a notice from the trademark registry notifying you that someone else is applying to register a similar mark to yours, or that there is already a registered trade mark similar to the one you’re applying to register, then this post will be of interest.
Essentially, when anyone applies to register a trademark, no matter the country in which the application is made, the process involves the trademark registry to which the application to register a trademark is made, to conduct a search for conflicting marks as part of the official examination of the application.
The examination will be assessing whether the trademark is one that is capable of being registered, and whether there are any confusingly similar marks already on the register, among other things.
The approach registries take worldwide does differ in the details, albeit at high level they all adopt the same general approach. Particularly, noteworthy is the difference in approach between the US, UK and the EU if similarity is found to exist.
So the specific standard itself as to what is confusingly similar is defined by a vast body of law and varies from jurisdiction to jurisdiction, as does the position the registry will adopt if it decides that there is a likelihood of confusion.
Hypothetical Consumer The essence of the likelihood of confusion test is whether consumers encountering one trademark are likely to be confused with a different trademark. This is not to say the consumer feels puzzled or befuddled or the like. Usually the consumer referenced in this body of law is a hypothetical consumer who would be completely unaware that two different companies are using the similar/identical mark. What’s more, the hypothetical purchaser is not expected to make detailed, side-by-side comparisons, or to have perfect recall.
Thus, trademark confusion means the hypothetical consumer is presumed to believe the two trademarks belong to the same source. And with likelihood being incorporated into this standard, a court or the Trademark Office must merely decide that the propensity for confusion is strong enough to warrant elimination of the newcomer’s use of the mark.
Thus many trademark infringement lawsuits proceed without a shred of evidence of any actual confusion. Of course, evidence of actual confusion would be very influential to the outcome.
Trademark Examination So when an application is received, the trademark examiner conducts a search of its own trademark office’s records to assess whether there is a conflict between the mark being applied for and a mark that is either registered or pending in its trade mark registers. The principal factors considered in reaching this decision are
• the similarity of the marks and, • the commercial relationship between the goods and services identified by the marks.
To find a conflict, it is not required that the marks and the goods or services be exactly the same. It’s often sufficient if the marks are similar and the goods and or services are related such that consumers would mistakenly believe they come from the same source.
A similarity in sound, appearance, or meaning may often be deemed sufficient to support a finding of likelihood of confusion in the USA, UK, EU and many other registries.
Note that names that sound the same, albeit they may be spelt differently are deemed similar. Also, where two words look similar then they will be regarded as conflicting even though one may just be a word on its own, whereas the other may be a stylised mark.
In the US where two marks have the same meaning because one uses a foreign language they are deemed similar – so LUPO and WOLF. Another surprising aspect of the US approach is that if two marks create an overall similar impression they will be deemed similar – so City Woman and City Girl are similar because they create a similar mental reaction.
More commonly, if two marks use a similar device mark they will be deemed similar even though one may contain a word and the other only the design.
However, a likelihood of confusion will exist only if the goods and services the marks will be used on are, in fact, related.
To decide whether there is relatedness, (what we might call a cross class conflict in the UK), between goods or services, it is sufficient that goods and services are related in such a manner that consumers might mistakenly assume they come from a common source. So, goods within the same category or class – such as Hats and Tshirts and pants, or Banking Services and Mortgage Lending services – would be a problem under US law. (Their laws require a very narrow specification of goods and services, so the applicant would have to list just the item of clothing it intends to sell or does sell under the mark).
Likelihood of Confusion Exists When the examiner believes that a conflict exists between the applicant’s mark and a registered mark, he or she will refuse registration of the applicant’s mark on the ground of likelihood of confusion. If a conflict exists between the applicant’s mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant’s mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.
Therefore, in the USA it’s more critical to conduct a search for conflicting marks before filing an application, as the existence of a mark that is confusingly similar to yours and used with related goods and/or services may bar registration of your mark.
Many common law countries have the same approach. So, for example, in Australia it would be necessary to obtain consent from an existing trademark owner in order to secure registration if the trademark office raises such an objection, even where the two marks could in fact co-exist without confusion, and the existing registrant is willing to give consent.
The position in the UK and EU The UK had the same approach but this changed as a result of its membership of the EU. Now, in both the UK and EU the office does not prevent another trademark applicant from registering its mark, even if it’s exactly the same mark for the same goods and services. The onus is on the existing trademark holder to decide whether to object to the newcomer’s application. Where the trade mark office find a similarity between two marks, it will simply notify the existing trademark owner through its representatives, and then it’s up to you whether the applicant secures its trademark.
You are supposed to police your own trademark registration, by deciding whether any similar marks that others are applying to register should be allowed through to registration or not.
It is cheaper and simpler to stop a registration getting onto the registers than it is to apply to cancel it later. For one thing the other party may simply withdraw its application, or may abandon use of that brand due to the delay caused by your opposition to their application.
You don’t have to oppose though. If you don’t oppose but later decide that the registrant is a problem, for example, because there is actual confusion in the market, then you would be able to apply to cancel the registration.
