In this information-led economy, intellectual property is key. If you understand IP, and protect your assets strategically, the value of your IP could make your business far more valuable than the multiples of earnings figure might suggest. Consider the huge sums businesses like Instagram have fetched, and you’ll appreciate that owning an IP asset that is a strategic fit for a buyer means your business will be worth more.
If you ever plan to sell your business or want to attract investment, your intellectual property must be properly secured.
Companies of every size depend on their IP, even if it is not the core part of the business. For example, you will need to protect your business name and web presence even if you’re not aiming to be a major brand and ecommerce business. Doing so helps you avoid risks like discovering that someone else is using the same name and diverting business away from you, or receiving cease and desist letters or take down notices for using third parties’ IP. These actions can cause huge stress and worry to any business unlucky enough to be on the receiving end of them. The business you have built up over the years could be seriously damaged beyond repair by an IP dispute.
Businesses of every size and age need to protect, enforce and enhance their intellectual property. Whether its registration of trademarks as part of your brand strategy, licensing your copyright in creative works and software, or patenting a key invention before approaching investors, we have the knowledge and expertise to make sure your IP assets are secured.
Azrights has many years of experience in intellectual property. As lawyers with a strong digital bias, we can provide holistic and strategic IP advice, focusing on the bigger picture of your business and responding to the many challenges of the digital age. This way we can help you to harness the power of your intellectual property and add value to your business. We have a range of offerings tailored over the years in response to client needs. Our services are often fixed price offerings where you know in advance exactly what you will receive as part of the deliverables.
We would love to help you secure and protect your business assets and IP. If you’d like to talk to us about taking control of your IP assets so your business can grow, do get in touch for a no obligation confidential discussion.
There is a myth that securing IP protection is pointless if you lack the resources to litigate.
You’re actually much more likely to get into a dispute if you don’t register your rights than if you do. Owning registered IP rights can be a very useful bargaining tool if you find yourself threatened by a competitor.
Without such protection you are more vulnerable to successful legal claims against you. Also, third parties could more easily take unfair advantage of your creative efforts. A dispute with a competitor could even result in your having to rebrand.
Don’t let these simplistic myths put you off taking early preventative measures to secure your intellectual property. It is much better to assess your intellectual property position early on, whilst always weighing up the cost/benefit position of your registration strategy.
Unfortunately disputes relating to intellectual property may arise when your business has taken off and your IP has acquired value. Not protecting it could lay yourself wide open.
Take Plentyoffish.com, a well-established online dating site which had been operating for many years when PlentyMoreFish.com set up a competing online business based in the UK. Because Plentyoffish.com hadn’t applied to register its trade mark in the EU, PlentyMoreFish.com was able to secure a trade mark in the UK. Plenty of Fish was powerless to prevent customer confusion. Although PlentyofFish tried to oppose PlentyMoreFish’s UK trade mark application, it was unsuccessful. The UK company freely benefited from the reputation the established business had built up online.
You wouldn’t have the resources of a large company to resolve disputes so don’t expose yourself to litigation by not taking some basic steps to protect your IP.
If you want to ensure that your business is protected, whether by enforcing your rights or defending yourself against a threat of a claim read our blogs, and when you need some guidance get in touch.
Your product or service’s brand name is how you promote and advertise your business—and it’s what your customers use to recommend you.
Using a strong brand name, your business becomes better known and builds goodwill in its name.
It makes sense, therefore, to own the rights in the name.
You should check online and offline to see if anyone else is obviously using the name. If you don’t make sure that you can use a name, you may risk receiving a cease and desist letter one day.
If your brand name is available and is not purely descriptive—it would be wise to register the name as a trademark.
Here are six key points to help you understand how trademarks operate.
1. Similar trademark names are a problem
The main objective of trademarks is to avoid customer confusion about the source or origin of goods and services.
If you choose a brand name that’s already registered, it almost certainly won’t be enough just to make slight adjustments to the name (such as in the spelling or adding an extra word) to avoid the risk of a trademark infringement claim.
