Tag Archives: OHIM

Branding is IP

Branding – Why IP Is Intrinsic To The Work

Branding involves creBranding is IPating Intellectual Property (IP). Intangible assets produced during branding should be well chosen to ensure elements like names and logos are available to use and do not infringe on somebody else’s rights. A solid understanding of IP law can help ensure that the choices are also capable of creating potentially valuable intellectual property that is capable of protecting a company’s competitive market position.

Agencies need a way to incorporate IP considerations into their work. The practice of leaving IP considerations for clients themselves to deal with through their own lawyers’ due diligence on names leaves a lot to be desired.

Many clients lack an appreciation of the risks and opportunities that IP presents. The widespread belief that the legal aspects of branding can be passed on to clients therefore leaves them exposed. Many clients do not have access to lawyers with the appropriate skills to do searches during naming projects, or to give advice on copyright or designs.

Few have access to lawyers with the appropriate skills

Branding agencies are much better placed to provide the necessary legal checks. Any agency that creates intellectual property for clients play an important role in the client’s ultimate value as a business. So, they need to know about

  • Trademarks
  • Copyright
  • Designs

These IP laws are relevant to an agency’s own business, and also determine whether suitable IP is created for clients. For example, a good name is one that does not infringe on anyone else’s rights. Also, it must be the right type of name so it may be uniquely owned. Also, it is vital that steps are taken to protect the name before design work begins.

That is how you ensure the identities or other intangibles created, generate wealth and value for clients if their ventures succeed.

The importance of names

Names are potentially one of the most important IP assets a business uses. Key points are:

  1. Names should not infringe on the rights of others. So, legal due diligence before adopting a name is crucial. If someone else is using the same name it may be appropriate to abandon that name and find another.
  2. The adopted name must be capable of functioning as a trademark. Not all names are capable of being owned.
  3. The name should be ‘clear’ to use before trademarking. Trademarks are cancellable so doing due diligence is essential before registering a trademark.

Unfortunately, there is little real understanding of IP among SMEs, so agencies have an important role to play in educating their clients to help them to succeed with IP.

Inadequate training

However, designers own training rarely equips them with the knowledge to advise SMEs on IP issues. Few design courses cover intellectual property law, except in a cursory way. So designers tend to have to muddle through and learn about IP from hard experience.

If a design professional starts their working life in a large agency they are unlikely to be involved in every aspect of a project. So they are generally unaware of what goes on behind the scenes to clear names, and search logos. By the time they set up on their own, they have little insight into IP laws. A steep learning curve often lies ahead of them. The unlucky ones make serious IP mistakes along the road to wisdom.

Need for suitable IP help

So branding agencies need to find suitable IP help to better manage the complexity of IP laws given the central relevance of IP to the work of agencies.

The vast majority of branding agencies do their own checks during naming projects. However, they lack access to quality advice to interpret the results of their searches. Lack of guidance to interpret the results of searches can lead to perfectly suitable names being dropped.

It is not just when you’re finding a new name for a client that you need to do checks though. It is also important to verify whether a name that clients themselves have selected is suitable. In my book Intellectual Property Revolution which is a best seller on Amazon there are numerous case study examples of what happens when a business is stopped from using its name due to trademark infringement

Risk of leaving due diligence to clients’ own lawyers

The risk of leaving the legal checks to clients’ own lawyers – something many of them will not do – is that the name undergoes no legal clearance at all, and the client is left using a name which might cause problems for them several years down the line.

Alternatively, if the client does engage its own lawyers to do legal checks then the client might be disappointed if the name does not hold up to legal scrutiny. It also puts the agency in a difficult position as to where to draw the boundary unless it has clarified in advance what legal checks the name must withstand.

The fact is there are many different types of searches it is possible to do on names.

Names are just one type of IP issue that branding agencies need to know about.

We have solutions for agencies that want to address the legal issues in novel ways without incurring any overhead costs – something agencies generally associate with legal help.

We’d love to let you know about our innovative way of helping you with the legal aspects of your work, so please contact us or submit an enquiry referencing this blog.

