Tag Archives: trade mark

Are You Looking to Brand or Rebrand Your Business?

If you’re considering a rebrand or are setting up a new venture start by taking this post on board as it could help you avoid many mistakes people commonly make.

That’s because society hasn’t yet caught up with the huge changes the internet has caused. The way you go about rebranding needs rethinking, yet most people don’t realise this.

I remember hearing about the internet for the first time in the mid-90s during my intellectual property masters’ degree studies. My mind was completely blown away by Professor Chris Reed’s IT law lectures at QMW, London University.  Back then the internet was still very much about Janet an academic network. Professor Reed’s lectures were so inspiring in terms of the significant role the internet would play in our lives, that I was compelled to enlist my husband’s support- he is an IT professional – to get us a dial-up internet connection.

Over the ensuing years the internet has evolved to become what it is today – an essential part of all our lives and businesses.

 

What This Means for Business

It is still hard to believe that in such a short space of time the internet has evolved to radically change the rules. Its thrown many industries into chaos, and in other cases, the internet has subtly, and forever altered how we need to approach things, including branding.

The upshot of these changes, as highlighted in my two books, Legally Branded and Intellectual Property Revolution mean that IP now needs to be one of the first considerations when there is a new project or brand to create.

 

IP is Part and Parcel of Business

So many people I come across say: “What is IP?” And those who are aware of it, assume it’s to be dealt with in the same way as in pre-internet days. Largely, IP is considered to be something you might want to consider if you’re wildly successful or if you prefer to protect your IP rather than just using it. It’s perhaps unsurprising that society hasn’t yet caught up with the changes, given that it’s still just 20 years or so that the internet has been around.

More than 70 % of corporate value today comprises intangible assets. Intangibles are governed by intellectual property law. Without question intellectual property in the form of patents, trade secrets, copyright, trade marks, contractual relationships, and know-how comprises a significant portion of some of this value.

What is less well appreciated is that these assets do not automatically just exist. Some steps often need to be taken to turn ideas into IP. IP could be lost if not identified, captured, and secured, or if the wrong choices are made – such as of the name for a business or product. The wrong name really can make business so much more of a struggle. The name is the most important way to make a business distinctive and must be chosen with the involvement of trade mark experts.

Leveraging IP is how value embedded in it is realized. An awareness of intangible assets is the way to manage them, and preserve the investment a business makes in its brands

 

How Aware Are You of Critical IP Issues Affecting Your Business?

 Thinking about IP first when you have an idea or project, is a good way to start managing and protecting IP. Have a strategy for handling your IP.

Why is failing to capture your Intellectual Property a costly problem?

It is surprisingly easy to overlook the importance of IP at the early stages of developing your ideas, and to lose the entire value of your business in the process, simply because of a lack of awareness of IP.

Inventors and entrepreneurs often believe that simple tasks like choosing a name for a new product do not involve particular legal consideration. This is not true. The name is too important to choose without reference to trade mark expertise.

For example, you could lose everything overnight as Scrabulous found out. The business was unaware that using a name that was similar to someone else’s trade mark would be a problem. Two Indian brothers developed an app that allowed people to play a word game online with friends anywhere in the world. It was a huge success. Hasbro, the owner of the Scrabble trade mark, found out about the company and had no trouble getting Facebook to pull the app. So the business vanished from one day to the next.

Had the two brothers realised that their choice of name could shut them down they would have chosen a different name for their online game. But they didn’t take advice from trade mark experts.

 

Not Realising You’re Making IP Mistakes

But this isn’t the only way names can cause problems. People are often unaware that it’s their keyword rich name that blatantly describes their business services that’s the cause of their lack of success. This is something difficult to understand because from a search engine and marketing point of view descriptiveness is no bad thing. But to name your brand with a descriptive term is plain wrong. This is one of the biggest mistakes I see people make and what’s worse they may never realise that the reason business is a struggle is precisely because of their name.

Another example of how failure to understand IP can result in loss is the Karaoke machine.

