Tag Archives: trade mark registration

Trade Marks

Why Trademark? Essential Thinking Inspired by The Road Less Stupid

Trade MarksIn the book, “The Road Less Stupid: Advice from the Chairman of the Board” Keith J. Cunningham describes how smart people do dumb things. Business is an intellectual sport, yet many entrepreneurs and business owners cause themselves problems due to their “excessive optimism and emotional belief in magic pills, secret formulas, and financial tooth fairies. (All balloons look good when they are filled with hot air.)” says Cunningham.

The key to getting rich (and staying that way) is to avoid doing stupid things”.

I notice people’s tendency to freely spend on magic pills, secret formulas, and financial tooth fairies as Cunningham describes them while postponing or overlooking obvious steps to protect their business. People want to buy things that promise them a way to make money, but something like ownership of intangible assets that will secure the foundations of their business is neglected. It’s boring intellectual property which they don’t even want to take the time to understand, let alone secure and protect.

Trade mark registration and brand protection are basic first steps to take, there is no sense in postponing or putting this off, and I’d suggest that anyone looking to think better should revisit this subject with an open mind

But do note Maynard Keys’ observation that “Most people, when confronted with a choice of changing their thoughts or proving there is no need to change, get busy on the proof.”

 

Trademark Registration and Brand Protection

I have just spent a few thousand pounds extending my Brand Tuned UK trademark registration to the EU and USA.

You may wonder why I would bother to do this. The name is nothing particularly special, the brand name is not generating any money for the Azrights business as yet, and we’re on the cusp of a serious world recession, so nobody wants to be throwing money around.

However, it’s a name I’ve checked is available to me to use and I want to secure my rights in it. It might be worth explaining my thinking in case it helps you to make decisions for your business.

I’ve seen how much inconvenience, hassle and expense people go through when they don’t take this basic step of protecting the brand name they’re using in key markets for their plans.

As a general rule, it costs ten times as much to deal with the complications that can arise when you don’t protect your name than the cost of registering the name in the first place

Names and trademark registration are very similar to the ownership of physical property and should be thought of in the same way.

If you simply squat on land on which you are developing properties and don’t secure ownership of the legal title, your tenure would be insecure. You could have the rights taken away from you or otherwise lose them. Someone else or events outside your control might shatter your peace and enjoyment of your property.  Do you want to risk that with your brand?

Who wants to pay stamp duty and solicitors’ fees that are part and parcel of transferring the title to land? Given the choice, I reckon many people would postpone this cost and avoid the expense of acquisition. However, they go through the buying process with physical property largely because they understand that it’s a necessary aspect of owning land, of building on the land, and developing their life or business around ownership of that land.

While the same applies to names that we use in business, this is less well appreciated.

The first step is to secure rights in a name by registering a trade mark in your home market. If you simply use a name without registering it, then you set yourself up for costly litigation if someone else also starts using the name or registers the same or a similar name first, making it difficult for you to co-exist.

While people commonly register their own trade marks, I wouldn’t recommend it unless you take a lot of time to understand how to do it properly. In the same way, I wouldn’t recommend registering your land yourself even though it’s as seemingly straightforward to do so now that we have the land registry system in place for physical property.

Cost of Ownership

If you use an experienced lawyer to do the work for you, the total cost might be £1,000-£2,000 including official fees (that is, the equivalent of stamp duty) in the UK. You could save on legal fees and just pay the official fees (stamp duty). However, based on the number of poorly registered trademarks I’ve seen, it’s not worth the saving to do your own registration. Ultimately, you want a piece of paper you can rely on when it comes to enforcing your rights in your name, not just a piece of paper.

The trademark registries in all the countries worldwide are online and make it seemingly easy to register your rights yourself, but if you want to be properly protected get the best lawyer you can afford to do the drafting and scoping of your trademark for you. Just accept it as the price of owning your brand name.

That first registration gives you 6 months’ protection worldwide meaning you get priority protection in most countries provided you go on to extend your registration to your chosen markets worldwide within this 6-month window.

I had registered Brand Tuned in the UK, and the 6 months’ time window expired on 14 June to extend that protection to other countries of my choice worldwide.

Why Extend Internationally?

