Tag Archives: News Items

‘iWatch’ Trade Mark – Apple In Multimillion Trademark Dispute

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

The dispute

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

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

Probendi’s plans

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

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

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

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

Google’s approach

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

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

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

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

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3D Trademarks – No Breaks For Kit-Kat

What will be of the future of 3D trade marks? The latest in Nestlé’s attempts to trademark its iconic four-finger chocolate is at odds with EU Law.

Back in 2012 we reported in our blog Can you trademark a colour? that Cadbury had managed to secure a trademark for its signature purple colour after a lengthy battle with Nestlé. If you have been following the race for confectionary supremacy between Nestlé and Cadbury, you will know that in 2013 Nestlé successfully blocked Cadbury from maintaining its trademark rights in the colour purple ‘pantone 2865c’ for its Dairy Milk chocolate bar.

Cadbury’s application did not meet the criteria of a trademark, namely that ‘predominantly’ purple was not specific enough and lacked objectivity for the purpose of registration. See here.

Nestlé are set to see a similar fate in the latest turn of events.

What does this mean for the future of 3D shape marks?

Yesterday it was reported that the Advocate-General (AG) has advised that the Nestlé’s application for the three-dimensional ‘Kit-Kat’ shape is not compliant with EU law.  Although not an official ruling, it poses a serious threat to the future of three dimensional trademarks.

Life in 3D

Three dimensional trademarks are notoriously difficult to register. Why? Because a registered trademark grants perpetual monopoly rights and, because, the registration of these marks provide an enormous advantage in highly competitive markets where products are homogenous or differ only by a few features.

Having a trademark means that no one else can use the same or similar shape for the same or similar goods. This is generally considered anti-competitive.

To this extent, shape marks play a crucial role in the multi-dimensional aspect of a brand’s distinctive character. A trademark acts as an agent of a commercial strategy, and shapes are one of the foundations to a successful marketing campaign.

In our piece about ‘Coca Cola Bottle Granted Trademark Protection in Japan’ we mentioned the Coca-Cola bottle, which seems to be one of the few shapes on the market which has been able to achieve trademark protection in many different countries. It only takes a few moments to think of that bottle and realise how many international campaigns, advertisements and references are based on this one shape.

To be or not be?

In a recent article by the Guardian, Iain Connor, head of Pinsent Masons’ contentious IP practice, stated that the AG’s “opinion is entirely consistent with the court’s previous refusal to grant trademark protection for Lego bricks and so comes as no surprise.”

It is not so clear cut, however. The general rules are that you can’t register a 3D mark, even if it has acquired a level of distinctiveness, if:

1. The shape results from the nature of the goods, i.e. you’d have a hard time registering the shape of a banana for bananas;

2. The shape is necessary to obtain a technical function; and

3. The shape adds substantial value to the goods. (What this value is, is inconclusive).

Lego had failed to register its toy bricks because the shape was necessary to connect one brick to another. Philips had failed to register its 3 headed shaver for similar functional reasons. On the other hand, the triangular Toblerone pack enjoys trademark protection which, arguably, makes it easier to package the confectionary in bulk. Is that not a technical function? Chrysler were also able to register the front ‘seven slot’ grill of their Jeep vehicle which, in the author’s opinion, serves the technical function of cooling the engine. The court’s interpretation of these ‘exotic’ trademarks is therefore far from consistent.

To draw the distinction is a conceptually difficult task. For instance, the shape of a chocolate bar with ridged indents is no less necessary to break the fingers off than a Toblerone is good for stacking; a Cola bottle is useful for containing Coca-Cola; and the holes in the front of your car prevent your engine from exploding.

The argument put forward by Cadbury was that without the branding and logo the shape was not distinctive enough to warrant a trademark. However, a street survey revealed that 90% of consumers recognised the chocolate bar (without its packaging) as a ‘Kit-Kat’.

If it is all about packaging, however, then the court offers no less abstract guidance. Last summer, Apple Inc. were able to trademark the layout of their store. The CJEU came to the conclusion that, somehow, the Apple store is equivalent to ‘packaging’. See here at para. 16.

The author’s view is that the ruling (whilst a coincidently accurate metaphor for corporate culture) defies the whole point of specificity and objectivity. Not all Apple stores are the same, and if the design alone is such that it presents the services provided, then does Cadbury’s ‘predominantly’ purple ‘packaging’ or Nestlé’s four-finger chocolate bar not present ‘Dairy Milk’ and ‘Kit-Kat’ in much the same way?

The ‘certain’ circumstances for registration 3D trademarks are not so certain after all.

Trademarks unchained

Shape marks are construed narrowly because of the commercial power which they yield. However, to what extent does a company have to sacrifice its distinctiveness for the good of its competitors?

Modern advertising and marketing practices now incorporate far more than your standard bill-board and infomercial. Companies are awakening to the fact that the most powerful advertiser is the consumer himself. The one who is inadvertently a brand ambassador carrying ‘lifestyle’ products for the world to see.