Mr. Daisuke Inoue, the inventor, earned nothing from the billion-dollar industry that the invention spawned. He never thought of patenting his invention until it was too late. Had he done so it could have made him millions.

Reflecting on their experiences, one can’t help feeling ‘it’s not fair!’ that it was the multinationals and not them who made massive financial gains from these inventions. However, their case is not unusual and even now many inventors know little about their intellectual property rights.

The lesson is simple – if you are an inventor, or entrepreneur you need to know about IP.

Business and IP are intertwined. Don’t think of embarking on branding without first looking at IP. Use a trade mark lawyer who “gets” branding to support you in any naming exercise.  Why? Because IP and trademarks are one of those subjects where a little knowledge is a dangerous thing.

image rights

Image Rights. Do They Prevent You Using a Celebrity’s Image?

image rightsIn the lead up to the Christmas and new year season, most of us are accustomed to seeing television advertisements featuring well-known actors and personalities endorsing a range of luxury products such as perfumes and watches.

Indeed the John Lewis Christmas advert is a television advertising campaign which is released in the build-up to Christmas. John Lewis launched their first Christmas advert in 2007. It has since become something of an annual tradition in British popular culture, The adverts tend to attract widespread media coverage and acclaim upon their release

Obviously a personality like Sean Connery will have been handsomely rewarded for endorsing a famous brand of watch. The question people often wonder about is to what extent a person, famous or otherwise, can control the use of his or her image or likeness on products or services. Can, for example, use Sean Connery’s image to sell your calendars bearing his image on the front cover?

In the UK there is as yet no recognised legal right of publicity or personality. This means that a person has no specific legal right in the UK to control the unauthorised use of their image or appearance.

Celebrities do have some legal remedies though, so be careful before you use a famous person’s image. Has the celebrity registered their name or signature as a trade mark?

Even if the famous person has not registered a trade mark of their image or likeness, that person may still be able to successfully challenge use by others of their image on the basis of  passing-off, which is a legal remedy that protects the goodwill which has been built up by a person in their business. Their argument would be that you are wrongfully appropriating that goodwill. To succeed, they have to prove 3 elements: a recognised goodwill in the UK, a misrepresentation by the defendant, and damage caused to the claimant’s goodwill.

For present purposes, the key element to be proved by the famous person or celebrity is misrepresentation: will the public be misled into believing that my 2020 calendar bearing the image of, say, Sean Connery on its cover has been approved by or has some connection with that former Bond star?

branding

Is Branding A Superficial Cosmetic Activity or A Substantive Exercise?

brandingThis is a question I used to wonder about. Deep down I believed ‘brand’ and ‘branding’ to be essentially a surface, cosmetic exercise.

As for ‘personal branding’ the activity had connotations of people learning to be false and less than real. After all, if they spent time thinking about how they wanted to come across, surely that meant they would be artificial rather than authentic?  Such people would be too focused on creating the ‘right’ impression rather than being themselves. This is what I used to think.  I doubt I’m the only person who has thought in this way about a brand.

 

Where do prejudices like this come from?

I was wondering where such prejudices about ‘branding’ came from, and whether others share them.

Perhaps it has something to do with the fact that there was a time when brand was all about image. Did the hangover of that era create this impression of brand being superficial surface stuff, I wonder?

Now that my views have changed I don’t like to admit how I thought about branding. However, I think there is a benefit to examining such prejudices to see whether they are widespread and shared by others.

 

Meaning of design

As Steve Jobs put it “Some people think design means how it looks. But of course, if you dig deeper, it’s really how it works”.

In brand creation, the link between design and branding may be one reason the activity is perceived to be about surface veneer.

I remember a few years ago many of the big law firms were all undergoing rebranding exercises. Invariably this involved shortening of their names, unveiling new logos, colours, and slogans – but for all one could tell it was just new visual designs and business as usual.  The businesses didn’t seem altered in any substantive way after their rebrands.

