Tag Archives: trademark registration

Protecting Name

Why You Need to Protect a Name and Other Intangible Assets Immediately

Protecting NameThe 7 Costly Mistakes People Make When Turning their Big Idea into a Business, or when Branding or Rebranding Anything

Since a brand gives your idea or product identity, not registering it as a trademark leaves you wide open.

Your market share could be stolen by a competitor if they use the same name and register it themselves because you haven’t bothered to do so.

Can you imagine what it would mean to your business if somebody else registered their business using your name or one very similar to yours, even though you used the name first?

It would cost a lot of money to argue it out with them. Effectively, you risk losing ownership of your own name!

If you weigh the very affordable cost of registering your brand versus the cost and trouble of legal suits over an unregistered name, you will understand why it is wise to take no chances.

The same way you secure your website or Shopify site with a password or your physical business with doors and security right from the start so you should secure your intangible assets, such as your business name.

If you take the security of your brand and IP with the same seriousness that you take your website security and physical business’ security, you will be on the right track. It is a big risk not to register your brand name as a trademark immediately you decide on a name.

Many entrepreneurs have watched their businesses go up in smoke – not from the theft of their products but from the theft of their idea, their brand – which is the very essence of their business. All because they did not take any measures to get a good name and secure it right from the beginning.

Do bear in mind that registration alone does not give you the protection you need though. You first need to establish that the name is available for you to adopt. That means getting a trademark lawyer’s advice on it as mentioned in Mistake #5. The UK and EU trademark offices will not stop someone else registering exactly the same name as an existing trademark. In the USA, the USPTO would stop a duplicate registration though.

So, assuming you are in the UK or EU, or some other country that allows duplicates registrations, then remember you get no protection simply by registering the name. This is clear from the case of Microsoft’s SKYDRIVE!

Not protecting the brand and visual identity through trademark registration is a mistake

Of course, trademarks are not the only type of IP to worry about. Remember, you don’t get any protection for your idea or invention if you disclose it before registering a patent, and you have a limited window of opportunity to secure design registration for an innovative design concept. And when it comes to trademarks, there’s a lot more to them than simply registering a mark.

Lack of protection risks your distinctive brand elements becoming generic. Coca Cola would never have secured a monopoly over its iconic bottle shape if it had not protected its designs at the outset when the design was first created.

Conclusion

In a nutshell, when you have an idea take the right steps to turn it into valuable intellectual property. IP assets don’t automatically just exist. You need to identify, capture and secure the IP in your idea. That involves making the right choices, such as of the name you give it. Otherwise, you could fail to create value from your idea.

The lesson is simple – if you’re an inventor, or entrepreneur with an idea, IP is crucial to you as is the brand you create. If you have an idea to better serve your clients, an idea to make your difference in the world, then give it the best chance of success. Take account of IP as it will be important to your plans.

Find out more how BrandTuned helps you turn that idea into commercial form or to fine tune your existing brand and business.

brand name dispute

Brand Name Dispute

brand name disputeBrand name disputes occur all too frequently because the trademark registers are increasingly cluttered and it can be difficult to find available names. You may be found using a name for one purpose, but as soon as you use it for another purpose you could actually be facing a brand name dispute.

When you use a name or other brand symbol that someone else claims to have a better title to, or if you find someone using confusingly similar branding to yours and want to challenge it, you have a dispute to deal with.

As it is not widely appreciated that it is necessary to check the trademark registers before using a name, brand name disputes are one of the most common ones we see.  For example:

  • A client secures their desired domain name, sometimes spending thousands of pounds, only to receive notice that its use infringes on someone else’s trademark rights. The rights to use of a name stem from trademarks not from domain or company name availability.
  • If a domain name is registered that is deemed to be a registration in bad faith, then you could be challenged to return the domain to its rightful owners. For example, even if you have managed to buy a domain name for the name cocacolaclothing.co.uk for your online clothing business it does not mean you are entitled to use that name to sell your line of clothing.
  • A logo is registered as a UK trademark, but an EU trademark owner believes it infringes on their word trademark and sends a cease and desist letter requiring the withdrawal of all products bearing that logo.

Sometimes someone may simply be using their own name in the business, but this may conflict with a registered trademark. For example, if your name is Paul Smith and you are a fashion designer, you would have a potential dispute to deal with if you decided to set up shop as Paul Smith, given that the trademark rights of the famous designer Paul Smith in fashion and clothing would block you.

 

Resolving the dispute

Brand name disputes usually take one of three forms:

  • Either the dispute is in relation to registered trademarks – these may involve opposition to a trademark application or a cease and desist letter threatening court proceedings.
  • Brand name disputes can also occur if someone is using a name but hasn’t registered it as a trademark. In that case, they would argue ‘passing off’ and possibly threaten court proceedings. Or if you have applied to register a trademark they may either oppose your trademark application based on their earlier rights or apply to cancel your registration if you have already registered the mark.
  • Domain name disputes – now whether or not the brand name is a registered trademark, and no matter how strong or weak your position may be, the starting point for addressing any brand name dispute is to get specialist advice so as to decide how best to respond.

You may need to change your name and will need to use someone who both understands brands and names.  It is so important to use a trademark expert who ‘gets’ branding rather than simply asking a brand agency to help you. Leaving the legal dimension till after the choice has been made could expose you to a further dispute, or leave you with a name that can’t uniquely belong to you.

European Trademark Registration

European Trademarks

European Trademark RegistrationIf you are doing business in a number of different European countries then, rather than registering your trademarks in each jurisdiction separately, you will likely apply for protection at the European level. 

This enables you, through a single application, to  secure protection in all 28 countries (and counting). 

Unless you only need protection in one or two member states, a European trademark is a far more cost effective, and straightforward solution.

