If you are doing business in a number of different European countries then, rather than registering your trademarks in each jurisdiction separately, you will likely apply for protection at the European level.
This enables you, through a single application, to secure protection in all 28 countries (and counting).
Unless you only need protection in one or two member states, a European trademark is a far more cost effective, and straightforward solution.
However, it is not without its risks. While a trademark application in just a single country generally just faces the possibility of an objection from other brand owners in that country, a European Community Trademark can be opposed by an existing trademark owner in any one of the 28 member countries of the EU. This would then block the entire trademark.
So, how can you minimise your risks? The key is to commission professional searches to identify potential obstacles before you commit to a mark, and file your application. You might begin by initially looking at the UK and European trademark registers, before then expanding the search to the national registers of each EU country. International searches like this can be quite expensive, and offer diminishing returns, so it is important to discuss what degree of searching is appropriate with your legal adviser. It is never possible to eliminate the risks entirely, but through appropriate searches, you can improve your chances without blowing your budget. Your attitude to risk, and the funds you are willing to commit to searching, will generally depend upon how critical your brand is to your business.
But what if you do encounter a problem? That is not necessarily the end of the road. If your European application is opposed by a business with rights in just a single member state, the first step will generally be to negotiate with them, and see if it is possible to come to an agreement allowing both businesses to coexist. Under some circumstances, it might not be possible to reach an amicable settlement, in which case the European trademark courts may resolve the dispute. However, this can be costly for all involved.
If, ultimately, you do decide it is best to withdraw your application in that particular country, all is not lost as you are free to file national applications in those European countries from which you did not face an objection. However, there are no guarantees that those national applications would not face objections from other trademark owners.
A key issue when it comes to trademarks is what is known as the priority date. Typically, this is the date on which you file your trademark application, and the date from which your registration is effective. If you were to entirely withdraw your application following a dispute, and refile national applications, then you would receive a new priority date. However, it is possible to convert a European trademark application into a group of national applications, and retain your original priority date. An important advantage of doing so, is that your application will, broadly speaking, take precedence over others which were filed in the interim.
Still, converting a European application to national applications, or refiling directly in the relevant countries, can become very expensive as fees are payable in respect of each territory. So, where resources allow, it is best to carry out appropriate searches in advance. You can find out more about national, and international trademark registration on our dedicated website AzrightsTradeMarkRegistration.co.uk.
US social network Pinterest has lost grip of its European trademark rights
Social networking giant Pinterest lost its trademark battle against Premium Interest, a London-based news aggregation start-up, following a ruling by the European Commission Office for Harmonisation of the Internal Market (OHIM). The implications of the EU trademark office’s decision is that Pinterest could be forced to change its name in Europe.
Premium Interest, founded by Alex Hearn, filed for registration of its European trade mark in January 2012 – two years after Pinterest.com launched. Although Pinterest was active at this time, it had yet to formally enter the European market or even register its name in the US.
Pinterest tried to overcome its own lack of registration by taking advantage of a provision in the trademark regulations which protects well known marks. It argued that the Premium Interest application should be refused as it took unfair advantage of Pinterest’s reputation to register a similar name. However, in the view of the registry, Pinterest failed to prove it was well-known enough in the continent at the time of the registration.
Hearn’s legal representative, Mishcon de Reya’s Adam Morallee, said Pinterest will now have to change its name if it fails to obtain a licence from Premium Interest to use the name Pinterest. In the meantime, Pinterest remains defiant and is set to appeal the ruling. To win the case, Pinterest will need to demonstrate it had rights in Europe before Premium Interest registered its trademark. The site’s prominence in the US will not be considered.
This case highlights the dangers of not acting quickly to protect your brand name in the global marketplace. Indeed, Hearn has also registered its Premium interest trademark in other markets, including Australia.
A solid reputation in one country may be insufficient in a different jurisdiction if you aren’t the first to file for a trademark there, irrespective of the size of your business. This is of particular relevance to digital online businesses.
Given Pinterest’s reputation as a robust defender of its branding – from its Pin-it button, to its curvy P logo, and its discouragement of partners using variations of the words “pin” or “pinterest” as puns in their names – this is a serious blow to the social network.
The moral, as with so many trademark disputes, is to take action early to protect the investment in the brand by registering trade marks in your key markets. Pinterest is now set to face an uphill battle which, apart from the legal fees it has already incurred, will likely involve extortionate settlement fees or the costly and damaging requirement to rebrand.