I could understand it more when a company like Norwich Union rebranded by changing its name and becoming AVIVA. Its old name was parochial and limiting. If the business wanted to be perceived as more international it definitely needed a name change and new identity.

Then there was BP rebranding from British Petroleum to BP, adopting the green colouring everywhere.

Yet that business seemed to lack an effective belief system to respond appropriately in the face of the oil spill disaster.

Their rebrand seemed to have been a surface exercise in design work. For all the information they put out about their values, none of these seemed to drive the business’ behaviour and response, and therefore seemed to be a surface, superficial exercise.

 

Branding books

I have read hundreds of books on branding, and now that I understand the anthropological and social basis of it I know it’s a really important tool in business if properly dealt with.

Clarifying your philosophy and how you mean to function as a business when setting up or rethinking any venture, be it a commercial undertaking or a charity, is crucial to success, provided those decisions are embedded within the business appropriately so that they determine how the business behaves and reaches decisions.

The trouble is that many people invariably assume this branding exercise involves working with designers to get a new visual identity. This is wrong thinking that needs to be debunked.

Branding is not just about the visual identity

The prominent association some people have with the brand and visual identity may explain why I and others have perceived the branding exercise to be cosmetic and surface, rather than having any deep meaning.

My own experiences of branding never allowed the amount of time and space one needs in which to think through the brand philosophy. The branding experiences were invariably spaced out over 3-4 weeks – which is insufficient time in which to make fundamental, profound decisions about your purpose and mission, values, and what brand promise you want to be known for etc.

 

A Design Brief

For a designer faced with a client that hasn’t done the work on their brand yet, the problem is how to deliver a visual brand identity. So, I totally get why the designer can’t just create a visual identity without knowing what the business is all about and wants to communicate.

The problem is that clients go to designers with no real design brief. So, designers invariably and necessarily need to ask questions and delve as deeply as it’s possible to do in the time available, in order to find out about the business, and its values.

That is the way to arrive at a brief from which to design the visual identity needs to change.

The fact that businesses have done inadequate thinking about their brand strategy before they turn to a designer is the root cause of the problem. It leaves it to the designer to tease out this information so that they can do their job.

Naming calls for different skills

It’s expecting too much of designers, who also have to come up with new names and slogans too to help their clients to embed their philosophy into the business.

The naming side of a brand is really an exercise that calls for completely different skills and shouldn’t be left to designers to deal with.

For naming and slogans, you need trade mark lawyers who could involve a copywriter or linguist to help brainstorm name ideas if necessary. Designers don’t need to be involved at this stage of the process. When you’re finding out who you are, why others should care, how you will operate and so on, you just need to work with a brand strategist that understands trade mark and other IP laws, and the marketing and other aspects of branding.

It’s only when that is all clarified that you need a designer to give visual expression to the brand.

You should choose a name once you’ve understood your target market and what resonates with that market.  You don’t choose the name because of what it will look like in a logo. That would be rather superficial in my view, when naming something, to be worrying about its visual manifestation as a logo.

 

Ideal Process

The ideal branding exercise to give a business a brand that will be its central core and soul is one where you spend many months working out your business brand, and brand strategy, including your positioning. Only once that stage is completed would you be ready to identify a name and slogan.

This is why we have created a brand strategy offering for our clients. We can then give guidance to clients on names. I have spent years studying and understand brands – having realised it’s the optimum way forward to give clients the best possible outcome for their brand work.

Not all trademark lawyers can offer such a service yet because the lawyers would first need to thoroughly understand what’s involved in a branding exercise so they can help you create a suitable name and tagline.

So, I want to emphasise that the expertise that’s needed during this first phase is NOT design related. You’re thinking through things like what marketing messages will resonate with the target customer. Is the chosen name or slogan one that the customer would respond to? Is it capable of functioning as a trade mark? Is it available? Does it reflect the positioning without actually describing the activity? Who better to work with at this stage of brand thinking than a trade mark lawyer who has undergone a solid training in brand?