Copyright In A Logo, Innocent Smoothies, And Informal Contracts

Copyright in a Logo, Informal Contracts, and Innocent SmoothiesThe trouble with disregarding formalities, like legal agreements, is that even minor disagreements have the propensity to escalate into disputes.

An imperfect recollection of the terms of a contract is unlikely to escalate if the contentious point is answered when you consult the written agreement. However, where there is no concrete agreement in place, it is much more likely that issues turn into major disputes, leading to mess and expense. And sometimes where there is an unsigned document discussed by the parties, the court is likely to regard those terms as binding between them.

This is what happened in a case involving Fresh Trading Company (Innocent) and Deepend who had acquired the rights to the ‘Dude’ logo (the well-known Innocent halo logo) from the designers. The dispute resulted in a hotly contested series of cases around ownership of copyright.

In 2009, Deepend initiated proceedings with OHIM on the grounds that Fresh did not have the right to use the logo and that Deepend did because of the assignment of copyright to them of the Dude logo after the design company that created the brand in 1999 dissolved.

In 2012, OHIM agreed with Deepend. Fresh appealed the decision.

Background

At the time the logo was designed, Innocent was a fledgling company who had started a business relationship with the designers. Their brief was to “develop the ‘visual identity for the product’.” Although the designers never received payment for their design work, a recent High Court decision ruled in favour of Fresh finding that the parties had been acting under the unsigned Heads of Agreement. These not only assigned the full intellectual property of any work approved by Fresh to Fresh, but also had provisions for remuneration for Deepend.

The reason the judge found in favour of Innocent was that the Heads of Agreement included a provision that required Deepend to transfer copyright to Fresh. There was an obligation on Fresh to allot shares to Deepend. However, the judge found that neither of these requirements were expressed as a conditional obligation.

He used a flipped example to make his point, saying that the obligations to allot shares could theoretically arise even if there was no transfer of copyright to Fresh. The judge also made the additional point that at the time Deepend didn’t really deal with the matter of lack of shares and this must have been a result of the perception that a shareholding in Fresh wasn’t of very much value. This therefore negates the assertion that Fresh “refused to pay.”

So when you add this together with the fact that the judge didn’t consider the remuneration in the form of shares to be a precondition for the assignment of copyright clause then it becomes easy to see how he was able to justify his conclusion that on equitable principles, copyright should vest in Fresh. This followed the approach in Griggs where the logo design created was not formally assigned by the designer, however an implied contract was found to have existed nonetheless.

Conclusion

This decision, more than anything, highlights the importance of explicitly stating within a contract that IP rights are conditional on remuneration.

Another important lesson that can be learnt is to explicitly agree on copyright ownership from the outset in order to avoid costly litigation further down the line. This case also underlines the continued availability of remedies in equity.

The fact that the courts are sometimes willing to interpret the details included in an unsigned agreement to achieve a just result should be a warning to ensure the finalisation and signing of your official paperwork.

European Trademark Office rules Pinterest doesn’t own rights to its name

US social network Pinterest has lost grip of its European trademark rights

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.

Registrability of Trade Marks – WIENER WERKSTATTE

A trade mark can be refused where it is descriptive of the goods and services it covers. This could be where the mark ‘designates the kind, quality, quantity, intended purpose, value or geographical origin’ of the goods or service or other characteristic. For example, ‘GOOD BOOKS’ would be a descriptive trade mark in a class for printed materials and books. But what if I wanted to register a trade mark in the UK or as a CTM for a term which is descriptive of the products sold but in another language? For example ‘BON LIVRES’ or ‘BUENOS LIBROS’ for books.

A recent judgment from the General Court of Justice has confirmed an important distinction when registering foreign language trade marks in separate EU countries and when using the CTM system.  Essentially it seems far riskier to register a CTM when the word, in any one of the 23 official languages in the EU, is descriptive of the registered goods.

National registrations in the EU
The resounding principle in EU law is that descriptive foreign language trade marks can be registered where the relevant consumers in the country where registration is sought can not identify the clear meaning of the term.

So if I register the word ‘TABELA’ (‘table’ in Portuguese) in the UK for furniture the question is whether British consumers would identify that ‘TABELA’ actually means ‘table’. If not then the registration would be accepted. This principle was established in the MATRATZEN case where the word MATRATZEN, which means ‘mattress’ in Germany, was successfully registered in Spain as a trade mark for beds.