When using photographs or images in a commercial context, getting an IP lawyer to assess the copyright situation is an obvious move. However, as the producers of hit TV show ‘Mad Men’ recently discovered, it may not be enough to check the copyright position. It may also be necessary to check whether there may be problems in using the identities of the persons represented in the image or photo that is being used.
Mad Men, an American drama set 1960s New York, follows the lives of protagonist Don Draper, and his team of high powered advertising executives, whilst simultaneously reflecting the darker sides of the American dream.The show has won numerous awards, including 7 Emmys, and famously counts Barack Obama as a fan.
However, for Lionsgate Entertainment executives, the dream recently turned slightly sour, as it emerged that Gita Hall May, a former actress and glamour model, was suing the show for using her image in the opening credits, without her consent. The image appears 11 seconds into the credit sequence, for a period of 2 seconds, and shows Gita’s face on the advertising board of an animated Madison Avenue skyscraper.
Although Gita had no claim over the image copyright, she objected to her face and likeness being exploited without her consent. The original photograph was taken by Richard Avendon for a Revlon hairspray advertisement. Gita May argues that she only consented to the use of her photographic likeness in thatparticular advert.
Ms. May, originally from Sweden, was allegedly surprised and angry to discover that, over 40 years later, her image had been “cropped from the photo, in secret, and inserted as a key element in the title sequence of a cable television series, without her consent and for commercial purposes.” Her legal team is demanding compensation, based on the value the image has contributed to Madmen’s revenue and profits. Clearly this will be a complicated calculation. But considering the show has now run for 6 seasons, spanning 70 episodes, across worldwide territories, any final figure may be lucrative for Gita May.
In the UK where the laws governing consent to use of images or photographs are less strict, the US rules which allow for individuals, whether famous or otherwise, “to protect against the misappropriation of their likeness” seem surprising. Essentially, this means that in the USA individuals can object to non-consensual use of their identities.
There is a still a slight caveat — likeness rights do not apply to all images featuring individuals, even if used in a commercial context. To qualify, the images must be used to represent an idea, product, service or thing. Thus in the present IP case, Ms. May asserts her rights over the image by arguing that its use in the Mad Men trailer is integral to demonstrating the authentic ‘feel’ of the show.
To expand this concept further, if for example, a photo was taken of an individual, and then used to promote a specific political party which the person did not want to be associated with, they could refuse to allow their likeness to be deployed in this way. Therefore, businesses should always be wary when using images to promote their interests, for example through product advertisements.
In the case of Mad Men, Ms. May only realised her image was being used, and consequently launched her IP claim, 5 years after the show was originally aired. This demonstrates how such claims can crop up at unexpected and potentially awkward times for businesses.
Lionsgate will undoubtedly feel frustrated that the issue has only emerged recently, when the financial stakes are much higher than say, in 2007, when the original pilot episode was aired. The moral of this story, is one can never be too careful when it comes to clearing IP rights.
Fifth Avenue Apple Store (Image courtesy of Wikimedia)
Trademarks can protect more than just a brand name or logo. Chocolate maker Cadbury successfully trademarked the shade of purple associated with the brand, while Coca-Cola famously managed to secure a trademark over its iconic Coke bottle. But, in typical ‘think different’ fashion, Apple has now gone a step further, and legitimately trademarked the physical layout of its popular retail stores.
Although not the first instance of a shop interior being granted a trademark, the news has attracted a lot of attention. The U.S Patent and Trademark Office twice rejected Apple’s efforts to trademark the store layout, before finally accepting a “distinctive design and layout” after additional documentation was submitted.
The stores are known for their sleek and uncluttered look. Apple reportedly spends an average of $10 million launching each individual store, usually located in carefully selected upmarket districts. Attention to detail is taken very seriously- the sandstone flooring is imported directly from Florence, while the late Steve Jobs even patented the minimalist glass staircases himself.
Apple’s new trademark covers the trade dress, and overall visual appearance of its stores in the United States. This encompasses elements of the store design, such as the “rectangular tables arranged in a line in the middle of the store” and “multi-tiered shelving along the rear walls”.
With so much investment to ensure the overall quality and unique identity of the Apple Stores, one can understand why Apple is so keen to prevent anyone else mimicking its stores. Competitor Microsoft recently launched its own retail store strategy, while Google has also unveiled plans to open retail stores in California. In fact, Microsoft reportedly acquired a trademark for its own stores in 2011, which covered “a retail store with four curved tabletops at the front and rear side walls and a rectangular band displaying changing video images on the walls”.