Look at the issue from the customer’s point of view. Without the protections of the trademark system, consumers wouldn’t be able to rely on finding products and services they liked in the past and want to buy again. (Or finding products and services they didn’t like and want to steer clear of!).
If competing brand names are too similar, customers can be confused and disappointed if they mistakenly purchase the wrong product or service.
The more distinctive your brand name, the easier and more affordable it will be to take action against anyone who tries to piggyback on your success.
2. Company and domain registrations are not enough
Owning a company name or a domain name does not automatically give you a right to own the trademark rights in that name for your business, or prevent others from using a similar name.
Even if you have registered the .com domain name and a limited company, you still need to check that you may use the name for your purposes.
Among other things, this means checking the trademark registers—definitely the UK register, and the EU register and possibly the registers in other countries where you intend to do business.
You may be able to use the company or domain name you’ve registered provided you don’t use it in competition with an existing business that has trademark rights in the name.
3. There is a difference between registered and unregistered trademarks
In the UK, it is not compulsory to register a trademark to use it as a brand name.
And small businesses can often view registration as an expense they can safely defer to a later date.
However, don’t be lulled into a false sense of security: your rights are much more limited if you don’t register your trademark.
Registering your brand as a trademark means you receive notice of, and can object to, a trademark application made by third parties for a similar name. And—as with a domain name—you always run the risk of someone else registering the trademark before you get around to doing so.
If you’ve been using a name for a long time without registering it, you may have built up sufficient rights in it to prevent another party using the same name on the grounds that they are ‘passing off’ their business as yours.
But it costs a lot of time and money to take action in these situations and you face all the uncertainties inherent in litigation.
4. Trademarks are territorial
Trademarks are registered on a country-by-country basis.
So, if you register a trademark with the UK’s Intellectual Property Office, it will give you the rights to use your mark in the UK.
If someone in another country used and registered the same mark, however, your UK registration does not give you the right to stop them.
At least until the legal ramifications of Brexit become clearer, the position in the UK is complicated by the fact that it’s possible to register a trademark—an EU Trademark—that is valid across all 28 member states of the European Union. If someone has registered an EU Trademark before you register a UK trademark, their EU registration would trump your rights.
5. Trademarks comprise certain categories of goods or services
It is possible for several businesses to share the same brand name as long as the businesses are not in competition with each other. An example, is Polo which is registered by separate businesses for cars, confectionary and clothing.
This is because trademarks are registered against types of goods and services. There are 45 classes in all and you can register a mark in several classes if your business activities cover more than one class.
The overriding consideration is whether the names cause, or might cause, confusion to customers and clients looking to buy products or services.
So, if your business makes ball bearings (covered by class 6) and you want to use a name that is already registered by a firm of accountants (covered by class 35), there’s a good chance that would be OK. However, if you were a business consultancy (also covered by class 35), the accountants would probably be able to prevent your use of the same name because that might be confusing to potential clients.
6. The most famous marks can be an exception to the classification rule
A very famous mark may enjoy broader protection than an ordinary mark, because of its widespread reputation or recognition.
Such “household name” marks are often not subject to the classification restrictions.
If you were to try to register Coca-Cola as a trademark—even if you only make ball bearings—the soft drink manufacturer would probably be able to prevent your use of the name.
The law recognises that registration in such circumstances is inappropriate because it would amount to taking unfair advantage of the mark’s fame and its use might have a detrimental impact on the well-known trademark.
To learn more about these and other issues you should consider before choosing your brand name, read my book Legally Branded.
Social Marketing Madness had registered domain names that included the words Facebook or Instagram along with generic terms like ‘buy cheap likes’.
Facebook brought the complaint before the World Intellectual Property Office’s Arbitration and Mediation Center. WIPO determined that the domains were registered in bad faith, because the domains were being used for commercial gain and there was no other possible reason for their existence than to mislead consumers and take unfair advantage of the goodwill of the marks.
What to do if someone has a domain name incorporating your brand name?