For Azrights, a trademark I registered in 2006, I hadn’t bothered and have still not bothered to extend the protection beyond the UK. The fact that I’m bothering with Brand Tuned is indicative of why there is no universal strategy for trademarks. Much depends on your plans for the business.

Some businesses might not need to extend beyond their home market, while others will need to extend their trademarks to some countries but not others. No business, not even the big household name brands, will be able to afford to register in every single country worldwide. It’s a matter of risk mitigation and knowing what could go wrong in different countries.

At the end of this article I highlight why China is a market that some businesses may need to concern themselves about.

I haven’t bothered to extend Azrights beyond the UK, even though there are theoretical risks I face, primarily because Azrights, though it protects brands internationally, does so as a UK based business. It might attract customers located abroad but the work is always conducted in the UK and then extended internationally using the system provided for international registration of IP.

How Lack of Protection Can Hurt a Business

An example of why it’s important to think strategically when protecting a brand is provided by US online dating website plentyoffish.com launched in 2001. UK competitor “Plenty More Fish” set up in 2006 and in 2007 filed to register a fish logo and the words PLENTY MORE FISH as a UK trade mark. The US site opposed the application but lost because it did not have enough UK subscribers to be able to claim earlier rights in the UK.  It should have registered an EU trade mark as that would have blocked other businesses registering similar names in any country within the EU.

Their failure to do so, enabled another business in the same space to use a similar name and ride off the back of their marketing spend and success. This would never be allowed to happen within a country’s borders because it’s recognised that there would be a negative impact on the revenues of the existing business, not to speak of potential loss of reputation if the newcomer provides a shoddy service which customer confusion will inevitably lead to attribution to the bigger brand.

The Azrights UK trade mark currently protects the business in the EU but perhaps we may think again about whether to secure an EU trade mark given that the UK will be leaving the EU at the end of this year.

Azrights is not an online business. It’s primarily local, based in the UK, so although it would be highly annoying and inconvenient if a new business were to set up in other parts of the world using this name, it’s not a significant enough risk to justify filing internationally.

Why I Registered Brand Tuned Internationally

For Brand Tuned, on the other hand, I have a podcast by that name, and intend to create online products under the name, among other things. If someone else stole the name and registered or began using it in the USA or EU first, they could require me to rebrand in those countries. This seemed a risk not worth taking.

It’s necessary to have a name you can safely build your business around. Not protecting the name in these two markets could be a massive inconvenience for us, and it would be costly to make changes. That’s why I have registered in those markets. I didn’t need to pay much in the way of legal fees (the US lawyer’s fees were quite modest) and we handled the EU application ourselves. So, most of the thousands I’ve had to spend is purely down to the official fees in the USA and EU. That’s like a stamp duty you pay to get 10 years of ownership rights in your brand name.

To add context, mine is a lifestyle business. I’m not intending a big exit or any of the traditional things people associate with international trademarks.

 

China as a Risk for Those Manufacturing or Intending to Sell There

China is now the second largest economy on the planet and has become a key market for businesses worldwide. So, securing ownership of your brand in China should be an important part of your plans.

If you hope to manufacture or sell in China, it needs to be an early consideration to take steps to protect your trademark rights in China.

It is typical for businesses to outsource manufacturing of their products to China, and in doing so license their Chinese partner to use their trademark for that purpose.

In some cases, the Chinese manufacturer, or another entity in China, will hijack the brand, registering it as a trademark and securing ownership of the rights to it in China. Case law on this point is developing, but there is a risk that such a hijacker might bring an action against the manufacturer for trademark infringement, stopping production in its tracks. So, even if you manufacture but don’t sell your products in China, you need to secure local trademark protection.

 

Conclusion

As Keith J. Cunningham uniquely puts it, “the name of Napoleon Hill’s book is Think and Grow Rich. It isn’t “Use Your Gut and Grow Rich” or “Sit in a Dark Room, Om, and Visualize a Sack Full of Money Dropping on Your Head and Grow Rich” or “Do What You Love and Grow Rich.” It’s not about touching yourself, closing your eyes, or relying on fantasy economics (which are only effective in fantasies). And it’s certainly not a “Secret.” It’s THINK! (There are no secrets . . . just stuff you haven’t learned yet.)”

His book is well worth reading if you want to add to your tool belt, knowledge, and insights to support you in being thoughtful about your decisions and decision-making process prior to taking action.

