Tag Archives: Patents and Designs

What Impact Will Brexit Have On Your Trademarks?

How to be prepared and make the correct moves to protect your intellectual property position

The media is abuzz with talk and comment on the ramifications Brexit will have on commerce.   Much relates to transport, travel and currency with the impact this will have on the marketplace.   A vital area, not to be overlooked, is the effect Brexit will have on intellectual property rights, such as trademarks, from a business perspective.  It is important for businesses, including small-to-medium-sized enterprises (SMEs), to have some understanding, and strategy, that copes with the certainty, and uncertainty associated with its consequences.

There are a series of headings that need to be reviewed apart from trademarks so that the many businesses that rely on other types of intellectual property can prepare themselves.  The main elements that SMEs may encounter are:

Trade marks

Any person or company holding an EU Trademark (EUTM) must review its position in light of the UK exit. It may lose its protection in that market and may have to reapply.  Of course, the UK government might agree to some arrangement whereby existing rights will automatically transfer, with or without the payment of a fee, but that’s by no means a certainty.

Sufficient use

One aspect of this relates to the “use” requirement for trademark protection.  It has been the practice that, if a mark was used in, say, the UK and Ireland, that this should constitute sufficient use to enjoy protection in all member states.  When the UK leaves the EU, a business may have insufficient use of its EUTM elsewhere in the EU to meet the threshold requirement.  In such a case EU-wide protection could be lost.

Registered Community Design:

Like the EUTM, a Registered Community Design (RCD) provides design protection across the EU. That which can be protected is very wide-ranging indeed.  It includes furniture, bicycles, chocolates and, for example, decoration applied to such items or clothing and fashion items. After the UK leaves the EU, however, the RCD will no longer be enforceable in the UK. If an SME designs and markets any product – from high fashion to bathroom fittings – it will need to know how to protect the designs in the UK post-Brexit.

Domain names: .eu designation

If you are a corporate owner of .eu domain names, you need to review your domain name portfolio to ensure it is Brexit-proof. After the UK leaves the EU, it is not clear whether a UK entity will still be permitted to own a .eu domain name.  Busineses and companies with .eu domain names will need to identify such domain names in their portfolio and decide whether it will be necessary to transfer ownership into an entity placed within the EEA.

Contractual agreements:

 While the effect of Brexit on contracts generally is likely to be dealt with in the UK/EU Brexit agreement(s), in the context of IP, SMEs will need to know what effect Brexit will have on IP licences and agreements. For example, will a trademark licence for “the territory of the EU” include the UK after Brexit? If a settlement agreement with a competitor provides that they agree not to use brand X in the EU, will they be permitted to use it in the UK post-Brexit? It will also be important to ensure that any agreements or licences which are negotiated in the period leading up to March 2019 properly address the effect of the UK’s departure from the EU to minimize trading uncertainty.

Geographical Indications and Appellations of Origin

These terms relate to the geographic location used to designate the goods or services which originate from a particular region or place.  Champagne must come from that region in France while Feta cheese must come from Greece. It is not yet clear what effect Brexit is going to have on the extensive scheme of EU protections for geographical indications, which include Protected Designations of Origin and Protected Geographical Indications. Although some of these EU schemes are open to non-EU applicants, the “home” country must provide reciprocal recognition (we will protect your name if you protect ours). In the absence of mutual recognition, food producers could face competition from cheaper versions of protected names. That said, the law of passing off will still be available post-Brexit and the UK Courts are extremely unlikely to allow SMEs to use famous names like champagne or Feta in the UK after Brexit.

Patents

While Brexit presents a particular level of uncertainty in respect to some aspects of patent law, others remain unchanged.  Indeed, the good news for inventors seeking to protect their inventions in Europe, is that they may not need to adjust their filing strategies because of Brexit. Even after the UK leaves the EU, it will still be possible for inventors to obtain protection for their inventions in the UK by filing patent applications directly at the UK Intellectual Property Office. Because these patent applications (and eventual patents) are governed by UK national patent law, Brexit will have no effect on UK patents granted by the UK Intellectual Property Office.

Similarly, inventors will still be able to obtain protection for their inventions in other European countries by filing European Patent Applications at the European Patent Office, because the European Patent Convention (EPC) is not a piece of EU legislation and will be unaffected when the UK leaves the EU.  Existing European patents covering the UK are also unaffected by the Brexit decision.

 

Necessary Actions

There has been a huge increase in the number of UK trademark filings. For example, UK trademark filings by US applicants have jumped by over 150%, filings from China by over 175% and filings from Canada by about 100%.

Clearly, businesses are taking action now to protect their intellectual property (IP) rights rather than awaiting the outcome of the divorce talks between the remaining EU states and the UK. Many are pro-actively ‘Brexit-proofing’ their IP rights.

Although it is hoped that the divorce settlement will make provision for the re-registration of European Union Trade Marks (EUTMs) and of Registered Community Designs (RCDs) before the UKIPO, if the UK and EU were to fail to reach agreement all EUTMs and all RCDs would simply cease to have effect in the UK after 29 March 2019 (the day that the UK will leave the EU).