Another obvious reason behind Apple’s move is to protect itself against the cheap ‘copy-cat’ stores popping up in China. These stores are deliberately conceived to fool customers into thinking the traders are selling official Apple merchandise. Indeed, many of their customers may have never set foot in an authentic Apple store, and would be unaware they were buying false products.
But while this argument is valid, proving a passing-off claim is often much harder and more expensive without an established and watertight trademark. With an army of handsomely paid corporate lawyers, Apple is leaving nothing to chance.
Many business owners and company directors are calling for legal reform, to further assist businesses to protect their carefully nurtured brands without resorting to costly litigation. However, some fear that companies would soon monopolise combinations of fairly simple features. IPKat points out, that UK law is far stricter when granting trade dress, as the test requires a mark to be “truly distinctive”.
For the Apple Store layout to acquire a trademark or trade dress in the UK, Apple would have to demonstrate the stores were so unique and distinctive that the public would easily associate the store designs with the Apple brand. Clearly, for most businesses, attempts to secure a trade dress will not be viable. And as the law currently stands, it is difficult to protect distinctive features of a shop layout without engaging the expensive litigation route.
In the high street, distinctive stores can be beneficial. Customers are able to immediately identify store branding and associate particular shopping experiences with particular stores. Therefore, as branding becomes increasingly important, the expansion of legal protection over unique in- shop experiences is likely to be sought out. But until it becomes easier to protect others from copying the interiors of a retail business, the easiest option for most business will be to rely on printing their trademarked brand names or logos on various surfaces throughout the store to act as identifiers which are protected against copying.
Software is essential to everyday life, it’s how we carry out research, get our entertainment fix, communicate with each other, manage information, carry out calculations, implement business processes and unleash our creativity. But what if the software you need is out of reach? Can you roll your own version of a tool sold by someone else? This is a difficult question to answer, because even the simplest software is a bundle of different elements, each of which might be protected by a variety of intellectual property rights, such as copyright, design protection, or patents. The concept of writing programs which replicate the functionality of existing software is commonly referred to as emulation. At a high level you can think of it as making sure that if the same information is input into an emulator, then it produces the same output as the software it emulates. A recent court case sheds light on the legality of this practice in the UK. The dispute between the SAS Institute and World Programming dates back to 2009, and arose when WP decided to develop their own version of SAS’ software. While copyright protects the underlying code behind software we use, in this case WP did not have access to the source code, they simply knew what went in and what came out of the software. The WP version would accept the same instructions as the SAS version, read the same file formats, and give the same outputs, but the source code was not copied. The question arising in court was whether copyright protects the set of instructions, or language, that a piece of software will accept – it’s functionality and interface with users, rather than its internals. Why is this important? Well, consider a situation where your business becomes reliant on a particular system, for example a piece of bookkeeping software. Over the years your staff will have become familiar with it, and you might have integrated it with other aspects of your business, such as with payroll, invoicing or tax calculation software. If it becomes unavailable, perhaps because the company that sells it goes out of business, or increases their prices, then you could find yourself with two options: retrain all of your staff to use a replacement, and rewrite your payroll, invoicing and other software to work with it; or create a replacement that can slot in to fill the gap. Clearly, the best approach depends on how important this particular software is to you. If it’s only used by one member of staff, and there’s a cheap alternative which is simple to learn then resolution is easy, but if there isn’t an alternative, or if it’s embedded into your processes and procedures, then rolling your own could be a far more attractive option. However, if copyright were to protect the way you use software, i.e. the set of instructions it accepts, this wouldn’t be an option. Although there were other questions involved, this is the issue raised in the SAS v WP dispute with the potential to have far reaching implications. The judge, the Honorable Mr Justice Arnold, answered most succinctly:
In short, copyright in a computer program does not protect either the programming language in which it is written or its interfaces (specifically, its data file formats) or its functionality from being copied.
So, at least for the moment, you are likely to be entitled to develop or commission programs which emulate the functionality of other piece of software, provided that you do not actually copysource code or other protected works which make up the original. Please do leave a comment if you think this is likely to affect you, or if you have any comments on the issue.
If your business has reached the stage where you are looking to expand abroad or diversify into different markets, licensing your brand could be the ideal way of achieving this.