As far as trade marking goes, you need to think seriously about getting your trade mark rights in place. You will have a more effective business if you build it on solid foundations, so make it a priority to secure your rights in your brand name immediately.

When Does a Start Up Need to Register a Trademark?

Every time you create a product, service, or business, you need a brand identity for it. Without a doubt, the most important element of most brands is the name.

The law protects names through trademarks, not copyright.  

It is not possible to claim copyright in a name, even if the name is one you made up.

Start ups often wonder whether they need to spend the money to register a trademarkSome wonder why it’s not enough to have registered a company or domain name. Yet others have heard of unregistered trademark rights being acquired through use, and wonder why they should not just use the name without bothering with any trademark registrations.

Company and Domain name registrations are insufficient

The short answer to whether company or domain registrations are enough is no. Domain and company names do not give you the necessary rights you need in a name.  The fact that they are available to register does not mean you may use them for any purpose you like. You still need to establish whether anyone has trademark rights in the name you’re intending to use as your brand name. 

Trademark registration is the way to protect a name, and get the necessary rights you need in that nameIt is not a good idea to rely on unregistered trademark rights in the brand name in which you will be building your brand equity.  

What is a good name?

A good name will help you to build brand value and to successfully secure trademark registration in the word. But to pick a name that works involves more than meets the eye at first. 

As well as conveying the desired personality characteristics, sometimes across world markets and in multiple languages, it’s essential that the brand name be legally available and distinctive.

Often a name is the first issue you need to consider before beginning work on designs, websites, and marketing materials.

Should you register the name?

It all depends on how important the name is to you.  If you’ve found a name you are excited about and want to use long term for your business, then you should immediately register it as a trade mark, before you do anything else. That’s the way to establish ownership rights to a name.

If you are not that bothered whether you can use the name long term or not, then don’t worry about trademarking.  Once you’ve established that you are not infringing on anyone else’s rights, just go ahead and use the name.

Conclusion

So, when you’re starting a new business, pick any name based on whether your desired domain name is freely available to register. Don’t spend too much on getting an identity sorted for your business either. The focus should be on finding a suitable niche and positioning for your business and testing it.

You can have more than one niche, but best to move forward one niche at a time.

So, initially focus on getting the business off the ground.  If your business is viable and works, you can rebrand (by which I mean getting a visual identity in line with your brand values) once you’ve found your feet.

At that time, you could even pick a new name, so you can save if you’re willing to choose a temporary brand name to use as well as temporary designs in the early days. 

On the other hand, if you have coined a really inventive name, and like it, or don’t want to have the hassle of a rebranding exercise later, then, of course, you should invest in the name by properly protecting it with a trademark. 

brand

What Makes an Outstanding Brand

Last week in Why Purpose is Paramount I explained that it’s the responsibility of the leaders of a business to work out the “why” for the business. When looking for the purpose behind a business find one that’s capable of inspiring the team and customers too. Your “why” should be a belief that galvanises you into making long-lasting positive changes that drive growth and innovation. A business’ purpose needs to motivate team members who are involved in the business.


I was intending, this week, to explore how purpose-driven organisations stay core to their mission by keeping their “why” uppermost. However, as I began to research this topic, I realised there is a lot of ground to cover. So, I’m postponing those pieces till next year. 

Instead I’m going to do an in depth focus on differentiation, and positioning to explain how a business might attempt to stand out among its competitors. This is fundamental to successful branding, and is part and parcel of the branding work that gives rise to intellectual property issues.

Up to now I’d stuck to my core skills of intellectual property law due to the school of thought that one should stick to ones core subject and not foray into other areas. However, given that intellectual property is part and parcel of business, a narrow perspective that purely considers intellectual property doesn’t serve many of the small businesses I often help. If I only discuss half the issues people face, then I’m potentially letting businesses receive the wrong type of help for their branding. You see a problem I notice is that some web developers, designers, marketers who help small businesses with their identity work,  don’t themselves understand IP. So they tend to not take a holistic approach and often neglect the legal dimension meaning that what is arguably the single most important decision a business makes gets side lined.  However, as people don’t really understands intellectual property, the consequences are not immediately apparent to them. For example, the business may not do so well down the line because it has an inadequate name that doesn’t protect it from competitors stealing its market share.