Conclusion We are receiving an increasing volume of search notifications from the UK and EUIPO offices, so even if clients opt not to have a watch service, their marks are in fact watched to some extent anyway. However, there are particular rules within each office as to which trademark registrants will be notified. For example, the UKIPO does not notify the holders of EU trademarks of a conflicting UK trademark application, so that registrations that do in fact conflict with existing marks that apply in the UK are getting through to registration.
The presence of a confusingly similar trademark is not desirable from anyone’s point of view so it is worth paying attention to the applications that are being filed by others. Often the similarity will not be a concern, but occasionally you might want to nip something in the bud sooner rather than leaving it to fester and grow into a more difficult, expensive dispute down the line.
In my previous post, I looked at the issue of protecting your blog content and identity. This blog briefly looks at some of the issues concerning the inclusion of other people’s materials in your content.
As I mentioned in the last blog, as a blogger you need to look in both directions when it comes to intellectual property (“IP”). In particular, you should ensure that what appears on your blog – be it text, photos, or comments – does not infringe the IP rights of someone else.
Before you launch your blog, with your new blog identity, you should carry out trade mark searches to make sure your name, tagline and logo don’t infringe the registered trade marks of another person or company.
Public domain and copyright
Moreover, make sure the contents of your blog presence don’t infringe someone else’s copyright. Content is not necessarily in the public domain just because it is freely available to access on the Internet. Unless you have created the content yourself – for example, taken that photograph yourself – you cannot assume that it is not protected by copyright. In fact, you should usually assume the opposite.
Most content is protected by copyright and that copyright will only expire 70 years after the death of the author. While it’s true that there are exceptions which permit some use of protected material – fair dealing in the UK or fair use in the United States, these are limited in scope, as you will see below.
Use of stock images
These days, with search engines like Google, there are thousands of images online for bloggers to use in their blogs. However, make sure your use won’t infringe copyright by checking the terms of the sites you’re using. Do the licence terms cover your blog? For example, if you may only make non commercial use, and do have promotions or otherwise make your blog pay, then don’t download from a site that only allows non commercial use as doing so may well amount to unauthorised reproduction contrary to copyright law.
Fair dealing of copyright material
What happens if, as a blogger, I want to use material such as photo from a news event, or if I want to quote from an article, or book or even if I want to parody such material?
Well, assuming that the content you want to use is protected by copyright (which is likely), the general position, at least in the UK, is that the reproduction of a substantial part of a work amounts to copyright infringement. What constitutes a “substantial part” is a complex and large topic, and will differ in each case as everything depends on the particular facts. So, let’s not get bogged down here with the somewhat tricky issue of what amounts to a “substantial part”, and instead look at what the law permits by way of certain limited exceptions which constitute fair dealing in the UK.
Although there are a number of fair dealing exceptions, only a few are likely to be relevant to bloggers. These include (a) criticism and review, parody and quotation, (b) reporting of current events, and, (c) incidental use (which is not strictly fair dealing but convenient to mention here).
If you reproduce part of a copyright work – let’s say an online article – in order to criticise or review that work or another work, your use may qualify as fair dealing under the law in the UK. This same law also protects you when you feature a quotation of a work. However, it’s important to note that you may not freely reproduce a work if you want your use to be “fair”. So, reproducing an entire article on your blog is unlikely to be fair dealing. And the exception applies only to published works. Moreover, you must normally also include a sufficient acknowledgement of the original work.
The law in the UK also provides for fair dealing of third-party copyrighted material for the purpose of reporting of current events. However, photographs are excluded from this exception and so you cannot download and reproduce a photograph for the purpose of news reporting on your blog. While it might seem obvious, the events must be “current” and you must normally include a sufficient acknowledgement.
A blogger may also make incidental use of another’s copyright work without infringing copyright in that work. However, the law in the UK expressly excludes the deliberate inclusion of another’s music or lyrics. For example, you cannot add a song in the background of a video clip and claim that your use was incidental use if the song owner objects: it is not incidental use in this example because the music was included deliberately.
Creative commons licences
The last decade has seen the rise of open access forms of disseminating works known as Creative Commons (or (“CC”) licences. These provide for standard-form licences allowing members of the public to reuse a work in particular ways. Creative commons have sought to develop a suite of licences for many types of works.
The CC licences offers copyright owners a suite or menu of terms for using content. Some of these only allow reuse in an unmodified form. Some only allow reuse with attribution. Others only allow reuse for non-commercial purposes.
While CC licences have become extremely popular in recent years, the most common kind is the “attribution, non-commercial, non-derivative works” licence which only allows the user to reproduce, distribute, or play the work in a non-modified form, only for non-commercial purposes and with attribution of authorship. As a consequence, CC licences are generally better suited to users who do not seek remuneration from copyright.
Using other’s logos or trade marks
A question that often arises is to what extent people may include the brand logos or trade marks of others in blog content. In terms of logos – say, logos of famous companies such as Virgin, Barclays, or Coca Cola – the best advice is: “don’t” because most of brand logos are usually protected by both trade mark registration, and copyright. This means that any reproduction by you on your blog of another’s brand logo is potentially copyright infringement.