With licensing, it doesn’t matter if you haven’t the staff or the money to fund your expansion. You license your brand to a third party that already has the staff and resources available within the target market in which you wish to expand.
The positives are many: it can be a lucrative move and can generate additional revenue for your business; it can increase your brand awareness; and it can help create new products for your brand without running the risk of failure on your part.
Licensing Without Controls
However, licensing has its downsides, too, which can be exacerbated if you don’t manage your licensing effectively. One of the biggest concerns to be aware of is loss of control. So, whilst licensing can boost your brand’s strength, it could equally damage your brand’s reputation.
This is the risk you run if a third party is licensed to use your brand without any restrictions. It’s not just your brand’s reputation that could be damaged; in some cases, a lack of monitoring on how a third party is using your brand name could result in you losing the rights over the name.
Eva’s Bridal Shop
Take the case of Eva’s Bridal Shop in Chicago . In 1966, Eva Sweis opened a bridal shop under the brand name, Eva’s Bridal. The brand built a reputation for providing top quality goods and services. Eva obtained trademark rights in that name.
The trademark was used for generations; friends and family were allowed to set up bridal shops under the Eva’s Bridal label. But in 2007, Eva’s Bridal attempted to take legal action against a former licensee for trademark infringement as he was using the trademark after the license had expired. On the surface, this appeared a fairly simple case of infringement.
However, the original licence agreement exerted no control over the way the trademark was used, and the court ruled that this therefore eliminated Eva Bridal’s trademark rights in that name.
This is because licences over a trademark granted without any regulations or restrictions, are considered to be abandoning the trademark, no matter how long you may have previously had the rights over it.
Therefore, it is vital to ensure when you license a trademark to a third party, it is not just an agreement stipulating how much you are licensing a trademark for, but also to ensure you have control over the way the trademark is used.
Trademark as a Symbol of Trust
Trademarks are there primarily to indicate to the public the origin of goods, and to protect them from confusion. It enables the public to rely on a brand as a signifier of quality, or standard, and is a symbol of trust.
Therefore, if you are planning on licensing your business, be sure to introduce quality controls, and limit the distributor’s rights to sub-license the trademark.
How to License Effectively
The first consideration when approaching a licence agreement is to describe what is being licensed, and to take account of the extent of your trademark portfolio. What specific products or services are covered and in which geographical areas? Who will be responsible for filing further trademarks, and who will bear the cost of these?
As a general rule, it’s important for you, the licensor, to retain responsibility for the trademark registration. The licence will be for a specific period of time and may impose a number of conditions. In return, the licensee agrees to pay you royalties and is willing to do so because you have something that’s popular.
Licensing can be an invaluable tool to some business owners wishing to expand their brand, so, it is essential to make sure that licensing helps rather than hinders your business.
If you have had any experiences of licensing which you would be willing to share, I’d love it if you left a comment below.
If ever there was an ideal example of the importance of ensuring the right intellectual property procedures are in place, Innocent’s recent trademark difficulties demonstrates it.
Despite being one of the UK and Europe’s top smoothie brands, Innocent has lost its distinctive ‘halo’ logo trademark, after its trademark was invalidated due to Innocent not owning the copyright to it. It’s the designers who created the logo own the copyright in the logo.
A comparison between the original sketched design (left) and the registered logos (right).
Now, 15 years after the logo was initially created, the designers have decided to assert their copyright ownership.
Who owns copyright?
Even though Deepend had been dissolved, it assigned copyright in the halo logo to Andrew Chappell in 2007, and then two years later it was assigned to Deepend Fresh Recovery Limited, who initiated the action to cancel Innocent’s trademark.
Innocent could not show that it ever formally received transfer of copyright in the logo from Deepend, which denies any assignment. So the argument that the designers retained legal ownership of the design was conclusive.
Innocent argued that, even without legal ownership of the copyright, as a matter of equity (or fairness) it should be entitled to make use of the design, a tactic which succeeded in an earlier copyright case, back in 2005.
Previous Case Law
As discussed in my book, Legally Branded, in this case a company named Griggs found itself in a similar dispute regarding the copyright in its logo, which was created by a freelance designer (Evans) who was contracted to merge the existing Dr Martens and airWair logos. As with Innocent’s case, the designer had not formally assigned copyright in the new logo.