Intellectual property is just a means to an end. It’s rarely the end itself. So, when businesses are creating a brand, choosing a name, having a logo developed and devising their brand identity or promotion campaigns, that’s when they also need to find out about intellectual property. IP is simply part of the exercise.

Therefore, it’s appropriate that I offer holistic help by taking in non-legal topics from now on. This is especially so as I do understand the wider issues about branding very well, having been in business for 14 years, read a lot of business books, and even received advanced training in business. Indeed, a few clients have asked for me to help with naming too. So I am capable of guiding a business through the branding process.

Differentiating a business

When you have an offering or a way of doing business that is unique to you it becomes much easier to succeed as a business.

You should formulate your strategy for how to stand out from competitors. Then execute on your plans.

Differentiation effectively involves working out what messages to communicate to consumers so they know that buying from you will give them a specific benefit. This benefit must be powerful enough to influence a buyer to choose your business over all the other available options.

This is easier said than done, if the legal market is anything to go by. I’ll write a separate post about the issues for law firms. For now I just want to highlight how possible it is to find that virtually every message you come up with to differentiate yourself doesn’t distinguish you or competitors are saying the same things. Where there is insufficient differentiation between businesses customers choose on price, and that is the problem the legal industry faces. That’s why the business models that are winning in the legal services market invariably focus on reduced prices.

Differentiation strategy

Whether you get help to work out your differentiating strategy or deal with all your own “branding”, even design your own logo, I can’t stress how important it is that you take ownership of the differentiation strategy. You know your industry and service offerings better than anyone.

Once you do clarify how you will stand out, you should translate your differentiating proposition into a name, logo, and tagline which embody the values of your business and positioning. These are the elements of a brand that the law protects through copyright, design and trademark registrationand are usually when people get outside help.

It’s really important to know what you’re doing when it comes to names, and taglines. My Legally Branded Academy course gives you all the knowledge and search instructions you’ll need to get this important aspect of your business and initial legal protection covered off. Don’t assume that people you turn to for help will know all about intellectual property, because often they won’t have sufficient in depth knowledge of intellectual property, and many of them don’t work with specialist lawyers.

Common problems with brand identities do tend to centre around names, logos or taglines. For example, a commonplace logo may be an image of a bunch of flowers for a florist.

Descriptive elements might work from a marketing perspective but they don’t serve you from a legal perspective. If they are purely descriptive of the products or services you sell then names, and taglines will be incapable of protecting your market share.

The very choice of name itself could expose you to loss of revenues. Also, if the name wasn’t properly checked, then you risk trade mark infringement actions against you, years down the line when your business might have taken off and succeeded.

Descriptive names may seem attractive to start ups who want their name to immediately convey what it is that they do. However, being simply descriptive means the name won’t function as a trademark. This matters because it means you will have a hard time stopping copy cats down the line if you have a successful business.

 Unless you understand both the legal dimension and the marketing dimension when choosing brand elements there is every possibility of choosing ones that are either incapable of functioning as a trademark or which are not legally available for the user

Why descriptive names are a problem

Hotels.com is an example of a descriptive name that the business has been unable to register as a trade mark. They’ve spent a lot of money in pursuing registration and arguing with the USPTO but they didn’t succeed.


Bear in mind when choosing names that on the internet there are no shop signs or geographic areas to attract passing traffic. With an offline shop called ‘Books’ someone driving past may notice the bookshop for reasons other than its name. For example, the shop may stand out due to its striking window dressing, or by virtue of its location, or simply because it is now there instead of the print shop that used to occupy that space. On the web, people will only find you through your brand name. So, the last thing you need is to get lost among a sea of similarly named businesses. You should definitely opt for very distinctive names for an online business, similar to Google, Twitter, Amazon, Yahoo and so on.

 

Had John Lewis developed a strap line saying: ‘We will refund the difference if you buy goods from us which you find at a lower price elsewhere’ that would have conveyed their ethos but it would not have been capable of trademark protection. By going further and converting this concept into ‘Never knowingly undersold’ they ended up both with something catchier and with a unique tagline that is capable of trademark protection.


A while ago we introduced a strapline for Azrights – Easy Legal Not Legalese – which we have trademarked, but admittedly not made much use of.

What it means when you can secure trade mark protection of a slogan is that competitors may well copy the differentiation idea behind your slogan – for example, branding themselves by reference to their use of ‘plain English’ – but they won’t be able to copy your strapline.