Your brand is what drives your business, a set of promises and assurances that customers should think of when they see or hear your name. It is your unique identity that resonates with your target audience and differentiates you from your competitors. The name and slogan are the root of that identity.

 

When it’s Appropriate to Seek Designs

Once this first stage of the brand work is completed, and appropriate legal checks have been carried out, and trade marks registered, it would be appropriate to turn to designers to create the visual brand identity.

The exercise that began with IP first to assess which IP rights are most important to the business model, and concluded with legal protection of the brand identity, would mean the legal identity would be firmly and correctly sorted out and locked down. So, a detailed brief could be produced for designers to create the visual identity.

Given this level of detail, the designers would at the very most need a one-hour meeting with the client to get the information they need to produce the visual identity.

 

Approach to Branding

This approach to branding should be what small businesses do, because it brings down the overall costs for the client. The visual identity costs will be a fraction of the price designers now need to charge. The visual design price would therefore drop because designers no longer need to spend time learning about the business and teasing out its mission, values and so on.  Nor would they need to do work that they’re not well placed to do, such as devising new names and slogans.

As such the client is the winner. They have much greater clarity about their brand when constructing their business model and I suspect this would impact their success rate in business because they could design the business correctly and be better placed to build on solid foundations.

So, I advocate separating the legal identity and brand strategy from the visual identity. They need different advisers. Azrights supports clients with brand strategy and naming, while the visual identity is then undertaken by designers who we can introduce, or you can find yourself.

 

Brand Guidelines

Another difference in the outcome is that instead of the brand guidelines being focused purely on the visual dimension – the logo and colours, the client would get two sets of brand guideline – one focused on the brand strategy, covering issues such as communications and embedding the brand into the culture of the business, while the visual brand guidelines would focus on use of logos and colours, as they do now.

With the correct strategy, your brand will gain in value over time. This value will come from the positive reputation your business develops. For more information read my earlier blog on how to establish your brand.

podcast_shireen_smith

Legally Branded Podcast – Why Is Failing to Capture Your Intellectual Property a Costly Problem

podcast_shireen_smithHave you successfully captured your intellectual property? Why is failing to do so a costly problem? Let’s look in more detail at the disastrous consequences of failing to capture your IP.

Click to Listen to Legally Branded podcast.

Topics Discussed in this Episode:

  • Why it’s not enough to simply register a trade mark
  • Why it’s important to take great care of trade marks
  • Why failing to address IP can result in lost opportunities
  • What to do when you discover gaps in your trade mark protection

 

Key Takeaways:

  • It is surprisingly easy to overlook the importance of IP in the early stages of the creative process. Some people believe that tasks like choosing a business name for a new product or service do not involve legal considerations, that they can pick any name, do a check on Google, and if nothing untoward is found, proceed to use the name.
  • It’s actually trade marks that govern ownership rights in names, so it’s essential to search the trade mark registers. A Google search is not enough. Not everything you need to know about a name shows up on Google.  People risk losing everything overnight when they use names that don’t take account of registered trade marks of others.
  • Online searching has its place but it’s no substitute for information focused on transforming ideas into reality. While there’s a wealth of information on the web, a crucial issue when it comes to intellectual property advice online is that much of what you find is generic, sometimes outdated, inaccurate, conflicting, and may vary depending on where you’re based.

 

Action Steps:

  • If you’re an inventor, writer, coach, marketer, creative or entrepreneur, you need to know how to identify the various IP rights you’ll be creating as you turn ideas into reality. Some basic tools at your fingertips will help you take initial steps to protect IP like doing due diligence.
  • When you have new ideas to implement, you’ll need to know the right actions to take, the right processes to use to protect IP that’s being created.
  • If you discover gaps in your trade mark protection, find out how to address them with the help of education and DIY. And consult a lawyer if you have remaining questions.

 

Shireen said:

“The internet has revolutionised the way we look for information, entertainment, and even relationships… So it’s increasingly common for businesses to look for legal advice online, too.”