In contrast, the mere reference in your blog to a word trade mark – such as “BARCLAYS BANK” or “GAP” – is unlikely to amount to trade mark infringement. This is because, generally speaking, names do not enjoy copyright protection. Also, trade mark infringement is based on consumer confusion and so a mere reference to BARCLAYS BANK in your blog is not necessarily going to confuse your readers. That said, if your use is such that the relevant consumer might be led to believe that your blog is somehow connected to or supported by Barclays Bank, your use could potentially amount to trade mark infringement. So, when in doubt stick to merelyreferring to their brand names and avoid using other’s trade marks in such a way as to cause consumer confusion.
So, now that you have some basic insights into the IP laws, happy blogging!
These days, any of us can be a blogger. All you need is somewhere to post your content, and an interesting angle on life – be it sports, politics, travel, food, music, you name it – you can blog your perspective on it. What’s more, you can attract a worldwide audience of thousands or even millions.
However, as well as a web presence and a flair for writing, you should also develop an awareness of intellectual property (“IP” for short) and its impact on your blogging activities.
IP is essentially about protecting our intellectual creations, and that includes of course our blog entries. But whatever A has protected, B may infringe. So, when we consider blogging and IP, you need to look in both directions: how can you, as a blogger, protect your IP and also, how can you ensure that your blog does not infringe the IP of others? Here today we look at “A” – what you have protected. In next week’s blog, we look at “B” – avoiding infringing what someone else has created or protected.
While IP embraces a bundle of different rights, in this blog we are going to briefly look at the two most important rights for bloggers: trade marks and copyright.
It really is amazing that some bloggers enjoy a huge reputation online and yet they have never protected their blog identity by means of trade mark registration. For example, it seems that Turner Barr – about whom I say a little below – of “Around the World in 80 Jobs” fame, did not file a trade mark application until after he had settled what is probably one of the most high-profile IP blog disputes to date. It’s an unfortunate fact of life that many people take IP for granted until some issue crops up, and then they really value their IP and wish they had better protected it at the outset.
Blogs Are Global – Trade Marks Are National
Blogs, being online, are global in nature. They don’t respect national borders which can make trade mark protection, which is generally national in nature, potentially complex. However, it’s advisable to file to register your blog name and blog identity as trade marks at least in your home country. In trade mark law there is something known as the “priority filing system” which enables you to apply to register your trade mark elsewhere in the world within 6 months of your initial home filing and maintain the original filing date.
Let’s turn to copyright. Copyright arises automatically as soon as your writings, photos, music or other creations are fixed in a recorded form. For example, as soon as you save your blog entry on your computer, it is protected by copyright as a literary work. Similarly, as soon as you take a photograph on your mobile phone, it too can be protected as an artistic work.
As for your blog content – such as your blog entries, photographs, music etc– it’s advisable to always keep a dated record (for example, in your computer files) in case you should ever need to prove that you created the work, and on what date you did so.
Although Internet Service Providers (ISPs) are not liable if another person takes your blog material and posts it elsewhere online, you still have options. For example, if the infringer refuses to take-down the lifted material, you may be able to achieve that result by filing a take-down notice with the website provider. Social media companies such as Facebook have well-established take-down procedures by which they will remove infringing content on proof that it infringes your IP rights, including your trade marks and copyright.
So what about Turner Barr mentioned earlier? Turner created a highly-successful blog called “Around the World in 80 Jobs” which recounted his experiences as a young millenial in obtaining sometimes strange and wonderful jobs around the globe but which also provided information and advice to young people about gaining employment. In 2013, Swiss employment company Adecco produced their own version of his blog, and they filed trade mark applications in various countries for “Around the World in 80 Jobs”. Happily, all’s well that end’s well. After a sustained campaign on social media, Adecco agreed to drop its version of “Around the World in 80 Jobs”, and withdrew its trade mark filings.
If this pressure from social media hadn’t happened, then it would not have been at all straight-forward for Turner. The right approach is to always file to protect your blog presence as a trade mark before disputes arise such as Turner’s with Adecco.
So, in conclusion, if you blog you have IP. Make sure both to protect your blog IP, and avoid infringing the IP of others. In the next video, we will have a look at some of the issues surrounding use of the material of other people in your blog and how to avoid common mistakes.
While every agency understands how to use the creative process to create a brand name, few understand the legal implications of choosing one name over another.
Turning an idea into a business involves creating intangible elements like names. As these are governed by the law of intellectual property it means you are creating intellectual property.
Specifically, trade mark law protects names, and so one implication is that you need to choose a name that meets the requirements of the law.
To fully understand the impact of getting this right on both the agency and client side, it is worth reflecting on what value a brand brings to a business.
Value of a brand
A brand name is of the most valuable assets a business will have.