In the early days that may seem unimportant when a strapline is not well known. But it’s by protecting and making use of a strap line that businesses like NIKE have become known for – JUST DO IT, or Coca-Cola is immediately recognised when we hear “The Real Thing” If you don’t protect brand elements like slogans then your distinctive branding will become generic as others can use it with little consequence.

It’s when a brand is successful that it pays off to have built and protected the brand elements of its identify carefully in the early days. So, think about the legal dimension of your branding once you’re serious about your business because it can potentially comprise 70% of the value of your business.

Trade Mark Infringement – What’s Skype Got To Do With It?

What will your trade mark be?A recent General Court of the EU decision in the Sky v. Skype body of cases that has spanned the last decade, will not be the final straw for Microsoft.  According to the BBC Microsoft who owns Skype, after acquiring it in 2013, has announced its intention to appeal the decision. This may be seen as a bold and sensible move since Microsoft is in the process of expanding the brand to replace their Lync product.

What this decision means

This decision prevents Skype from registering for trademark protection, it does not prevent Microsoft from using the Skype brand. Some pundits have suggested that Microsoft may pay a fee to licence the name. At this time, Microsoft has not confirmed that they will be pursuing this route.

It is important to note that this limitation on registration has a jurisdictional limitation. Both companies, which operate globally, will only be bound by court decisions in the European Union. For example, this means that Microsoft’s registration of Skype in the United States will continue to protect them from trademark infringement there.

The Court issued a press release stating that its reasoning for not permitting the registration is that there is a likelihood of confusion between the figurative word and sign for Skype and the word mark for Sky.

Other cases

This is not the first match-up between Sky and Microsoft. In early 2014, Microsoft was forced to rebrand following the decision that their SkyDrive cloud storage product created a likelihood of confusion with Sky’s mark. The SkyDrive was later renamed OneDrive in order to comply. In its decision, the Court reasoned that the identical portion of the marks coupled with the allusion to the sky and air transmission and similar nature of the products offered made it likely that consumers would be confused.

As Sky is a litigious company, and they have gone to great lengths to protect their brand, there are numerous case examples of where they have either filed a complaint or+ alleged infringement of their trademark. One such examples is of the Livescribe dispute that was filed in 2012. In order to avoid litigation, Livescribe, maker of the Sky Wifi pen, opted to rebrand in the UK.

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.

How To Protect Your Intellectual Property Rights Even In A Recession

A Business’ IP is often the most valuable asset it generates.  So just neglecting to protect your IP in these recessionary times when budgets are tight can have adverse and long term implications—especially if there is a time limited window within which your IP may be registered.

To avoid a large hole in your IP portfolio when trade picks up, it’s important to be savvy during these tough times, and manage your Intellectual Property actively by either taking advice on strategy, or having an IP audit if you have an IP portfolio.

IP Audit

An IP audit is a great way to review your domain, trade mark, design or patent registrations. It will look to identify ways in which you may consolidate your portfolio or make savings. If you’re lucky, there may even be unexpected surprises, such as product licensing opportunities that may have been overlooked.

An IP audit helps in prioritising those IP rights that add value, whilst weeding out non-essential or redundant ones by letting them lapse or consolidating them to avoid paying renewal fees.

Strategic consultation

If you are a smaller business, consider having a strategy consultation. With the access to information that the internet has opened up, it is easy for SMEs to assume that they do not need to pay for advice.  So they will often do their own research, decide whether they need to register a trade mark, or design, and then buy that service.

Often the opportunity to find out about other IPR protection, such as trade secrets, or copyrights is missed, as is the possibility of establishing from an experienced practitioner whether there are alternative ways of achieving your desired objectives.  These could well be more cost effective.

For example, we often find that SMEs are really keen to protect their logos with trade marks, but are less concerned about trade marking their name.  Yet protecting the name is generally far more important, and there are other ways of protecting logos which are missed.

OBIS – Do Your Own IP registrations?

Proper advice, combined with doing your own registrations, could be a cost effective way forward during these recessionary times. Our product OBIS which was released in beta last month enables you to do some of your own legal work under our overall guidance.