 

“If you don’t know what you don’t know, how can you search for it or know whether you’ve found out everything you need to know? …You need to learn to do things properly if you’re going to do your own trademark registration.”

 

Thank you for listening!

 

Look into my Legally Branded Academy Course to guide you along the way to a successful implementation of ideas and save yourself significant amounts of time doing your own researches!

 

If you have any questions, connect with me on your preferred social media platform. I’d love to help! And if you’ve learned from this series of podcasts, do consider leaving a review.

 

Links to my books and online courses:

  • Books:

 

More from Shireen Smith:

Shireen’s Facebook Page

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Shireen’s Instagram

Shireen’s LinkedIn

Shireen’s YouTube

Shireen’s Website

Azrights

 

App_idea_protect

Legal Ways to Protect Idea For Your App

App_idea_protectBefore you discuss your idea with developers think about legal protection. Whatever the idea, it’s important to develop the habit of being selective about who you reveal your ideas to during the early stages before you’ve explored the possibilities. That’s because confidentiality is the only way to protect a mere idea. 

If you have an idea for an app, chances are the first thing you’ll want to do is to find someone to develop it for you. I’d advise against discussing the idea with any developers at such an early stage.

You’ll likely be keen to take action to get going with your project, so I’d suggest you interview a number of developers to understand whether they would be suitable for your project without actually telling them about the idea itself. 

Have another “idea” to discuss with them rather than your actual one as you find out about their past experience in developing apps, whether they have testimonials or client references, how they charge and so on. Look at their legal agreement, and if they don’t have one, that might mean they are a very early stage business, and not perhaps as skilled as you need them to be. Most established businesses should have terms of business. So, take the opportunity to read through their agreements and proposals. Do you understand everything? Will you get the rights you need?  Are they open to negotiation on important points such as copyright ownership?

The law says Buyer Beware. In other words, it’s up to you to look out and make sure the agreement with the developer protects you. If they have no written agreement, then the law automatically gives them the rights in the App they’ll develop for you. So, you are the one who needs to find a suitable agreement to use with them if you’re going to use a developer who has no existing terms of business to provide you with.

Reserve discussions about your actual project for the few you decide are worth getting quotes from. Like that you avoid the need for NDAs every time you want to talk to someone, and get to keep your idea secret while you’re critically assessing it.  Yet you’re still taking action towards implementing your idea. 

Confidentiality is the very first intellectual property right to bear in mind to protect you which is why it’s so important to keep your actual idea under wraps in these early days.

Contrary to popular belief, it will rarely be relevant to consider patents when it comes to an app. The legal protection of apps is primarily through copyright.  It’s highly unlikely that an app will involve an invention that could be patentable. People often assume that patents are going to be relevant for an app, but that’s not the case.

If app ideas could be patented it would mean that magic cabs who initially had the idea for an Uber-like taxi service would have been able to lock down the idea with a patent, thereby preventing anyone else from developing a similar offering.  That’s what people often wish intellectual property would give them, and when they find out they can’t stop someone else from also developing a similar idea they are disappointed and may even turn their backs on intellectual property. However, IP is extremely important even if it doesn’t provide a monopoly right over an idea.

Every idea will involve different intellectual property considerations. Some will highlight design protection, others will involve patent protection, and yet others will involve copyright. All concepts provide an opportunity to develop a brand.

So, the way to protect an idea for an app is to keep it confidential initially when discussing the idea. Use a good legal agreement with the developer, and make sure you secure copyright from the developer in writing before you commit to engaging their services. Otherwise, you will not own the copyright in the app. You will simply have a right to use it and the developer will be the one who has the rights to exploit it. 

Then once the app is developed there is a range of actions and decisions involved and legal protections which you might obtain. For example, you could register designs of the visual features of your app, or to choose a legally effective, legally available name for the app, which you register as a trade mark. Note that you risk creating a liability for your business rather than an asset if you don’t check out the name properly. Google research is not enough.