Evans claimed ownership of copyright in the Dr Martens logo, and tried to sell it to a third party. However, the court decided that there was an implied contract between the parties, including a term requiring assignment of the copyright. As logos are so fundamental to a company’s identity and branding, it would be wrong to allow the designer to sell it to a third party. The designer was required to transfer legal ownership to Dr Martens.
Reed, one of Innocent’s founders, tried to use a similar logic, claiming that the halo logo was recognisable to consumers, and that to give commercial effect to the agreement to produce the design Innocent should be free to use it. However, the Cancellation Division of OHIM (the European Trademark office) dismissed the argument as unfounded.
What we can learn
This is not the last word on the matter because Innocent has re-applied to register its trademark, and has also appealed the decisions of the Cancellation Division. The IPKat wonders whether the result would have been different if more had been done to demonstrate the recognition commanded by the halo logo in the marketplace.
To many, Innocent’s halo logo is synonymous with the brand. This, and the fact that close to 15 years had elapsed before this issue came to a head, long after the original design agency had ceased to exist, should serve as a stark warning to business owners that they need to consider the legal implications early on during a branding exercise. Developing procedures to tackle obstacles before they arise is the key to avoiding the uncertainties, and the expense, of litigation.
So this case really demonstrates just how vital it is to have good procedures in place using effective agreements from the outset. It is relatively straightforward to get the copyright in your logo transferred to you before any work is carried out, so it makes sense to do this rather than relying on the vagaries of litigation to resolve the matter in your favour.
Since writing my book, Legally Branded, a number of business owners have thanked me for making this fundamentally important subject of intellectual property (particularly trade marks) understandable.
Some entrepreneur friends have even suggested I emphasise the risks, and danger of ignoring intellectual property advice. However, I’ve always tried to steer clear of scare mongering as a tactic to raise the profile of intellectual property, preferring to work with those clients that “get” the importance of intellectual property. Our clients are the ones that get it, even if they’re not in industries where IP is obviously critical to their success. They value their IP from the moment they start their businesses as did our client Headspace, for example, who are doing great things to make meditation accessible.
I recently attended a meeting with a business owner whose mind was firmly made up that there was no point paying expensive lawyers to give advice on IP. I had agreed to meet with him at the request of his marketing manager who understands the importance of IP and hoped that someone more aware of the ins and outs of IP may be able to persuade his boss. However, this business owner’s views did not shift one bit as a result of our meeting mainly because he talked far more than he was willing to listen, and his mind was already made up. So, I know better than to try to address those whose minds are already made up that they know all they need to know about IP.
This is for readers who are curious, or undecided
This post is for those who may be curious, or who are still on the fence about whether it’s worth bothering with trade marks. While it’s never a good idea to generalise about who does or does not need IP, I will stick my neck out and say that if you’re a lifestyle business (by which I mean you’re aiming to earn a livelihood and are not trying to build a big business or one you can ultimately pass on or sell) you can ignore trade marks. You’re unlikely to come to anyone’s attention, or pose a threat to existing trade mark owners such that they would want you to rebrand for infringing on their rights. Even if someone did require you to rebrand, chances are it will just be an inconvenience to change your marketing materials and rename the business. You won’t have a name that attracts business, so could rename the business without suffering a drop in activity. Similarly, if you’re setting up a business and want to first see if it will take off, then you MAY, depending on your business idea, be able to use a temporary name, or take a chance with the name you want to use (provided you’re willing to change it if the advice is that you would do better to choose an alternative name), and see if you can get anything off the ground before worrying about trade marking. But for everyone else, it would be really foolish not to get trade mark advice from a specialist lawyer on the name you’re using.
Trade marks may be revoked
Trade marks can be cancelled, so even if you’ve secured a trade mark registration it doesn’t mean you’re all right to use that mark. That’s why it’s misguided to do your own registration work, just to save on legal fees. You may end up getting a registration, but it may not be for a mark that is capable of generating brand value. You may not have an adequate scope of coverage, so that although you’re registered, it may not protect you if someone were to challenge your rights. For example, registering a logo with a totally descriptive name – that is, one that describes what the business does – is easy enough to secure. However, it’s an extremely poor choice of branding.
The law protects businesses against various unfair competitive practices, and helps you fight off competitors who use similar marks to yours, but you have very limited recourse with a descriptive name. Using a descriptive name or a name that is otherwise incapable of being owned by you as a trade mark, leaves you wide open. You will lose business that may have been intended for you, and you will have a business that is far less valuable than it might have been had you selected a legally powerful name. This is the reason you should always consult your own IP lawyer on any name your branding professionals help you to choose, unless they are willing to take responsibility for its legal effectiveness.
