Category Archives: branding

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.

Pinterest will now have to change its name if it fails to obtain a licence from Premium Interest

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.

Entertainment_jpg

Battle of the Bands

Entertainment_jpgTrademarks can be one of the most significant of IP rights as a recent case involving the band Wishbone Ash  demonstrates.

The band was popular in the 1970s, and as often happens with bands, members came and went, so that eventually Andy Powell was the last man standing from the original group. He nurtured a new team so that the Wishbone Ash band still performs under that name. He registered the name as a European Community trademark. Then a former band member, Martin Turner set up a new band under the name calling his band Martin Turner’s Wishbone Ash. So, Andy Powell successfully applied for an injunction to stop the use of the name Wishbone Ash. Martin Turner is apparently appealing the court’s decision. The judge awarded Andy Powell more than £40,000 in costs and has ordered Martin Turner to deliver up all flyers, CD covers and other material which bears the Wishbone Ash name.

Over on Azrights trademark registration blog we recently reported the Nestle v Cadbury case which demonstrates how difficult it can be to secure trademark protection for colours. We also discussed the lessons to be learned from the Duffins trademark case about what to do during product creation in order to protect your brand.

 

Beware of Buzz Marketing

Online Brand Protection

Shireen Online Brand Protection BlogBeware of buzz marketing. Writing fake online reviews can land your business in serious trouble and cost you more than you gained in reputation or sales, as evidenced recently by a host of SEO companies caught up in New York’s “Operation Clean Turf”.

A year-long undercover investigation into the reputation management industry caught 19 small businesses engaging in astroturfing, flooding the internet with bogus consumer reviews on websites such as Yelp, Google Local and CitySearch.

Astroturfing is the practice whereby a business pretends to be an ordinary customer, writing glowing reviews about the business’ own products or services, or negative reviews slamming their competitors’.

In a crackdown last month, New York Attorney General Eric T. Schneiderman issued penalties in excess of $350,000 between the offending companies.

Schneiderman’s office discovered that many of the businesses probed had used techniques to conceal their identities, manipulating advanced IP spoofing techniques, setting up fake online profiles on consumer review websites and paying writers in the Philippines, Bangladesh and Eastern Europe to mock up false reviews. In the process, these companies had engaged in illegal and deceptive business practices, violating multiple state laws against false advertising.

“Astroturfing is the 21st century’s version of false advertising – and prosecutors have many tools at their disposal to put an end to it,” Schneiderman warned.

The law in the EU under the Consumer Protection from Unfair Trading Regulations 2008 is stricter than the USA, so that “falsely representing oneself as a consumer” in the context of promoting a product to consumers is a criminal offence, for which the maximum penalty is 2 years imprisonment and/or an unlimited fine. The Regulations are policed by the Office of Fair Trading and Trading Standards, which may also direct complainants to the Advertising Standards Authority.

There are plans to further strengthen the law so British consumers have the right to take direct action against traders for misleading or aggressive practices. The proposed law, when implemented, will empower consumers to make direct claims against traders with whom they have entered a contract or made a payment to as a result of misleading advertising.

Given the anonymity of the web and accessibility to a growing range of social media channels, it’s easy to see how so many businesses succumb to such underhand tactics. However, while astroturfing is unethical – and in most cases illegal – it should be remembered that the ultimate penalty is the PR own-goal scored when caught. Businesses build their brands, above all else, on trust. Being exposed for falsifying reviews and manipulating online discussions could therefore cause irreparable reputational damage, shattering consumer and client relationships which are the lifeblood of any business.

Reputation is critical to any successful business, no matter its size. Astroturfing is an unauthentic and foolish path to follow in a digital age where connection and sharing is just a click away.
The damage to reputation for any company caught trying to steer public commentary around their products and services could prove fatal for your brand.

To find out about the risks online and how to best promote and manage your brand, why not come along to this Own It event at which Shireen Smith will be speaking on 29 January 2014 at 18.30pm. For more information please visit www.own-it.org/events.

Trademark Registration A Lack of Finality?

Trademark Registration – A Lack of Finality?

Trademark Registration a lack of Finality?Over half a million trademark applications are filed each year throughout Europe, and a memo of the European Commission indicates that as of March 2013 there were nearly 10 million trademarks listed in European registers.  Putting it mildly, the Commission notes that “The demand for trade mark protection is high”.  But if you consider the essential purpose of trademarks, a problem starts to emerge.