If you discover that someone has registered a domain name incorporating your brand name, you might want to recover the domain. It’s worth noting that if you have a distinctive name that you have registered as a trademark, it will be a lot less costly and much simpler to recover the domains than if you’re relying on unregistered rights. (The below video explains how to choose a name that can function as a trademark)
The starting point is to decide whether to use the court system by litigating in the courts or whether to initiate the dispute-resolution procedure available for the particular domain suffix. Each domain has its own dispute resolution procedure. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) – which for .co.uk domains is Nominet – allows the person claiming rights in a name to apply under the relevant Domain Registrant Scheme, for domains registered in ‘bad faith’ to be transferred or cancelled.
Two of the benefits of arbitration over litigation are that it is generally cheaper and faster. The fees for filing a dispute-resolution claim are lower and you will not need to go to the expense of legal proceedings.
However, the main limitation of using the dispute-resolution scheme is that if you are successful, you can only expect to get the domain name transferred to you. The tribunal does not have the power to award any monetary damages.
One of the benefits of litigation over dispute-resolution is that there are a large number of remedies available, including damages. It’s also possible to get an undertaking from the squatter not to register any names in the future that infringe on your trade mark rights. Additionally, cybersquatters often have to pay your legal fees too in addition to transferring the domains. A few years ago Microsoft took legal action against cyber squatters in the USA, UK and other EU countries, to recover its domains and claim damages.
How to win a domain name dispute?
To win in this type of dispute you will need to prove three elements, namely that:
you have prior rights in the name;
the owner does not have rights in the name; and
the domain name was registered and is being used in bad faith.
To initiate an action, start by collecting evidence. Are there references on the website to you or to your competitors? Check the whois facility to find out who owns the domain name.
Check the date when the domain was registered to the current owner. If they registered the domain name after you began your business, or registered your trademark the case is much easier to prove.
Once you file a dispute-resolution procedure or initiate court proceedings, the domain is locked so that cyberflight (whereby the registrant transfers the domain to a third party) is no longer a serious risk.
As mentioned, to succeed in a domain dispute, it helps to have a trademark registration. This can make short work of the requirement to demonstrate rights in the name. Otherwise, you will need to establish that you have goodwill in the name.
If the domain name you are using for your brand is purely descriptive, there is little you can do to stop others using a similar domain name.
The message to take on board is that having a distinctive name which is protected by a trademark is an absolute essential in the digital economy. If a name isn’t descriptive, and is legally available, it means you can protect it and have exclusive rights over it. This makes it easier to have a unique online brand because 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
You don’t have to be a well known mark to be able to take action in the way Facebook has recently done.
Brand and trademark establishment is of central importance to any successful business. Maintaining a brand’s image is essential, and using trademark law to protect business reputation is an important component of that. One way of doing so is through opposition of trademark applications as demonstrated by a recent case between French retailer Lacoste and Polish clothing company ‘KAJMAN’.
The ruling of the EU General Court agreed with Lacoste’s view that there is a risk that the use of the caiman would cause confusion amongst consumers, resulting in a potential loss of prestige. The opposition against the Polish company’s application to register the sign for leather goods, clothing and footwear was therefore upheld.
Confusion can arise as a result of visual, phonetic and conceptual similarity. The Court agreed that from a conceptual perspective there was an average degree of similarity. However, visually, any such likeness was in fact very minor. Despite clear differences between the two logos, it was nevertheless necessary to appreciate the possibility of the public “recognizing and retaining a memory of the imperfect representation”. Considering that both ‘KAJMAN’ and Lacoste provide similar services the focus was on the risk that the two companies may in fact be perceived to be variants of one another.
Brand And Trademark Dispute
One of the arguments put forward by ‘KAJMAN’ was that allowing the Lacoste mark such extensive protection would result in an “unjustified monopoly” on all crocodile marks. However, the General Court was keen on recognizing the importance of being able to oppose a trademark registration specifically where there is concern over damage to a brand’s reputation.