The potential loss of enforcement of your EUTMs or RCDs in the UK may have very serious consequences, so it may be an idea to review your position sooner rather than later.  The authors, Shireen Smith and Kieran Heneghan would be delighted to assist you with this.

 

 

How To Legally Protect Your Designs And Intellectual Property

The appearance of your website, logo, or products is of paramount importance for the success of your business.

Design registration is available to protect the visual appearance of a product, or aspects of it, such as its shape and packaging, or the surface decoration of goods. Even logos may be registered. Great design is an essential asset. Just think of the iPod or the Dyson vacuum cleaner. So, if you want to keep ahead of the competition you need to protect your creative innovations.

Design protection is often overlooked. However, it is a powerful tool to protect your market share and to prevent competitors from copying your ideas.

 

Although you automatically get some unregistered design protection, registering your designs gives you stronger rights.

One benefit of design protection is that if someone else is using a similar design you don’t need to prove that they copied your design. You can stop them using a similar design because your registration gives you a legal monopoly over that design for up to 25 years.

Fulton, the famous UK umbrella manufacturer, was able to put a stop to its competitors’ copying of its successful small rectangular umbrella thanks to design protection. Even small changes of the design were not enough to avoid infringing its famous design.

The images and drawings in your application identify the nature and extent of the design protection. As the Trunki case shows, the design application needs to be carefully considered by an expert if you are to get the scope of protection you need to stop copycats.

The registration process is straightforward. International conventions enable a single application to protect the design in numerous countries worldwide. The important consideration is whether your application will give you an adequate scope of protection, and for that you should seek professional help.

Why Embracing Change Is Crucial To Nailing Business

What Is A Patent And How To Patent Your Idea

What Is A Patent And How To Patent Your IdeaIf you want a legal monopoly over an innovation there is no better way to achieve it than a patent.

Patents help you protect your creativity against copycat “me too” offerings. They last for up to 20 years.

Patent protection excludes others from using or selling the subject matter of your patented invention. They are a powerful monopoly right provided the patent specification is well drafted. It mustn’t be easy to design around. So, drafting your own patent may not be such a good idea.

For product-based businesses, like Mandy Haberman’s Anywayup Cup, a patent is essential. As soon as manufacturers found out about her popular innovative baby cup they began copying it. Because she had a patent, she was able to put a stop to the copying. Otherwise, it would have been impossible for her business to compete against the big boys once they wanted to develop similar cups. Her patent was effective because it prevented other manufacturers designing around it.

 

How to patent your idea

Essential to patentability is secrecy. If you disclose your invention in public before filing a patent application, you lose your right to patent it. Steve Jobs made this classic mistake when he unveiled a feature of Apple’s then-new iPhone by saying “And boy, have we patented it.” In fact, the application hadn’t yet been filed so Apple lost the opportunity to patent that feature.

Although you don’t need to have a finished product in order to secure a patent, you need more than a mere idea. There are various requirements to patentability. For example, minor improvements to an existing product or process won’t secure patent protection. There is more information here on our patents page.

However a patent may not always be the right answer to protect your business. For example, a recipe like the Coca Cola formula was protected through trade secrets. By opting to keep the formula confidential rather than disclosing it in a patent application, Coca Cola has managed to keep its recipe a secret for over a hundred years. If it had opted for a patent Coca Cola’s patent  monopoly would have lasted just 20 years. By now everyone would have been able to freely copy the formula. This is a good example of how it is possible to protect an idea or concept through various intellectual property rights. So, it’s essential to take advice and be strategic about IP protection.

Brand Planning

Brand Planning – A Lesson Learned From A Golden Bear

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

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

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

Brands And Competition

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

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

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

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

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

The Portfolio

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

Brand Planning And Management

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

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

Enforcement 

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

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

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

Copyright Lawsuit

Copyright Lawsuit – “Happy Birthday” Song Copyright Claim Over

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

Copyright Validity

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

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

Copyright Lawsuit And The Ruling

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

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

Read the full BBC article.

3D Tradermarks

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

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

Why Have 3D Trademark?

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

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

Alternative Forms For Shape Protection?

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

Why Apply For A Registered Design?

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

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

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

Branding is IP

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

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

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

Trademark Infringement Case

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

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

Likelihood Of Confusion

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

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

What’s In A Name?

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

1) Distinctive Names

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

2) The Power Of A Name

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

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

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

Design Registration – YSL Wins Over H&M

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

Overall Individual Character Wins

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

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

YSL’s design:

YSL’s design

H&M’s evidence of prior design:

 

Brand Identity

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

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

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

Brand Naming In Overcrowded Markets

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

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

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

Brand Identity Lessons For Entrepreneurs

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

  1. Know Your Market And Pre-Empt Your Competitors 

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

  1. Do Your Research And Trademark As Soon As Possible

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

  1. Collaborate And Co-Exist

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

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