This includes trade mark and design registration. DIY may not appeal to everyone, but if the alternative is to fail to protect essential IP, then it is preferable to not securing essential registrations. Using an assisted self help system such as that available on OBIS is better than simply doing your own registration by using the IPO’s assistance.  The IPO is very helpful, but will not check your form to pick up some of the glaring mistakes I have seen SMEs make when they file their own trade mark applications.

Product naming

Another useful step to reduce outgoings during these tough times may be to put in place a policy to guide your marketing team when selecting product names. Some name choices may reduce clearance costs.

Failing to have proper trade mark searches is a serious risk which no business should run. However, it may be feasible to opt for less extensive searches if they would be good enough to guard against the risk of infringing on the rights of others. By consulting an experienced intellectual property lawyer, you will be able to put in place a search strategy for your business which will be appropriate to the risks in your industry, and to the type of product you are releasing.

Other brand protection measures not to be neglected

Other basic preventative steps you may want to consider to reduce your legal exposure are to register your name on popular social networking sites, and paying relatively small sums to have company and trade mark watch services in place which will help you catch problems early and avoid more costly litigation later.

Remember too that a patent only gives you a right to stop others using your invention. Consider whether you have all the necessary permissions you need to make your product.

The key is to make your investment in IP go as far as possible, taking steps now to protect it, and avoid problems instead of having to overcome them later.

Why TWITTER application for drinks could fail

Continental Wine & Food Limited has applied to register the mark TWITTER for beer, wine and other alcoholic drinks;  Can they do this?

As a general rule trade marks are granted for particular activities – that is, classes. So you indicate which business categories you want to use your brand for when applying for your trade mark.  This limits the scope of your rights in that name.  There are 45 classes of goods and services, and trade mark filing fees being expensive, it would cost you a lot to include all 45 classes.  Anyway, even if you wanted to do so, you would have to have a genuine intention to use the mark on all the classes, and as there are thousands of descriptions within each class you still may not succeed in locking others out entirely from using the same name as yours for their non competing business.

Once you are granted the trade mark you get exclusive rights to use the name or logo in relation to those business categories you included in your application form.  You also get some level of protection over overlapping areas, but this is a grey area, and sometimes involves litigation to determine.  So it is much cheaper, if in doubt, to include the class, to ensure you obtain protection in all the classes that are appropriate to your business.  Otherwise others might register to use the same or a similar name in other areas of activity, locking you out from extending your brand to those areas in future.

That is how it happens that the same name is registered by several different non competing businesses. For example, POLO is a registered trademark belonging to three businesses operating in different sectors – cars, confectionery, and clothes.  Another famous example of a registration shared by two famous brands is APPLE.  They are both registered in class 9 but as technology and music have converged their co-existence has been problematic and caused disputes.

In practice an effective way of drawing inspiration for names is to look at the trade mark registers and choose names you like which are registered for totally non competing business categories.  This is what happened in Exxon Corp v Exxon Consultants International Ltd (1982).  Exxon tried, but failed to argue that Exxon Consultants should not be allowed to use the name EXXON for insurance services.  Their argument was that they had paid substantial amounts of money to have the name developed.  Therefore they claimed copyright in the name.  The Court disagreed.  It said that it is not possible to have copyright in a name.  There would be too much overlap with trade marks if people were able to claim copyright in a name.

So, the only way to own rights over a name is through trade marks. On this basis you might think that TWITTER for drinks should get through.  However, different rules apply for well known marks.  Have you noticed how only COCA COLA uses the name COCA COLA, or MICROSOFT uses the name MICROSOFT?
It will be interesting to watch this application to see whether TWITTER opposes it.  A possible ground of objection is that the applicant is using the sign TWITTER without due cause and is taking unfair advantage of it, or that its use is detrimental to, the distinctive character or repute of its trade mark.

Google loses Gmail trade mark case

Google’s unsuccessful EU wide trade mark application to register the name ‘G-mail’ shown here is a salutary lesson about the importance of registering rights to a brand early, and in all countries in which you hope to use it. When an EU application is successfully opposed in any one member state, as it was here, the entire application fails (although it may then be converted to individual country applications).

It is expected Google will appeal (see media report here) But in the meantime Google will not be using the name Gmail in Germany or the UK where the mark Gmail is registered by the Independent International Investment Research. This was also the subject of a dispute with Google (now settled on terms whereby Google agreed to use the word Googlemail instead of Gmail in the UK).