According to Forbes, the most valuable brand name in the world in 2017 was APPLE. It was worth $170 billion. GOOGLE takes second place, at $101 billion and MICROSOFT in third place, at $87 billion. Three words – APPLE, GOOGLE, MICROSOFT together are worth about $360 billion.
Just think about that for a moment. The world’s top three brands are worth many times the average country’s entire GDP (or annual economic output). That’s the value of a good brand name.
Based on the value of the world’s biggest brands, a good brand name needs to be:easy to pronounce and spell
• one that works internationally
• one that copes with business expansion or change of direction.
• one that is legally available
The final point is most important here.
The trade mark registers are cluttered, and the best .com domains are often already taken. Therefore, choosing a name invariably involves doing some due diligence.
An agency tasked with creating a name should really put forward a shortlist of 3-6 names for full legal clearance if the client is to stand a chance of finding one name that it may use.
Getting this wrong may not just mean the trade mark application is thrown out. The client may find itself on the wrong end of an enforcement action by another business whose trade mark is being infringed.
A name that infringes on someone else’s mark leaves the client with little choice but to rebrand. Some clients might sue an agency that created the identity for them, or require a free rebrand. Quite apart from the reputational damage for the agency, a name that the client can’t use would prove as problematic for the agency as it would for the client.
Not only is it worth getting this right to protect your agency, it also offers you an opportunity to deliver certainty and differentiation from other agencies who are less aware of the consequences.
An agency’s responsibility when creating a brand identity
When a client engages the services of a branding agency to create an identity, that agency is an adviser, and as such, is expected to understand the surrounding law.
While the agency might tell a client that certain actions that are required to clear a name for use should be undertaken by lawyers, it’s not possible to completely absolve itself of responsibility simply because some of the work involved in clearing a name is done by lawyers.
There are two levels of checks for brand names that should be undertaken:
1) Basic preliminary checks – often these do not require a lawyer and can be done through simple searches
2) Full clearance searching – in most cases done by lawyers
I’m of the view that while lawyers are always best placed to undertake full clearance and this is clearly the responsibility of the client, basic preliminary checks can and should be performed by the agency as part of the process of developing names.
This seems not to be the prevailing view.
One designer recently said to me that she does not believe she is responsible if a client of hers has problems with a name she selected for the client and the client decided not to register the name as a trade mark. According to this designer, if the client chooses not to trade mark the name then it’s the client’s fault if it later transpires there are problems with the name.
Quite apart from the fact that registering a name as a trade mark in no way helps if the name is not available to use, I have deep problems with this view. Protecting a name isn’t just about registering it as a trade mark. It’s more about checking that the name may be safely claimed.
If an agency is entrusted with creating a new brand identity, it’s reasonable for the client to expect that you will offer up names they have a fighting chance of using. This means doing some of the trade mark searches yourself, albeit leaving the full clearance searching to the lawyers.
While specialist full clearance searches might be left to the client to arrange with its own lawyers, any business choosing a new name for its clients does have a responsibility to ensure the name is legally available.
Understanding the legal requirements is essential if the selected name is to stand up to legal scrutiny. There are a number of searches that agencies should and could perform on a name – beyond a simple Google or .com search, which is often all that is done. If you fail to provide names which don’t even stand up to the most basic legal scrutiny, what is the client paying for when it pays to have a name created?
And, importantly, how does that reflect on your agency if a problem later arises?
The client’s responsibility when protecting their brand identity
Many clients don’t ask lawyers to do full clearance searches before applying for trade mark protection simply because they don’t realise this is an essential step in the process, rather than an optional step.
As clients frequently choose to not do further searches on names, (possibly because they have spent all their available budget on the brand identity work), it’s even more important for branding agencies to do “good enough” checks of names before proposing them to clients. Otherwise, what’s the point of branding a name the client can’t own? It would be building their business on a foundation of sand.
On one occasion when we were provided with a shortlist of six names by a designer, we found that the most basic search of the trade mark registers knocked out four of the names immediately. So, effectively, the client only had two names to choose from, and they were not the first choices on the list.
I hate to think what might have happened if the client hadn’t asked us to do clearance searches on the names. It might have gone with one of the names that were infringing with all the associated problems and risks.
This is why I would urge agencies to learn how to do some basic checks of the trade mark registers whenever they are creating a new identity for their clients. Indeed, a good agency should also perform its own checks on a name the client proposes using, even if the agency didn’t choose the name.
Again, it’s important to remember you’re not protected simply by virtue of registering a trade mark.
Taking steps to protect intellectual property
The identity of any well-known brand comprises a variety of elements. Trade mark law encompasses the name, and also any taglines, slogans, logos, designs, product shapes, sounds, smells, colours, and other features that distinguish a product or service from its competitors.
Bear in mind that whenever you turn an idea into a product or service you’re also creating intellectual property assets. Copyright law is highly relevant in brand creation. Therefore, copyright and other intellectual property issues need to be top of mind in the early stages of identity creation.
However, the primary identity of any successful brand is inevitably in its name. Protecting the future value of a business involves protecting the name, and also taking account of IP as a whole.