Are the Trademark Registers too Crowded?

At their most basic, trademarks are a way for consumers to tell the goods and services of one business apart from those of another.  In principle, trade mark rights can also last indefinitely.  So, if the number of trade marks registered continues to grow in this fashion, with every combination, and every permutation being snapped up, surely businesses will run out of words to use?  Some people worry that it is already difficult to find a good .com domain name, but what would be the impact if you faced an uphill struggle when looking for a brand name you could use in general?  What if all possible brand names were taken, what would you call your new business, or products?

Fortunately, even if the rate at which trademarks are applied for is set to increase significantly, this scenario is far from becoming a reality.  First of all, just to cover all possible combinations of letters and numbers with marks only as long as the word ADIDAS would mean every single human being on the planet registering at least 10 trade marks, and that doesn’t take into account stylised text, logos, sounds, colours, shapes or other types of trademark.  Of course, the scope of protection extends further than basic identity – the use of a similar word can constitute infringement of a registered trademark, so not every combination of characters need be registered before it becomes difficult to conceive something novel.  However, this becomes even less of a problem once you account for the fact that the same trademark can be registered by different owners who are not competitors, but even so, the cluttering of the trademark registers is undoubtedly a valid concern.

Trademark Revocation

That’s why the role of trademark revocation is important.  Trademark registrations are not immortal, and although it’s feasible to maintain them indefinitely provided that renewal fees are paid promptly, there are a number of grounds on which a registration might be challenged.  One of the fundamental grounds on which you might apply for revocation of a registered trademark is that it isn’t being used.  Richard Arnold QC put it like this:

“The purpose of revocation is to remove trade marks or parts of the specifications of trade marks where there has not been use.  It is there to serve a purpose in trade; it is the Lipitor that stops the arteries of commerce being blocked with the cholesterol of unused trade marks”

Broadly speaking, if a trademark is left languishing for a continuous period of 5 years, it is vulnerable to revocation.  So, out with the old (owner) and in with the new.  But this is far from the only reason a trademark might be struck from the registers.

As discussed above, the purpose of a trade mark is to help consumers distinguish the goods and services of one undertaking from those of another, and once a word becomes the common name for something, it can lose this ability to designate origin.  This process is referred to by trade mark professionals as genericide – once a trade mark becomes generic it loses its distinctive character.  Some common examples of genericide are Hoover and Escalator – both of which are brand names which have become accepted into general language.  Once this happens, trademark registrations are on shaky ground.

Although far less common, another basis for revocation of a registered trademark is the argument that it is likely to mislead the public, for example if the trademark suggests that products have a particular geographical origin, or a particular quality when in fact they do not.

Invalidation

Aside from revocation, registrations can also be declared invalid.  Whereas the impact of revocation is that the mark is removed from the registers, if a trademark is declared invalid it is treated as never having been registered at all.  Trademark applications occasionally slip through the net, and so a registration might be invalidated if later on, it is discovered that a similar or identical trademark was already registered by someone else, or because another business had built up rights in a conflicting trademark by using it.  Alternatively, having been reassessed the trademark could be deemed descriptive in retrospect, and therefore lacking the ability to distinguish the origin of goods and service.

Should I still try to Register my Trademark?

So, registration is feasibly indefinite, but there are no guarantees as it suffers from a lack of finality.  Does this mean it isn’t worth registering? Absolutely not. The key message here is that there is far more to registering a trademark than simply making it onto the registers.  All of the risks mentioned above can be managed by taking care at the outset.  By casting a critical eye over your trademark before applying for registration, an expert will be able to assess whether it might later be deemed descriptive, or deceptive, and a professional search will reduce the chances of conflicting rights turning up out of the blue later on.  They will also be able to advise you of ways to maintain your registration, for example by using the registered trademark symbol you may be able to avoid genericide, alerting people to the fact that the mark isn’t simply a common word but an indication that you are the source of the product.

To help avoid losing your rights you should also take care to make genuine use of your trademark.  The concept of genuine use is complex, and you might be surprised by some of the situations which don’t meet this test.  For example, a manufacturer promoted its clothes by giving away drinks labelled with its brand, and because the freebies were not distributed with the aim of penetrating the drinks market, it was not sufficient to maintain rights over the brand in that class of goods.  On a related note, it’s important that you take care to use the mark in the way it is registered, and if you do make a change, for example by altering the design of your logo, you should consider whether it’s necessary to file a fresh application for the variation.