It is interesting to note that this is not the first brand and trademark dispute in which the French company has attempted to seek exclusivity with regards to its use of the crocodile on the basis of potential confusion for its consumers. The longest lasting dispute involves Singapore based rival Crocodile International, with Lacoste attempting to assert trademark rights in China and, as of recently, in New Zealand.
In 2008, it further targeted a Gloucestershire dental practice on the basis that they registered the logo of a grinning reptile to be used on their welcome sign. Shortly after, clothing supplier Baker Street Clothing became another one of its targets after registering the mark ‘Alligator’. In both cases Lacoste was unsuccessful. The decisions were important in what seemed to be a move to limit the scope of the Lacoste trademark monopoly.
Judging from the recent victory over ‘KAJMAN’ however, it is clear that the French company remains undeterred and it seems that the Courts have begun to take on a more strict approach in what they deem to be potential trademark infringements.
For more details on the recent Lacoste victory see the article here.
A recent dispute involving Alibaba counterfeit goods has risen between Alibaba Group Holding Ltd and a US apparel trade group over counterfeit products. Despite the attempts of the ecommerce giant Alibaba to fight selling of counterfeit goods on both Alibaba and Aliexpress, a US company is calling to put Alibaba’s Taobao site back on its list of “Notorious Markets” for counterfeit goods.
As The Wall Street Journal reports, Alibaba has had for a long time to deal with complaints from brand owners about counterfeit products ranging from luxury brands to sportswear sold on its Taobao platform. From our experience, many small businesses face such problems and find them very difficult to handle unless there is professional help on their side.
Alibaba And Its Counterfeit Approach
Generally, Alibaba has been criticized for being too soft towards counterfeit sellers. As a result, Alibaba has launched a new English version of its counterfeit reporting system called “TaoProtect”. Although AliBaba has another platform called “AliProtect” which covers its other websites, TaoProtect has been developed exclusively for dealing with a range of Intellectual Property (IP) complaints such as copyright, patent and trademark infringement and unfair use of those IP rights. This reveals the scale of the problem as well as the serious steps conglomerates such as Alibaba take to ensure IP rights are effectively protected.
Complaint To Alibaba – Is It Effective?
With the launch of the English version of TaoProtect, UK and other Western European companies would be able to access easily the counterfeit reporting system. Alibaba’s US-based senior IP protection manager commented that “because the success and integrity of our marketplaces depend on consumer trust, we have comprehensive policies and practices in place to fight IP infringement.”
The improvement in their system comes partly as a result of the lawsuit filed against Alibaba by companies like Gucci and Yves St. Laurent. The suit was filed by Kering (the fashion house which owns these brands) last May. A US District Judge in Manhattan granted some of them an immediate order barring sales of goods on Alibaba.
Lexology commented that, generally, brand owners that have secured trademark registrations in China, the US and wherever else your business operates is the safest route to tackle online infringement.
However, users of the Alibaba platforms have complained about “the slow, sluggish, and confusing systems Taobao uses to process takedown requests” for offending listings.
Do You Have The Same Problem?
Many small-to-medium enterprises (SMEs) face counterfeit, trademark and copyright infringement issues. Therefore, if you need specific help, know that we have the experience of dealing with a variety of platforms in relation to trademark infringement and similar issues.
Rule of thumb for photo copyright is that photographers own copyright in any photo taken by them. A copyright lawsuit was filed in San Fransico, USA last week to determine ownership of copyright in a selfie taken by a monkey. The action was filed by People for the Ethical Treatment of Animals (PETA), and has attracted a lot of attention in the intellectual property (IP) world.
Apparently there is no language in the US Copyright Act limiting copyright ownership to humans. Jeffrey Kerr, a lawyer for PETA, said they have a very strong case. Michigan State University law Professor David Favre, on the other hand, commented that Peta “have a fair argument” but it would be “an uphill battle”.
It remains to be seen what the outcome of this interesting dispute will be and, in the meantime, many questions are left unanswered. Have animal rights gone too far? What impact could such a ruling have?
Let us know your thoughts.
For more details, see the Guardian’s article here.
A 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.
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.
3D 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.
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.
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).
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.