An agency should create internal processes to ensure names are properly checked out before any short list of names is offered to the client.
There are three steps that any business should take to protect its intellectual property if it is to build value, and avoid disasters such as the need to change its identity.
Imagine having to rebrand due to problems with a name or copyright work. While this might seem unimaginable for the likes of the world’s top brands, problems around names and IP can affect even them.
For example, Microsoft had to rebrand after being ordered to do so by a UK court for infringing on a trade mark owned by British Sky Broadcasting Group (BSkyB).
The value and safety of your own and your client’s intellectual property is more important than ever before. Do it right and the intangible assets you create could be worth far more than the cost of producing them. Do it wrong and you could miss vital opportunities, have your true value stolen or find yourself on the wrong side of an intellectual property dispute.
To find out how to protect your own agency’s intellectual property and that of your clients register your interest to learn about IP Fundamentals including the Azrights Naming course.
A recent decision of the EU General Court highlights the potential dangers of adopting brands which mimic the “look and feel” of famous brands without using the same word mark or primary device feature.
In this case, Hasmik Nersesyan, a business in Belgium, filed an EUTM application for the above figurative mark featuring the words COFFEE ROCKS within a black and white circular disk device in the centre of which is placed a musical note, the end of which has the shape of a coffee bean. That coffee bean shape also appears in a much smaller size on either aside of the ring within the disk. The EUTM application sought protection for coffee services in trade mark class 43.
When the EUTM application was published by the EUIPO, it was opposed by Starbucks on the basis of a number of its earlier EU and UK trade mark registrations, including its well-known STARBUCKS COFFEE device mark, shown above. Starbucks’ earlier registered marks are protected for identical coffee/cafe services.
Opposition Division of EUIPO
The EUIPO Opposition Division rejected the opposition on the basis that the marks of both sides were dissimilar. This decision was upheld on appeal by the EUIPO Board of Appeal. Now for a brief word on the legal nub of this dispute.
Under EU trade mark law, in order to win a case in which the claimant argues that there is a likelihood of confusion between two marks, the claimant must first show that the marks in question are either identical or similar. It doesn’t matter how famous the claimant’s mark or how similar the products or services may be unless you first show that the marks are identical or similar. If the marks are held to be dissimilar it is “game over”, so to speak, for the claimant. The same approach applies too for the separate legal claim that the defendant’s mark takes unfair advantage of or damages the reputation of the claimant’s famous mark: unless the marks at issue are identical or similar, the fame or unfairness of the defendant’s conduct is irrelevant.
As a consequence, in order to win trade mark cases in the EU, including involving EUTMs, it is vital to win the argument that the marks at issue are identical or similar. Let’s get back now to the decision in STARBUCKS/COFFEE ROCKS.
Board of Appeal of EUIPO
Perhaps not surprisingly, when the EUIPO Board of Appeal looked at the marks in question, it concluded that the elements in common – the word “COFFEE”, the circular device shape, and the similar font type – was not enough to make them similar. It took the view that the overall impression given by both marks was dissimilar. This is because it decided that the main elements of both marks were different: different as to the word elements STARBUCKS COFFEE/COFFEE ROCKS, and the figurative elements: a mermaid versus a musical note.
Starbucks Appeal to EU General Court
However, when Starbucks appealed to the EU General Court, they succeeded in overturning the decision that the marks were dissimilar. Suddenly, dissimilar marks were declared similar!
The General Court agreed with Starbucks that despite the fact that the word marks (STARBUCKS COFFEE v COFFEE ROCKS) and figurative elements (mermaid v musical note) were different, there were nevertheless some similarities between the trade marks. These were: the overall general appearance (based on the the same colour and shape), the fact that the word “COFFEE” was in common, and even the fact that there was some phonetic similarity between the word elements “BUCKS” and “ROCKS” (which might seem a little far-fetched for English speakers).
As a consequence, the General Court decided that the EUIPO Board of Appeal was wrong to have ruled out even a low degree of similarity between the trade marks. It therefore has sent the case back to the EUIPO to consider Starbucks’ claims of confusion and unfair advantage in light of its finding that there was at least some similarity of marks. We shall have to wait and see what the EUIPO Board of Appeal decides after it has taken in to account these findings of the EU General Court.
Point of interest
Although this legal ruling does not break new ground, it is a warning to businesses that might be tempted to mimic a famous brand as part of their own branding. Although the defendant in this case – Hasmik Nersesyan – might have assumed, perhaps reasonably, that by avoiding any reference to the word mark STARBUCKS or the mermaid device, and instead merely using elements such as general shape and font style which reflected the STARBUCKS registered marks, he would avoid a trade mark conflict with Starbucks, this decision of the EU General Court demonstrates that even just a low level of similarity between trade marks might be sufficient in law to lead to a finding that two trademarks are similar.
What, to the average consumer, might be regarded as dissimilar will not necessarily be the same in a trademark dispute before the courts or the trademark registry.