The shape of a product is therefore more important than ever before. It helps preserve the individuality of the product and uniqueness of its brand and it creates something completely different from the myriad of the commonplace. Sooner or later, a reform of trademark law will need to take into consideration this new function of trademarks.

 

Startups – Where Will The Next Tech City Be Located?

Which tech city will you start your start-up

Now that the Conservatives have gained another term in government it is likely that they will press ahead with many of their pledges. Of particular interest are the proposals set out in George Osborne’s recent Budget Plan for 2015.

The Chancellor of the Exchequer has offered a series of measures to support the technology sector, including:

  • £11m in tech hubs in Manchester, Leeds and Sheffield
  • £60m in energy research to develop energy technologies of the future
  • Funding to develop a financial technology incubator in Leeds

He has also offered greater incentives such as tax breaks for video games makers, £100m for automotive groups working on driverless car technology and a £40m in investment into research into the “internet of things”.

In summary, the 2015 budget offers a substantial investment for the technology sector and a real opportunity for entrepreneurs and enterprises to gain a foothold in our increasingly profitable technology sector.

Where is the next tech city?

When it comes to commercialising your concepts there are a lot of factors that play into the overall success of an enterprise. One of them is being in the right place at the right time. So, a few things to look out for when assessing the market landscape are:

Location of Growth Opportunities:

A survey of the digital economy by Tech City UK has found that 74 per cent of companies and 85 per cent of workers are now located outside the capital. With rent prices increasing in London, the surge in competition and tight venture capital practices, the North sets to be a go-to destination for those who wish to keep costs low and take advantage of government investment. For those entrepreneurs in the FinTech sectors this is notable. With the industry growing from $4Bn in 2013 to $12Bn to 2014, you may want to consider nestling up in Leeds where a new FinTech incubator is on the cards as it may well become the hotbed for investors in the near future. For those who like the sea, consider Bournemouth and Liverpool which have already outstripped London in terms of growth while the Midlands is set to be home to new energy technology research hubs.

Increased Revenue:

So far Greater Manchester, Belfast, Sheffield, inner London and South Wales are home to tech clusters. However, about 90% of all digital companies in the UK, which are mostly small and medium-sized, expect revenue growth this year. For would be investors and those looking to set up shop it is important that opportunities outside of London’s silicon roundabout should also be considered. .

Consolidating Market Position:

Depending on your business, operating from London might limit your opportunities as there will be increased competition or limited regional capacity. Branching out may help you consolidate your market position but could also help in minimising your competition in the long run.

Fortifying your domestic position by taking advantage of this significant investment may also have a positive effect on international opportunities. Currently, the Euro is very weak and given competitive prices and the rate of growth, this may attract a lot of foreign investment, which everyone should keep an eye out for.

Azrights Intellectual Property Team To Participate In The London Legal Walk

London Legal WalkThe London Legal Walk is an annual event that brings together lawyers from all practice areas. Lawyers from solicitors firms and barristers chambers, in house legal teams, charities, companies, magazines, and more, of all levels of seniority will be taking part in support of the London Legal Support Trust charity. This year the walk will be led by the Lord Chief Justice, Lord Thomas, and Master of the Rolls, Lord Dyson, and will include walkers from 495 teams.

Funds are raised to support free legal advice charities in London and the South East. Walkers are expected to gain sponsors and then many law firms, chambers and companies add to that with matched funding or donations. Some noted participants include Allen & Overy, Baker & McKenzie and LexisNexis. This year, the Headline National Gold Sponsor is The Law Society. Legal Walk Map

We at Azrights support this cause because in reality, not everyone has access to justice. Apparently two-thirds of the UK population don’t know how to get legal advice and 13 million people who live in poverty can’t afford to pay for legal support. The London Legal Support Trust works with a variety of charities to provide services.

On Monday 18 May 2015 from 17:30, the Azrights team will be joining numerous other firms and charities to complete the walk. The team will be walking 10K beginning and ending at the Royal Courts of Justice on Carey Street.

This being the 11th anniversary of the walk, it is hoped to exceed the record £560,000 raised last year!

If you are interested in sponsoring the Azrights team, please visit our fundraising page.

Thank you for your support!

The Azrights Team

Japan And The United States Join The Hague System For Design Registration

Hague System for Design RegistrationJapan and the United States both filed their official instruments at the WIPO headquarters in February 2015 in order to join the Hague System.

This increases the number of Hague signatories to 64 nations.

The Hague System allows for multiple filing of design applications through a single WIPO application.  The introduction of the United States and Japan, two of the world’s largest economies, is a significant boost to the Hague system. The hope is that other countries will sign up to the Hague System as well, leading to a global revolution in the ease of filing and the centralised management of international registration.

For more information about Japan and the United States joining the Hague System visit the Inventa site at: Japan and USA join The Hague System for International Design registration.