I’ve created a course specifically for anyone developing a new idea, be it for a new business, or a new project within an existing business. There I explain how to protect your copyright position, provide a template and process, and show you how to do trade mark searches. To get all the guidance you need when developing ideas, including on how to choose a name that will protect your market share and revenues go to www.azrightsintl.com and scroll the home page to find my courses listed there.

Court Rules on Playboy Domain Name Dispute

IPEC dismisses Playboy domain name claim

Court Rules on Playboy Domain Name DisputeThe Intellectual Property Enterprise Court has published its judgment in Ross v Playboy Enterprises International, Inc [2016] EWHC 1379 (IPEC). The court dismissed the claimant’s claim for declarations of non-infringement, groundless threats and entitlement to retain a domain name.

The claim arose out of the claimant’s ownership of the playboy.london domain name. The defendant, as owner of the world famous PLAYBOY trade marks, relied on a decision under the Uniform Domain Name Resolution Policy (UDRP) stating the domain should be transferred to it. The court held it did not have the authority to overturn the UDRP decision except in the case of manifest error, which was not relevant to this claim.

Evidence adduced at trial showed the claimant intended to use the domain name to chronicle the childhood and adolescence of his children. Access to the website would be restricted to users who had been given login details by the claimant. Accordingly, the court found there could be no trade mark infringement because the claimant was not selling any goods or services from the website. However, the judge ruled the claimant could not rely on the groundless threats provisions of the Trade Marks Act 1994.

The claimant claimed his use of the word PLAYBOY in the domain name was an ironic reference to himself. The judge concluded this irony relied on the reputation and goodwill in the PLAYBOY mark. Accordingly, the claimant’s use of the domain name would lead to passing off.

The court held it did not have the power to overturn the UDRP decision and the application for a declaration was an attempt to circumvent the court’s lack of jurisdiction. The judge further reasoned that granting a declaration stating there had been no trade mark infringement would not serve any useful purpose, since a similar declaration in relation to passing off could not be made. On this basis the claim was dismissed.

‘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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How To Secure An Unusual Trademark

Whilst the most common use of trademarks is to legally protect brand names or logos, this is by no means the only way in which a trademark reinforces a brand.

Trademarks act to identify the source of a good or service to consumers, and therefore a trademark can cover any aspect of a brand that denotes a particular company in the mind of consumers. For example, as mentioned on the Azrights blog Cadbury secured the colour purple as a trademark, Coca Cola has trademarked its iconic glass bottle shape.

With the Internet making competition ever more fierce, and difficult for brands to stand out, securing an unusual trademark could help give your company that added distinctiveness which competitors could not emulate. However, securing an unusual mark is not straightforward.

The way Coca-Cola was able to get a monopoly over its bottle shape demonstrates what can be involved in securing an unusual trademark.

Coca-Cola & its distinctive bottle shape

The design of Coca-Cola’s instantly recognisable glass bottle is highly distinctive. Even feeling the contoured bottle shape in the dark can be enough for the identity of the brand to be instantly recognised. Coca-Cola’s bottle shape helps it to stand out from the crowd because no other drinks manufacturer is able to copy its bottle design.

However, this is something that the company has had to gradually achieve over a number of years.

In order to be granted a trademark for the shape, Coca-Cola first protected the bottle design with a registration which gave it a monopoly over the design.  In the EU a design registration gives you a maximum of 25 years protection. Therefore, although a design registration is effective in the short-run, in order to ensure long term exclusivity Coca-Cola needed a trademark.

In order to get a trademark granted Coca Cola had to make sure the bottle design was associated in consumers’ minds with its name.  So, the bottle needed to be identified with the brand whenever they saw the bottle. To achieve this, the company promoted the bottle heavily during the time it had design protection.

Once consumers did identify the bottle shape with Coca-Cola the company was able to secure a trademark over the bottle shape.  This means that as long as Coca-Cola renews its trademark, and uses the bottle shape, no other company in the world can use such a bottle shape.  That is very powerful IP indeed.