The take-home point here is clear: before you use or apply to register a trademark which arguably mimics a well-known or famous brand, even only as to background or general features, you should seek professional advice as to whether your brand might lead to a conflict or dispute with the earlier mimicked brand.
Here at Azrights, we have the expertise to advise you as to the clearance, protection, and enforcement of your brands.
A very recent decision of the EU General Court highlights the potential power of marks which enjoy a reputation even if the claimant in this particular case suffered a temporary setback before the Court.
A normal registered trade mark entitles the owner to object to the use or registration of a later mark where the marks are either identical or similar and the goods or services are either identical or similar such that the relevant consumer would be confused into believing that there was a connection between the marks – in short hand usually referred to as the existence of a risk of confusion.
An important threshold for success is that the goods or services must be at least similar to some degree. If there is no similarity, there cannot be a risk of confusion, even if the marks are identical or highly similar. For example, according to EU trade mark case law, wine glasses and wine are dissimilar products. Accordingly, even if the marks were exactly the same, the owner of the wine brand cannot win a claim based on a risk of confusion against a wine glass producer who uses the identical trade mark because the Court will say that the goods at issue are dissimilar.
Likelihood of Confusion Test Works Well
Generally, this approach works well because it makes sense to say that consumers are not likely to be confused where there is no similarity in goods or services. If I register my trade mark for, say, recruitment services, I should be entitled to prevent another business owner from using the same or similar mark for recruitment services or similar business services but there is no good reason why I can claim that consumers will be confused if another business uses its mark for different goods or services such as, say, custard or electric lamps.
However, the owner of a mark with a reputation enjoys a potentially much broader scope of protection. In fact, depending on the strength of its reputation, it can prevent the use or registration of a later mark for completely different goods or services. This gives the owner of a mark with a reputation a potentially powerful weapon in the enforcement of its intellectual property rights.
Let’s go back now to that recent General Court decision.
The Polish firm PP Gappol filed an EUTM application for a figurative mark featuring the word element GAP Pol for furniture in class 20, clothing and related items in class 25 and furniture repair in class 37.
GAP Objects to GAP Pol
Gap (ITM) Inc (“Gap”), owner of the well-known GAP retail brand filed opposition against classes 20 and 25 before the EUIPO. It relied on its EUTM registration of the word mark GAP which is protected for clothing, footwear, and headgear in class 25 and it claimed both a likelihood of confusion as well as unfair advantage by virtue of the reputation enjoyed by its registered trade mark GAP in the European Union.
At first instance, the EUIPO Opposition Division agreed with Gap that use of the figurative mark GAP Pol in relation to clothing products amounted to a risk of confusion and so it rejected the EUTM application in class 25. However, it rejected the opposition to furniture in class 20.
Both sides appealed to the EUIPO Board of Appeal. Gap Pol appealed the rejection in class 25 and Gap appealed the rejection of its opposition against class 20.
The EUIPO Board of Appeal upheld Gap’s appeal, agreeing both that there was a risk of confusion for clothing in class 25 and that Gap’s reputation in the EU for its GAP mark entitled it to succeed also against furniture in class 20.
In particular, the Board of Appeal accepted Gap’s evidence that it enjoyed a reputation under its GAP mark for clothing products in the United Kingdom. It went on to agree that use of the figurative mark GAP Pol would take unfair advantage of the reputation or distinctiveness of the trade mark GAP. It held that use of the mark GAP Pol would give PP Gappol an unfair advantage in the marketing of its furniture products in the sense that it could benefit from the reputation and image of GAP in order to enhance sales of its own furniture products. On this basis, the Board of Appeal upheld the opposition against furniture products in class 20.
Although Gap’s reputation under its GAP mark concerned clothing products, it succeeded before the EUIPO Board of Appeal in preventing the registration of the mark GAP Pol for furniture products, which are of course completely dissimilar to clothing. This was achieved because of the reputation enjoyed by the GAP brand.
Although the legal battle continued to appeal to the EU General Court with the result that the case was sent back to the EU Board of Appeal so that the EU Board can consider issues it should have dealt with but failed to. Namely, whether the GAP brand enjoys a sufficiently strong reputation or a sufficiently high degree of distinctiveness. In the meantime, the decision has been annulled.
We shall have to wait and see whether the EU Board of Appeal now decides that Gap enjoys a sufficiently strong reputation (or sufficiently high degree of distinctiveness) under GAP in the EU to win under the reputation ground of opposition.
The two important take home points here are:
if you can prove that your trade mark enjoys a reputation – especially by concrete documentation such as annual reports, news or magazine or online reports or other independent evidence – you can significantly widen the scope of protection of your intellectual property rights which can be a valuable tool in preventing another trader from taking unfair advantage of your trade mark, even for dissimilar goods or services;
in clearing a new trade mark for use or registration, it is important to take into account that if you choose a mark which is the same or similar to a well-known or reputed trade mark even in a different market sector, the owner of the well-known or reputed brand can potentially win a challenge to your registration or use.