This is significant as the level of knowledge of German is seen from the perspective of the Spanish consumer.

CTM registrations
However what is the position of registering foreign language CTMs where the foreign language happens to be one of the official 23 languages?

Here the relevant territory would be that of the whole of the EU. And the relevant public, regardless of where the products are predominately being sold, is the consumer of the product in the particular language of the mark. So a CTM application for ‘TABELA’ would be assessed from the point of view of Portuguese speakers in Portugal, even though I may never sell a product there.
This has been confirmed in the recent ‘WIENER WERKSTATTE’ case. Here the applicants applied to register a CTM for WIENER WERKSTATTE, which translates to VIENNESE WORKSHOP from German to English and refers to a style of product design of the early 20th century.  All of the products registered were for a variety of objects from frames to lights to vases.

What is interesting with this case is that the Court’s approach seems to look at the language of the sign and decide whether consumers, where that language is spoken in the EU, would find the term to be descriptive (see para 20 of judgement).  The Court thought as German speakers would perceive the descriptiveness of the term Wiener Werkstätte, this was sufficient to have the trade mark refused in the whole of the EU.

In a previous ruling, the Swedish owner of the brand ELLOS applied for a CTM in various classes including class 25 for clothing. The word ELLOS is the third personal male plural pronoun in Spanish. On appeal to the General Court the latter found that, from the perspective of Spanish consumers, the mark ELLOS would denote that the goods concerned were intended for men. The result of the case was to remove the class 25 clothing description from the application (see here).

The impact of the WIENER WERKSTATTE judgment is to confirm that, strategically, a national approach to trade mark registration in the EU could be safer approach where the term in question happens to be one of the official languages of the EU and is descriptive of the products sold in that language.

Where is my EU trade mark certificate?

So you may have made an online application to OHIM and you may be wondering why, after being informed by the EU registry (OHIM) that you’re trade mark has been published, you are still waiting for the certificate in the post. Don’t worry it’s not a postal strike, this time, that has delayed its arrival, instead, it is a rather discreet change of policy instigated by OHIM to ‘help reduce registration times’. Certificates were originally posted to applicants (Please click here )but since the introduction of the E-Certificate system, last Wednesday 9 December 2009, it is all done electronically. From now certificates are downloadable from the Online Access of Files tab displayed above trade mark results (click the icon indicated above to access the folders containing your certificate – please note that you may be required to set up a Mypage account first before being granted access to such files).

Trade Mark Opposition. Spot the differences: ‘Vysion Ltd’ or ‘Vision Ltd’

Are you currently in the process of registering a trade mark for your brand? Everything can be ticking along smoothly until the day you receive a letter from the registry saying that your application has been opposed. What to do next? Pull out, settle or defend to the bitter end? Negotiations are certainly preferable to expensive and unpredictable adversarial proceedings. If you are in this situation first you should understand how opposition proceedings work and second how to defend your application. The following is an example of the procedure that applies to the registration of a trade mark in the EU.

You apply for an EU trade mark, the registry approve your application and publish your application in a journal. Then a company or individual with a registered trade mark sees that your trade mark is remarkably similar to theirs and fears that their customers are about to be hijacked. They file an opposition with the registry within 3 months of the publication.

The registry informs you and if they think the application is admissible then you have a 2 month ‘cooling off’ period to settle with your opponent. If more time is needed, you can apply for a maximum extension of 22 months, provided that both you and your opponent are in agreement. Once the cooling off period has expired, the formal adversarial proceeding commence.

The opponent has a two month period in which to submit further arguments and supporting material based on their initial opposition claim. The trade mark applicant then has a two month period to file its observations in reply to the opponent’s case.  OHIM acknowledges receipt of the documents and bases its decision on the material presented by each of the parties. The decision process takes from couple of months onwards to reach their decision.

The question that may be burning on your lips now is on what grounds can the opponent challenge my trade mark? And how do I counter their attacks? Generally, your opponent will claim that your trade mark is identical or similar to theirs.