How you can secure an unusual trademark

So if your company wants to gain a monopoly over a particular brand identifier, make it can become synonymous with your brand.  You’ll need to put appropriate intellectual property rights in place in order to stop competitors copying your branding in the meantime. So, if you want to associate a shape with your brand, make sure you register it soon enough, using a series of images to properly protect the design first.  If you have an effective registration that can give you a monopoly over the shape for 25 years, then vigorously promote the design as something that is synonymous with your brand. For those on a smaller budget, social media may make it more affordable to achieve such a task without breaking the bank.

If you want to secure a trademark in a colour, or other unusual identifier, 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?

Minimising risks when Starting a Business

Lisa Rosen recently wrote an interesting guest blog post on Onstartups, which gave an insightful analysis into the benefits of starting your own business. She controversially states that not going into business and remaining at your day job, is actually more risky than the alternative. She hangs her article on a quote from Robert Gronock, ‘he who sleeps on the floor will not fall off the bed’, as a useful analogy to explain the trade off between staying in your job versus deciding to make it on your own.

Starting your Own Business

With the Internet revolution and consequent changes in society, large companies are increasingly maintaining a smaller core of staff. Some partner with other companies or outsource when they want to deliver projects requiring larger teams.

Consequently, there are increasing opportunities to work as a consultant, or to turn to self-employment and entrepreneurship.

Some consultants, especially in the IT industry, are able to rely on servicing the needs of larger global organisations given the reduced overhead counts of these organisations, and their constant need for additional resources.

Startups

In the beginning, many start ups just have an idea.

Individuals setting up a business may be on a tight budget, while others may be well resourced, having worked in full time employment before leaving to work on a business they are passionate about.

The UK government is positively encouraging this trend and sees entrepreneurship as a key way to employment creation and growth within the economy. The Hargreaves terms of reference  were motivated by the Government’s desire to remove any legal impediments to business in the digital age.

The Hargreaves report envisages that reforms to the national and international IP system can promote innovation and growth and add up to £7.9 billion to the UK’s economy. The changes have the potential to add up to 0.6 per cent to annual GDP.

The number of people setting up in business is increasing all the time, and even accounting for the number or companies closing down, there is an overall rise in the number of new businesses.

Building a Safety Net

As Lisa’s article highlighted, starting your own business can open yourself up to potential failure. However, there are certain precautions that can be taken to help minimise this risk.

Namely, it is important to protect the assets you create when building a business through the use of IP. A recent survey by the UK Intellectual Property Awareness Survey 2010 revealed that small businesses are effectively unaware of the IP system.

This lack of awareness can and has caused some businesses to fail unnecessarily.

For businesses who aspire to grow into a larger company which is successful not just locally but internationally, it’s essential to pay attention to IP.

Managing legal resources

For those on a limited budget when starting out, consider your priorities and spend resources appropriately both to manage legal risks and to get the business off the ground.

In terms of spending on websites, it’s best to start small at proof of concept stage. Using a WordPress platform can be a good option as these sites are easily tailored around a new visual identity later, allowing you to start affordably and readily adapt the site later. It’s very easy to change the design of an existing site.

Legal advice

Relying on Google for legal advice rather than on lawyers is a risky strategy. Legal information though seemingly within easy, affordable reach, can be out of date and incomplete. And most importantly, you don’t know what you don’t know, so how can you search for it?

It is feasible to manage your legal work cost effectively, depending on the nature of the project and the compromises you are willing to make.  The best way to do so is to start by taking overall guidance from a trusted legal adviser with whom you could work later as your business grows. Until then you would be able to do your own legal work, if that’s what you want to do.  Not everything of a legal nature can or should be managed without qualified legal input.  Many IP rights fall into this category.

On the other hand, if you have no legal input from someone who understands the legal landscape that’s relevant to your project, you could unwittingly neglect important legal issues. Neglect might easily end up costing you ten times as much on litigation or other legal work later sorting out problems.