It is always advisable, therefore, to consult an IP or trade mark professional like us here at Azrights whenever you are considering adopting a new trade mark. We can help to identify such potential obstacles to use or registration of your mark, including obstacles from sometimes unexpected sources, such as unrelated market sectors. MIND THE GAP!
The first thing you need to do when you have an idea for a new product, service, or business is to find a name for it.
It’s well worth consulting an expert in trademarks to help you choose a name, and to establish whether your proposed name is legally available to use, and most importantly, whether it is distinctive enough to function as a trademark.
Descriptive names are not capable of trademark protection. Think of Tesco’s Clubcard for example. Tesco has been unsuccessful in its bid to register Clubcard as a trademark for its loyalty card scheme because the registry considered Clubcard too descriptive. That means any business is free to use the name Clubcard for its loyalty card program.
If a name isn’t descriptive, then the next thing is to do some full clearance searches to make sure the name is legally available. At the least do these checks to cover your home market in the UK.
If the name is legally available it means you can protect it and have exclusive rights over it. However, registration alone is not enough because trade mark registrations can be cancelled if someone with better rights over the name objects to your registration.
Once it’s clear the name is legally available, it means you can have a unique online brand. If others are “passing off” your brand by registering your name as a domain, you are in a strong position to recover it from them.
What if you haven’t taken advice. What if you find you can’t use the name you’ve been using for the past 10 years for your company’s successful service, or brilliant product? Your business could suffer a substantial drop in revenues overnight.
When a business is unlucky enough to be required to rebrand the costs can be significant. You could potentially suffer a substantial drop in revenues, as it is not always feasible to redirect the old domain name to your new domain. That makes it more difficult for your former customers or potential new ones to find you when searching online. .
Trademarks reduce the risk of consumers being confused about the source or origin of goods or services they buy. So, be sure to get good advice before you start using a new name. Here at Azrights we have substantial experience in all things trademark related, so do contact us if you have a trademark issue you would like help with.
The announcement in October 2017 by the World Intellectual Property Organisation (WIPO) that the International Trade Mark system (usually referred to as the Madrid Protocol) has passed the 100 country-member mark is good news for brand owners. With Indonesia joining in January 2018, this means that three quarters of the 20-strong members of the G20 Group of leading industrialised countries will now be part of the system. Already, most of the world’s major economies are members of The Madrid Protocol, including the United States, China, India, Japan, and Russia.
By using the Madrid Protocol, a brand owner can make a single application in one language using one set of filing fees to protect its brand in one or more of these 100 countries or territories. To apply, you need to have made a trade mark filing in your base country. You can then file your International trade mark application before your base country’s Trademarks Office which will check details before transmitting it to WIPO in Geneva which in turn will transmit it to the Trademarks Office of each of your chosen countries or territories for full examination under their own national laws.
Advantages of using the Madrid Protocol System
The key advantages of using the International Trade Mark system are the potentially large cost savings. Instead of filing a separate application in each chosen country, which usually means retaining a local a lawyer or attorney, you can usually save thousands of pounds by using the Madrid Protocol system. There is just one renewal fee to be paid every ten years before WIPO. Moreover, if you make changes to your International Trade Mark, such as a change of owner, or change of name or address, this can be done centrally before WIPO without the need to apply to record the change before each individual Trademarks Office.
What does the heading above mean then, when it says that brand owners for the EU market are starting to look more to ‘Madrid’ than to ‘Alicante’ following the Brexit decision?
Since the decision of the UK to leave the European Union, many brand owners are looking to the advantages of the Madrid Protocol system over the European Union Trade Mark (EUTM) which is administered by the EUIPO with its seat in Alicante. This is particularly the case for UK brand owners as well as brand owners for whom the UK is its most important market within the EU.
Since its launch in 1996, the EUTM (or Community Trade Mark – ‘CTM’ – as it was known until 2016) has been hugely successful, with brand owners seeking protection of their trade marks in the EU. A key feature of the EUTM is that by means of a single filing before the EUIPO in Alicante, it is possible to protect your trade mark across the entire EU territory, currently comprising 28 member states (at least until Brexit happens in March 2019 when that figure will fall back to 27).
However, while the EUTM enjoys protection across the EU, it is also the case that, after it has been registered for 5 years, it is enforceable only to the extent that it has been put to genuine use in the EU. Recent court decisions have cast serious doubt as to whether use of an EUTM in just one EU state is sufficient for that purpose.
This poses a potentially serious problem for UK traders or brand owners for whom the UK makes up all or most of their business in the EU market. After Brexit, EUTM holders may no longer be able to rely on their UK trade in showing genuine use of their EUTM (especially in the long term, after any Brexit transitional provisions have expired).
Why Applying for an EUTM Via Madrid System Avoids Problems
In contrast, for brand owners using the Madrid Protocol system to protect their brand for the EU market, such potentially serious problems can be avoided. Even though the International Trade Mark system, like the EUIPO, requires just a single filing, the resulting trade mark protection remains on a country-by-country basis. It follows that the genuine use requirements for a registered trade mark under the Madrid Protocol are decided on a country-by-country basis.