However, it is not without its risks. While a trademark application in just a single country generally just faces the possibility of an objection from other brand owners in that country, a European Community Trademark can be opposed by an existing trademark owner in any one of the 28 member countries of the EU.  This would then block the entire trademark.

So, how can you minimise your risks? The key is to commission professional searches to identify potential obstacles before you commit to a mark, and file your application. You might begin by initially looking at the UK and European trademark registers, before then expanding the search to the national registers of each EU country. International searches like this can be quite expensive, and offer diminishing returns, so it is important to discuss what degree of searching is appropriate with your legal adviser. It is never possible to eliminate the risks entirely, but through appropriate searches, you can improve your chances without blowing your budget. Your attitude to risk, and the funds you are willing to commit to searching, will generally depend upon how critical your brand is to your business.

But what if you do encounter a problem? That is not necessarily the end of the road. If your European application is opposed by a business with rights in just a single member state, the first step will generally be to negotiate with them, and see if it is possible to come to an agreement allowing both businesses to coexist. Under some circumstances, it might not be possible to reach an amicable settlement, in which case the European trademark courts may resolve the dispute.  However, this can be costly for all involved.

If, ultimately, you do decide it is best to withdraw your application in that particular country, all is not lost as you are free to file national applications in those European countries from which you did not face an objection. However, there are no guarantees that those national applications would not face objections from other trademark owners.

A key issue when it comes to trademarks is what is known as the priority date. Typically, this is the date on which you file your trademark application, and the date from which your registration is effective. If you were to entirely withdraw your application following a dispute, and refile national applications, then you would receive a new priority date. However, it is possible to convert a European trademark application into a group of national applications, and retain your original priority date. An important advantage of doing so, is that your application will, broadly speaking, take precedence over others which were filed in the interim.

Still, converting a European application to national applications, or refiling directly in the relevant countries, can become very expensive as fees are payable in respect of each territory. So, where resources allow, it is best to carry out appropriate searches in advance. You can find out more about national, and international trademark registration on our dedicated website AzrightsTradeMarkRegistration.co.uk.

Trade mark registration and brand extension in China

Trademark registration and brand extension in China - Chinese FlagChina 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. While the Chinese system of trade mark registration shares many common elements with the European regime there are subtle differences that can be a trap for the unwary, and in this blog post we are going to take a look at two of them.

Classification

Throughout much of the world, trade marks are categorised according to the Nice Classification. This system sets out 45 classes of goods and services for which a given trademark will be used, for example class 25 covers clothing, class 9 covers software, and class 41 covers education, among other things. The same trademark name can be registered in different classes by non-competing businesses, and you can find out more about trademark classification here.

Although the Chinese trademark system does make use of the Nice Classification, it further divides these classes into narrower subcategories. This means  the same mark can be registered in the same international class, for similar goods or services, provided that the registrations fall within different subclasses. For example, general footwear, and football boots, would fall in different subclasses, and the same trademark might be registered by different companies in each.

A cost effective, and efficient way to protect trademarks abroad is by using the Madrid Protocol system of international trademark registration. This mechanism lets you extend an existing application or registration into a number of different countries in one go, rather than filing in each individually. However, the international applications must be filed in the same classes, and against the same goods and services. Typically this is not a problem, but in China, while it may be cost effective at first to file using the Madrid system, you may find that you also need to file an application directly to ensure  you are protected in the correct subclasses. In fact, where you have the resources available, registering a national Chinese mark may be the priority.

Translation, transliteration and Chinese characters

While in the UK, and Europe generally, you often only need to consider the English language trademarks that you use with your products, there are several dimensions to securing trademark protection in China. The original brand name may be a priority, but your business, products or services will also become known by a name in a local dialect. Unless you develop a strategy early on, you may find that the market has chosen a brand name for you. This is what happened in the early 1990s, when Chinese businesses began using Chinese characters to approximate the sound “Coca-Cola”. Unfortunately, though the wording used may have had a similar pronunciation, actual translations of the text included “female horse fastened with wax” and “bite the wax tadpole”.

So, well in advance of taking steps to extend your brand into China, you should decide how you would like to be known. Beyond your domestic branding, you will need to consider translation or transliteration of your name, whereby you either use words in a local dialect to approximate the sound, or translate the meaning of your trademark into Chinese. Coca-Cola were lucky to find a Mandarin pronunciation which had a positive meaning (“Ke Kou Ke Le”, roughly “permitting the mouth to rejoice”), but you may not find it so easy. You will also need to consider registering your trademark in Chinese characters, and the position is further complicated by the fact that many different characters have the same pronunciation, so the best approach will depend on the particular name you choose.

Timing and Manufacturing

IP squatting, whereby trademarks are registered by a local entity which then trades on your success, or which tries to sell the rights back to you, is a problem in China, where it can sometimes be big business. So, timing is  important. If you wait for your plans to mature, you may find  it’s too late, and a local Chinese business has already adopted your branding, as happened to Starbucks. While the coffee giant eventually won its legal battle with the Shanghai coffee corporation, it could have avoided the costly dispute if it had registered its own brand in good time.

It is typical for businesses to outsource manufacturing of their products to China, and in doing so license their Chinese partner to use their trade mark for that purpose. In some cases, the Chinese manufacturer, or another entity in China, will hijack the brand, registering it as a trade mark 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 trade mark infringement, stopping production in its tracks. So, even if you manufacture but don’t sell your products in China, it is crucial to secure local trade mark protection.

Though not relevant to every business, if in the longer term you hope to manufacture or sell in China, it is prudent to take steps quickly to protect your interests.

To find out more about trademark registration in China and elsewhere, please submit an enquiry.