Conclusion

So how do you ensure that you don’t fall off the metaphorical bed?

Understand that there are certain risks that come with starting a business; implement a plan to manage them, identify the work you will do yourself and work you will delegate to a lawyer or postpone. This can help create a safety net that is vital for all start-ups and can help ensure that starting a business involves fewer risks and more gains, giving you a blissful, undisturbed night’s sleep, so to speak.

This blog is part of a series which discusses IP law in relation to starting a business

Yoga and Copyright – Stretching Boundaries

Yoga is an increasingly popular form of exercise involving the performing of a series of postures for health benefits. These postures named asanas originate thousands of years ago from India. But, as within religion, different schools evolve and branch out often attributed to the life’s work of a particular individual. Bikram Choudry who opened his first American yoga studio in Beverly Hills in the 1970s developed a ‘hot version’ of yoga practice. He developed a sequence of 26 postures to be performed in heated rooms. His school of yoga has met with particular success with over 600 establishments in the USA alone.

Interestingly he is the first to have registered copyrights for the postures (see third post) and enforces these creative works unrelentingly. The aim being to standardise his workout in his licensed schools and prevent any brand dilution.   In June 2002 he sued one of his previous students as the latter had been using music in classes and not heating the room to the prescribed temperature.  Amongst some of the claims against the student was breach of licence as a franchisee, copyright and trade mark infringement. This was settled out of court for an undisclosed sum.

However it is somewhat debatable to what extent a sequence of pre-existing postures may attract copyright. Registering copyright in the US does not necessarily mean it is validated; the act of registration simply ‘establishes a public record of a copyright claim’.

A few years later a collective of yoga practitioners, named the Open Source Yoga Unity, brought an action against Bikram challenging the validity of his copyright in the sequence of postures. Both parties petitioned the court for summary judgment, a legal procedure to request the Court to review the substance of the issues and decide whether either party has a case, but the Court denied both motions. The case was later settled. The judge, when delivering his order on summary judgement, commented in principal on the validity of copyright in a sequence of postures and alluded to the possibility that a compilation of yoga asanas can be ‘protected under the copyright laws in the same manner as other compilations’ (see page 3). The level of protection would be deemed to be ‘thin’ for this type of copyright involving ‘exact or near-exact duplications of his [Bikram’s] yoga sequence’ (page 4).

Due to the settlement, no court has yet had to decide on the actual validity of Bikram’s copyright claims.

Some opined that Bikram yoga is a ‘system’ and, as a result under US law, would not benefit from copyright protection. (page 10 of extract)

The same author also argued had Bikram described his sequence as an ‘expressive dance and accentuated its aesthetic value’ then he could have been accorded maximum copyright protection. This is on the basis that the ‘standard of protection for dance was quite broad’ (page 17).

Rather Bikram has lauded the medical benefits arising from application of the system in its entirety, which makes one consider whether patent registration may be more relevant. This is because the system may be described as a ‘functional process’.

What is of interest here is that the Indian government, reacting to the perceived threat of privatising Indian culture, have been collating all known asanas into a ‘prior art’ database to prevent the patenting of yoga – this database is due to be published over the next couple of months. However this would still not preclude yogi entrepreneurs from creating original compilations of the forms and potentially attracting copyright protection.

Even with uncertain copyright claims, Bikram Chowdury has managed to build a strong global brand. Being the first to franchise yoga he opens possibilities for other health practices to take inspiration. Will we see the next tai chi or shiatsu offshoot relying on the copyright of their particular system to build their business?

Indeed, part of his success may been down to him ‘policing his rights aggresively’ (Judge Hamilton see page 7 ). In particular this approach has benefitted his trademark by preventing it from becoming generic over time. In contrast PILATES, another form of restorative exercise, became unregistrable in the US as a trade mark due to it signifying a type of activity rather than denoting the origin of the services, namely the founder Joseph Pilates. This brings into sharp focus the importance of adopting a proactive stance to trade mark protection.