As it is more onerous to show that the marks are identical to the point of being symmetrical, your opponent will tend to claim that your trade mark is similar. However, many opponents will still claim the marks are identical in the hope that the applicant will not refute the claims in their response– there have been instances where the failure to file observations against an opponent’s claim that the marks are identical has proven fatal to the applicant’s case.

In instances where the opponent alleges similarity of the marks and goods/services, there are two aspects that your opponent will have to show: visual similarity and market similarity, in other words, the trade marks have to look similar and the trade mark owners have to sell similar goods and/ or services. Further, consumers must be likely to be confused by the existence of both trade marks. Your opponent might claim that consumers would associate your trade mark with theirs.

The strategy here is to assuage you opponent with reassurances that you are not a potential competitor, and that you are operating in distinct markets. Further, visual distinctions, no matter how slight, should be raised to break the linkage between the two trade marks. In all, the trick is to ‘spot the differences’ so that in the eyes of the consumer, the overall impression of the marks is that they are dissimilar to each other.

As an example to elucidate the above points: imagine you are a video production company and want to register a trade mark in ‘Vysion Ltd’ and a tv production company already has a trade mark in ‘Vision Ltd’. They oppose your application claiming that the 2 names are remarkably similar and that their customers are likely to be confused as a result. Clearly ‘Vysion Ltd’ and ‘Vision Ltd’ sound the same, look very similar and both companies seem to be operating in the same media market.  With those set of facts it would be difficult for you to defend your application.

However, if we were to delve into the case with more detail to find out that  ‘Vysion Ltd’ was exclusively producing corporate training videos and ‘Vision Ltd’ was reaching the general public with tv documentaries and tv dramas, then maybe ‘Vysion Ltd’ could defend their application. Although both companies might be considered to be selling within the same class (Class 41), they arguably have very distinct audiences. In conclusion, the key point to retain when defending your application against an opposition is to: ‘spot the differences’.

The Saga of OHIM’s bank charges

Flagging late bank charges

In a blog post earlier this year I mentioned how we were being charged £15 by HSBC for transferring funds to OHIM in respect of our clients’ European Union trade mark fees, only to suddenly find we were being charged a further 20 or so Euros per transaction for transfers made months before. It was too late to pass on the costs to our clients.

This story was picked up by Class 46 and unfortunately I was not aware of OHIM’s official reply until now.

OHIM states that “customers who use the system infrequently and therefore may not be familiar with all the logistics of making Euro payments” are the ones likely to experience the sort of problems we have experienced. As it happens we have an account with OHIM and make more than the occasional transfer of funds. So OHIM’s reference to “Our regular customers from the UK do not usually find this a problem as they choose payment methods that avoid fees – using OHIM current accounts or credit cards” is incorrect.

As previously stated we have an OHIM account. The article also makes reference to the ability to avoid charges by using the SEPA payment method, which we have asked HSBC about, and been advised that it is not an option available to us. What surprises me is why nobody else seems to be complaining, and I can only think it is down to the fact that their hands are not tied as ours are by having to comply with the Solicitors Regulation Authority’s Accounts Rules.  These rules are applied very strictly, and are apparently something that many law firms are found to be breaching when the SRA visits.

The SRA Accounts Rules regard it as making a “secret profit” for a law firm to charge its clients more than the actual bank charges incurred. Therefore as the bank charges we are aware of at the time we make our transfer is £15 this is the sum we are allowed to pass on to our client. If we charged £35 we would be deemed to be making a secret profit.

If we had known at the time of the bank transfer that there would be a further 20 Euros in charges, there would be no problem to charge the client £35. However, being advised of the charges 3 or 4 months after the event (for example we are now being charged for transactions in December), is the problem, not the charges as such.

We have been involved in extensive communications with HSBC to try and understand why all of a sudden these charges are being levied for transactions that occurred MONTHS ago. We have now found out it is due to a change of policy by Banco Bilbao Vizcaya Argentaria S.A, OHIM’s bankers.

Therefore that is why since early this year the bank has suddenly and retrospectively begun to charge a handling fee of around 20 Euros per transaction for transactions completed more than 3 months ago.