Keyword rich names probably best avoided
Also, take a look at the blog I wrote about Google’s recent algorithm change, which makes it even more of a poor decision to use descriptive names now online. The writing is on the wall, so I would avoid choosing keyword rich names too when branding your business online. The slides from my talk at Make It Big in 2013 also discuss descriptive names more.
Get legal advice
Even though you get some protection in this country just by using a name, don’t let that lull you into a false sense of security. For example, if someone registers a Community Trade Mark they can stop you using a name you’ve been using, or limit you to using it only in a certain geographical area. Why court the vagaries of litigation with all the cost implications when you can secure your rights in a name you’re getting recognition with, by paying ten times less?
Trade marks and legal advice should not be dismissed as too expensive to bother with for anyone who has a viable business. They are an investment, and are the foundation for licensing and other ways of monetising your products and services. In particular, don’t wait till you have reached certain turnover targets, because trade marks are fundamentally relevant to any business that aspires to be more than a lifestyle business. Your business name is what the law protects when competitors behave unfairly. So, trade marking is good business practice and isn’t just about whether you intend to become a brand, or think that if you sold your company whoever bought it would want to use your brand name.
There is a lot of misunderstanding about the relevance of IP, and huge generalisations are made about its costs. But given that there are many different IP rights, of which trade marks are just one type, it’s foolish to dismiss them all as too expensive. Knowing how to implement procedures to protect just one of these rights may be the critical element to your business success after all.
I think the problem is down to the complexity of IP law. We are still in a transitional period between an industrial economy and a knowledge economy. Consequently knowing how to deal with the physical things, the tangibles comes easy while intangibles that you can’t feel or touch, are less well understood. Intangibles are our knowledge, our brands, our digital content, and more. By their very nature, they are easy to lose. Being transient, and non-physical, their legal significance can sometimes be overlooked or misunderstood.
Scrabulous and other high profile cases
The fact is that it can be difficult for lawyers to point out the benefits of IP except by pointing to situations where there have been well known incidents, such as with Scrabulous, which I discussed in a post recently. Those of us IP lawyers who prefer to focus on the positives, won’t therefore want to keep pointing out the dangers, but I have outlined a number of scenarios in my book Legally Branded, which should help you better understand the risks. Don’t assume that just because big businesses like Apple resolve their IP issues, that you will do so too. People should know that for smaller businesses, the scenarios they hear about in the news about the Googles, Microsofts, Apples of this world would put them out of business because they would not have the resources to get themselves out of trouble.
So the moral is if you are a small business without access to huge sums of money to litigate your way out of trouble then you absolutely need to make sure you avoid the problem in the first place by getting professional advice to register your trade mark.
Also, if you’re going to ignore IP protection, you need to know what you’re doing. It could in some cases be rather like deciding not to bother with the foundations of a house you’re building. In television programs like Grand Designs, the participants who overspend may end up not having enough money to do all the fine design details they had wanted. Their lack of funds means they have to compromise on the surface issues like designs. They can’t compromise on the very structure and foundation of a building. Unfortunately, the opposite approach happens in business when IP is ignored. People can spend a fortune on the surface things like branding and websites while ignoring the fundamentals.
Distinguish IP from other legal work
While there are some legal issues you can and should skimp on in the early days of a business, IP isn’t one of them. Note that IP is very often a contractual matter, and isn’t just about registrations. So, take advice to see how to minimise your IP expenditure in a safe way if you think spending on IP may seem a waste. Some business owners question any expenditure which doesn’t enable them to make money (such as learning a new marketing trick would increase their chances of generating revenues). However , think of IP as what enables you to keep the money you make, and in some cases to continue to earn revenues. So at the very least you absolutely have to take advice in order to develop your strategy for IP.
Increasingly, awareness of the value of a brand is leading businesses to protect their names and logos through trademark registration. As registration is territorial in nature, only offering protection in the particular countries where an application is filed, businesses typically begin by focusing on their primary market before extending their registrations internationally. For example, a company which operates in the UK might file a UK trademark and then later take advantage of rules which allow that registration to be extended to other countries as their business develops.