Trade Mark Like It's 1989

Taylor Swift – Trade Mark Like It’s 1989

Trade Mark Like It's 1989It is very common for people to be confused between different IP rights.  We often hear from individuals interested in “patenting” their brand, or “copyrighting” their invention, because there is a widespread lack of understanding of the protection offered by different IP rights.

Taylor Swift recently fell under the spotlight after applying to register over 100 trademarks, including lyrics such as “This Sick Beat”. This alarmed many figures in media and the music industry, who believed the trademarks would bar other musicians from using common phrases in their own work. In fact, the implications are not nearly as severe, and there are no guarantees that the applications will even be successful.

Lyrics are protected by copyright, and where lyrics do qualify for copyright protection it isn’t necessary to register them.  Trademarks on the other hand, are used to indicate the source of goods or services.  Such as merchandise: posters, t-shirts and other products often marketed by artists.

The word AND is registered as a trademark in the UK for printed publications and writing services.  Clearly, that doesn’t mean you can’t use the word AND in your written work.  But it could prevent you from supplying printed publications under the brand name AND.

In practice, it’s common for artists to register a host of trademarks to use with merchandise, and you can find more examples at the World Trademark Review: Taylor Swift’s trademarks fuel media misreporting and protest songs.

From net neutrality to copyright

From Net Neutrality To Copyright: Media Law Trends For 2015

From net neutrality to copyrightWith the Internet continuing to develop at a significant rate, media and IP law often struggle to keep up with the advancements.

To get an insight into future developments in the digital world during 2015, the Guardian has written a piece highlighting some of the key areas for media professionals to monitor during 2015. Their piece doesn’t cover data protection because they are devoting an entire article to the topic later this month.

To read the article which looks at recent developments in copyright law following implementation of some of the Hargreaves recommendations, online piracy and net neutrality, go to the guardian by clicking From net neutrality to copyright: media law trends for 2015.

Protecting intellectual properyt

Protecting Intellectual Property Online – The Latest In The Use Of Blocking Orders

Protecting intellectual propertyThere has been a significant push in recent years to address the issue of IP rights being infringed online. Following several changes in the law, and a number of landmark decisions, progress is being made to help rights holders enforce their intellectual property rights if these are infringed online.

In the latest instalment, the decision of the CJEU handed down in Telekabel finally confirms that blocking orders are compatible with EU law. However, it is the responsibility of Internet Service Providers to assess what steps need to be taken should such an order be granted.

It was the UK decision in Cartier which saw the first blocking order granted in the UK against a number of websites selling counterfeit goods. The decision signified, in the opinion of the UK courts, that blocking orders are the most effective measure for protecting IP online. Although this echoes Ofcom’s evaluation of the use of blocking injunctions under the Digital Economy Act 2010, blocking orders can take a number of forms, some of which are more effective than others. Ofcom’s findings are outlined in their 2010 report “Site Blocking” to Reduce Online Copyright Infringement: A Review of Sections 17 and 18 of the Digital Economy Act.

Despite recent progress, online copyright infringement is still causing significant damage to rights holders, so more will need to be done in the forthcoming years. The CJEU decision in Telekabel and the UK decision in Cartier have taken steps in the right direction, and should help shape further reform in enforcing IP rights which are being infringed online. To read about the recent decisions go to the Ipkat by clicking http://ipkitten.blogspot.co.uk/2014/12/2015-year-of-blocking-injunctions.html.

Using crowdfunding sites could destroy your nascent business idea

A recent article by Shireen Smith on the subject of crowdfunding, was published by the Guardian in June, and explains why it is particularly crucial for early stage businesses to protect their intellectual property before pitching through crowdfunding platforms. While crowdfunding is an increasingly popular source of capital, entrepreneurs should be aware that pitching publically in this way can lead to copycats, and also brings with it a risk of others finding out if you are infringing their IP rights.

Crowdfunding isn’t right for every business, but if it’s an avenue you are considering, it would be prudent to invest in specialist intellectual property advice before you pitch. Find out more by reading the full article here: Using crowdfunding sites could destroy your nascent business idea.

Thomson Reuters interview featuring Azrights

Shireen Smith was recently interviewed by news agency Thomson Reuters for a piece regarding how lawyers and firms can substantially benefit from utilising social media, to drive their online presence and search rankings.

The experience was fun. A film crew came to spend an afternoon in our London office, and attended a recent ‘Tweet Up’ event the firm had organised near Chancery Lane. During the event, a number of other lawyers who take part on social media platforms were asked for brief comments, including our very own Stefano Debolini.

The videos touch on various aspects of social media. In addition to Shireen, featured speakers include Gavin Ward (solicitor) Adam Wagner (barrister), Brian Inkster (solicitor) and Stephen Moore (legal technology expert).

Shireen Smith

Shireen Smith

Brian Inkster

Brian Inkster

Adam Wagner

Adam Wagner

Stephen Moore

Stephen Moore

Gavin Ward

Gavin Ward

You can watch an excerpt of the video here, and to buy access to the full version video click here