Another aggravation this has caused us is that our bankers, HSBC began taking these charges out of whichever account we had sent the monies from initially (our office or client account). They know that our client account is not to be debited with general bank charges as it is a breach of the SRA accounts rules to take money out of client account when no money is held in that account for the client in question (which it isn’t as we invoiced and closed the particular client’s matter months ago). So this delayed request for charges by OHIM’s bankers is also causing HSBC to get a lot of grief from us. I was all ready to move our account elsewhere, only now I realize it is not HSBC that’s to blame but Banco Bilbao Vizcaya Argentaria S.A, OHIM’s bankers.

What is really upsetting is the time this has all taken up. We had to correspond at great length with HSBC over these sudden and initially unexplained deductions, and have only now been made aware of the full facts. Initially HSBC stonewalled us by pointing out that these charges were the result of our choosing the option to pay all the charges in connection with the transfer. (The fact that we have no choice but to use this option if we are to successfully pay the official fees in full was beside the point). Nor did the bank really engage with our objection that it is not acceptable to charge us months after the event when we are no longer able to pass on the costs to our clients. However, I see that OHIM is also not really able to answer the simple question, why it needs to take its bankers 3 months to advise of its charges?

In the meantime, I have notified the SRA of the facts and indicated that henceforth we will charge £35 for bank charges, and that I am trying to run a business here, which is not made easy if I have to worry over trivial regulatory breaches over small sums, which are not particularly serious “secret profits” for us to make anyway. In fact far from making secret profits we are making losses which we cannot pass on to our clients, all because of OHIM’s bankers being too inefficient to notify their charges at the time of the transaction.

Trade Mark Scams

We are alarmed by the increasing number of scammers that target trade mark applicants in the UK and the EU.  Clearly some people are misled into paying the fees otherwise the scams would not continue as they do.

The scammers send unsolicited mail to new trade mark applicants with a document resembling an invoice, implying that fees are due for the application. What makes the scam even more deceptive is that the scammers use official government  body names to give the impression that the ‘invoice’ is legitimate, and that the fees are therefore due for payment.

The traditional scam used to occur once the applicant’s trade mark had reached publication, but a new style of scam has now come to our attention.  These scammers are targeting applicants immediately after their trade mark has been filed on paper – perhaps when the applicant is more likely to believe they will have to pay the fees. Where the applicant is represented by professional agents, the scammers cleverly direct their communication to the applicant.

The IPO and OHIM both warn on their websites of scams, but clearly these warnings have had little effect and the scammers are finding ever new inventive ways to deceive trade mark applicants.

Any trade mark applicant should check carefully before parting with any funds to ensure they do not become another victim of these scams and always speak to their professional advisers if they receive a suspicious and unsolicited invoice.

What is unclear is what the authorities are doing about it.

News on OHIM Fee Reduction

The EU Registry recently announced a fee reduction from €1,600 for an online application and registration in 3 classes to €900. A draft Regulation is currently being prepared for adoption by the Commission, following which it will be published in the Official Journal. The fee reductions will take effect the day after publication. This is expected to be in early May.

Under the transitional arrangements agreed, applications currently in the pipeline, for which OHIM has not issued the request for payment of the registration fee by the date on which the new fee schedule comes into effect, will not have to pay the current registration fee of €850. For these applicants the €750 paid for an online application for up to three classes will be the only fee for the EU trade mark.

UK Intellectual Property Office – Fee Reduction

We recently blogged here about OHIM’s plans to reduce its fees for trade mark applications, and it seems the UK IPO are following suit with a plan to reduce trade mark application fees by 15%. The Financial Times reports here that the IPO are keen to ensure that the UK IPO trade mark fees are kept in line to stay competitive and remain attractive to UK businesses.

The IPO plans also include price reductions for those who want to oppose other people’s trade mark applications.

Although the 15% reduction seems slight  in comparison with OHIM’s price cut of 40% on applications, there is one aspect of the proposals which will be of particular interest to those concerned about cash flow in the current economic climate. The IPO propose to offer trade mark applicants the option to pay for only part of the fees up front, rather than in full.

Applicants will have to await the outcome of a consultation, meaning that the reduction is unlikely to come into force until October this year.