There are a variety of ways to protect your trademark further afield, but it is important to appreciate that the scope of a UK trademark may not offer as broad protection as you might expect. While a UK trademark covers England, Wales, Scotland, Northern Ireland and the Isle of Man, it does not automatically extend to Guernsey, Jersey, the Republic of Ireland or Gibraltar. So, when devising an international trademark filing strategy it’s important not to lose sight of priorities which might be closer to home.
The Madrid system offers a way to register international trademarks based on an earlier filing, and a European Community Trade Mark (CTM) registration can protect your brand in nearly 30 countries, but it may surprise you to learn that, even together with a UK application, these will not cover all of your bases. There isn’t scope in this article to detail all of the Crown Dependencies (such as Jersey or Guernsey) or British Overseas Territories (such as Gibraltar or the Cayman Islands), but to give an indication of what might be involved to trademark a name in some of the countries which might be relevant to you, we have summarised some of the intricacies of the system below.
Jersey has its own trademarks registry, and is not party to the Madrid system but is covered by European (CTM) registrations. So if you have only registered your trademark in the UK, you would need to either re-register in Jersey or secure a CTM. One curiosity is that, although UK registrations do not extend automatically to Jersey, an international application that designates the UK does offer protection in Jersey.
As with Jersey, Guernsey has its own trademarks registry and is not part of the international Madrid system. However, CTM registration does not protect your trademark in Guernsey, and nor will an international registration designating the UK. So, it is necessary to register directly.
Trademarks in the Republic of Ireland
There are three ways to protect your trademark in Ireland. If you operate elsewhere in Europe, then a CTM may the best way forwards, and you can also designate Ireland as part of an international application through the Madrid system. Alternatively, if you don’t need wider protection you can file directly with the Irish Patents Office.
Trademarks in Gibraltar
The European system also covers Gibraltar, so if you would like to register a trademark in Gibraltar you will need to either file directly in that country, secure international protection designating the EU, or register a Community Trade Mark
Cover your bases
Only a handful of jurisdictions are mentioned above, and there are a range of former British Protectorates and Commonwealth territories, Bailiwick’s and other Crown Dependencies, and British Overseas Territiories which each have their own particular quirks. Bearing in mind the diversity of routes available when registering trademarks internationally, through national registration, re-registration based on national marks, the CTM system, the Madrid Protocol and the Madrid Agreement, a well thought out strategy for securing protection of your brand is crucial. Without expert advice, it’s easy to leave gaps.
If you want to protect your brand internationally, let us know by completing our enquiry form. In the meantime, if you want to learn more about the legal aspects of branding why not buy a copy of Legally Branded, a book that explains the relevant law in an accessible way?
Choosing names that say what your business does on the tin may not be the best approach to choosing domain names online, despite it being an approach many businesses have adopted in the past.
Often, it seems like a good idea to follow in the footsteps of those who have gone before, taking what looks like the tried and tested approach.
However, whilst in the past descriptive domain names may have given businesses certain advantages online, recent changes to Google’s algorithm at the end of 2012 have done away with many of these previous benefits.
The early days of the Internet
When the Internet was young, and not unlike a small village with just one toy shop, one grocery store, one pet store, and so on, descriptive names or phrases were popular for domain names. People searching for these pioneering online suppliers could readily find them by using descriptive keywords to search for them, and search engines made the websites easy to find. In those early days if you wanted to find a business, chances are you would just type into your browser Books.com when looking for books or Hotels.com to find somewhere to stay and so on. Nowadays, less than 25% search in this way.
As online business took off, and nearly every business put up a website, the online space became overcrowded. A high ranking in search results grew to be the key objective of many businesses, as more and more of us turned to Google whenever we wanted to find a product or service, and so the practice of using descriptive domain names became entrenched because Google continued to give a preference to domain names describing what their potential customers were searching for. For example if you were called Jobs.com, you would be more likely to show up in the top results, assuming your website was otherwise well designed.
However, this led to marketers using “exact-match domain names” as a way to cheat the system, pushing low quality websites up in search result listings. With Google’s recent changes to its algorithm, Google has made it harder for sites to cut corners, ensuring that the focus is on quality and relevance. Today, Jobs.com does not even make the top 10 search results for a search for ‘Jobs’.
We couldn’t agree more, and encourage readers to take care when choosing a domain name for products and services. Choosing a distinctive name comes with a whole host of benefits, not least of which is the opportunity to own it through trade mark registration. It is also easier to deal with competitors who seek to copy your domain names. Do get in touch if this resonates with you, and you want to find out more about branding your business.