In practical terms, this means that a brand owner who has chosen the Madrid Protocol system instead of the EUTM to protect his brand for the EU market, need not have any of the concerns about the potentially-serious impact of Brexit on the enforceability of EUTMs, at least to the extent that such brand owner is using its trade mark in the selected countries.
Indeed, recent statistics from the UK Trademarks Office (UKIPO) suggest that, in light of Brexit, many brand owners are likely to choose the Madrid Protocol system rather than the EUTM in order to secure protection of their brands within the EU market. In future, more and more brand owners are likely to look to Madrid rather than Alicante, at least when it comes to brand protection for the EU market.
Here at Azrights, we advise the full range of businesses and entrepreneurs about brand strategy, including how best to secure trade mark protection in light of the impact of Brexit. Please contact us if you want to know more about securing protection of your branding assets.
Could I potentially end up losing my European Union Trade Mark (EUTM) even though I am actively using it in business?
Following our previous blog What Impact Will Brexit Have On Your Trademarks? which outlined some of the possible effects of Brexit on intellectual property rights (IPRs), this blog explains the possible consequences of Brexit on the enforceability of EUTMs, zooming in here on the question of use.
Since its launch in 1996, the EUTM (previously called the Community Trade Mark, or CTM) has been hugely popular with UK businesses, including SMEs and sole traders. With just a single filing before the EUIPO (in Alicante, Spain), a business even as modest in size as a one-man band, could register and protect its brand across the whole territory of the EU.
EUTMS are good value
The official fees for registration of an EUTM start at 850 Euros for a single class of goods or services. Given that a registration provides protection for ten years across 28 EU member states (at least until Brexit), that works out at an average of just 30 Euros per member state! That is a large saving in costs when compared with the official fees payable at a national level. For example, the total official fees to register a trade mark in one class in the UK, France and Germany is about 770 Euros. Throw in Ireland as well and the filing fees are about 1025 Euros– four countries costing more than that of the EUTM.
It is easy then to understand why the EUTM has been so popular with UK businesses. But what about the impact of Brexit?
Impact of Brexit
After the UK leaves the EU, an EUTM will no longer be enforceable in the United Kingdom. Not only must a UK business that currently relies on its registered EUTM to protect its brand, need to secure protection of its brand in the UK, but it must also consider whether its remaining EUTM will still be enforceable.
Let’s leave to one side, for now, the issue of securing UK protection, and zoom in here on the remaining EUTM. Although registered for a period of ten years before it is due for renewal, after a period of five years, your EUTM is enforceable only for those protected goods or services for which there has been genuine use in the EU. For present purposes, the key point here is that you are required to demonstrate genuine use in the European Union. But does that mean in terms of geographic spread?
Back in 1996, the EU was anxious to promote the EUTM and so the EU Commission stated the view that use in just one EU state would be enough to enforce it. However, recent court decisions (of the EU Court of Justice and of the Courts here in the UK) have cast serious doubt as to whether this view is still correct. The better view now seems to be that use of your EUTM in just one EU state is not necessarily enough.
Brexit and the effect on “use” of EUTM
Let’s look at what this might mean in practice for UK businesses that protect their brands by way of the EUTM.
Imagine you are a business, based in the UK, selling all or nearly all your products in the UK and Ireland and you have protected your brand as an EUTM. At present, if someone else uses the same or a confusingly-similar trade mark for the same or similar products, you can object and, all things being equal, you will likely succeed. But what happens post-Brexit?
After Brexit, your EUTM will no longer be of any use in the UK and you will need to secure UK protection. Moreover, though, what happens if you should need to enforce your EUTM against an infringer trading in Ireland? Post-Brexit, in this scenario it is possible that only your sales in Ireland will support your EUTM (and this is likely to be so in the long-term). However, we have seen that there is serious doubt that use of an EUTM in just one EU state will be enough. In this example, if you should seek to enforce your rights against an infringing trader in Ireland, they might successfully counter-attack, cancelling your EUTM on the basis that your use in Ireland is not enough.
Suddenly, your hypothetical EUTM – which was supposed to protect your brand across the whole EU – could end up being unenforceable, and, even worse, it could end up being cancelled. So, you could lose your EUTM even though you are using it.
Take home point
The key take-home point here is that the combination of Brexit and the tightening-up of the rules about what amounts to genuine use of an EUTM means that businesses really need to review their trade mark registration strategy to ensure that their brands are protected and enforceable going into the future.
For some businesses with existing EUTM registrations, this review will mean that they will need to make national trade mark filings in order to secure their brand protection in the post-Brexit world. For other businesses, who want to protect their new brands in the EU/UK, they will need to consider making national trade mark filings instead of opting for the EUTM.
Here at Azrights, we advise the full range of businesses about brand strategy, including how best to secure trade mark protection in light of the impact of Brexit. Please contact the joint authors, Shireen Smith and Kieran Heneghan if you want to discuss protection of your branding assets.