SkyDrive

SkyDrive Set for a Skydive? – Cloud computing service faces dispute over similar trademark

SkyDriveA recent decision of the High Court provides a useful illustration of the breadth of the rights granted by trademark registration.  In that ruling the use of SKYDRIVE by Microsoft for its cloud storage solutions, was found to infringe the trade mark SKY, used in connection with, among other things, broadband internet.  For context it is worthwhile getting a better picture of the rights you receive in exchange for successfully registering a trademark.

When you register a brand name as a trademark, you might assume that the law will simply prevent others from using that name in their business. However, the position is somewhat more complex, and the protection you receive is in a sense both broader and narrower than that.

Regular readers of our blog are likely already aware that when registering a trademark, that registration is restricted to certain specified goods and services.  For example, you might register YOURBRAND for use with clothing and accessories.  While this limits the exclusivity of your rights to a certain extent, such that another business might be entitled to sell cars, or make a TV show called YOURBRAND, you may still be able to take action if another business uses the same brand with goods or services which are similar to your own.  But what if the name they use isn’t exactly the same, just similar?

In fact, there are a number of situations when you might be able to take action upon discovering your registered trademark, or a similar trademark, being used without your permission.  This is because the law looks in detail at whether the marks are in fact identical, or just similar, and whether they are intended to be used in connection with identical or similar goods or services.

Even if someone uses just a similar brand, with similar goods or services, you can nonetheless take action if you can show that the public is likely to be confused.  If your trademark has a reputation and a similar or identical mark has been used without permission in a way which takes unfair advantage of, or is detrimental to, the reputation or distinctive character of your mark, that may also constitute infringement.

So, the strongest case arises when an identical trademark is used for identical goods or services, but neither of these elements are essential.

Returning to the recent dispute over use of SKYDRIVE on the basis of the registered trademark SKY, the court found that although the two trademarks were not identical, there was sufficient similarity between the two marks, and between the goods and services for which they were used, that a claim for infringement should succeed.

The court also found that there was infringement on the basis that Sky’s reputation in the UK is strong, that use of SKYDRIVE would reduce the distinctiveness of the SKY brand, and that Microsoft was not compelled, or otherwise had due cause to use that particular wording.

There are a vast range of factors which influence such a decision, for example in this case the fact that the word “Drive” is arguably descriptive of the service Microsoft provides, that the core goods and services provided by each business were complementary, and that third parties have created apps based on SkyDrive, such as SkyWallet, all supported the court’s judgment.

Serious repercussions can arise from unjustified claims so, given the wide range of factors that are relevant when assessing whether trademark infringement has taken place, it is important to seek specialist advice before taking action yourself.

Microsoft have said that they will appeal the decision, so the dispute is far from over, and it will be interesting to see if the company chooses to continue using the brand name despite this ruling, in the hope that they are ultimately successful.

Licensing- Don’t Risk Losing Your Trademark

Licensing – Don’t Risk Losing Your Trademark

If your business has reached the stage where you are looking to expand abroad or diversify into different markets, licensing your brand could be the ideal way of achieving this.

With licensing, it doesn’t matter if you haven’t the staff or the money to fund your expansion.  You license your brand to a third party that already has the staff and resources available within the target market in which you wish to expand.

The positives are many: it can be a lucrative move and can generate additional revenue for your business; it can increase your brand awareness; and it can help create new products for your brand without running the risk of failure on your part.

Licensing

Licensing Without Controls

However, licensing has its downsides, too, which can be exacerbated if you don’t manage your licensing effectively.  One of the biggest concerns to be aware of is loss of control.  So, whilst licensing can boost your brand’s strength, it could equally damage your brand’s reputation.

This is the risk you run if a third party is licensed to use your brand without any restrictions.  It’s not just your brand’s reputation that could be damaged; in some cases, a lack of monitoring on how a third party is using your brand name could result in you losing the rights over the name.

Eva’s Bridal Shop

Take the case of Eva’s Bridal Shop in Chicago .  In 1966, Eva Sweis opened a bridal shop under the brand name, Eva’s Bridal.  The brand built a reputation for providing top quality goods and services.  Eva obtained trademark rights in that name.

The trademark was used for generations; friends and family were allowed to set up bridal shops under the Eva’s Bridal label.  But in 2007, Eva’s Bridal attempted to take legal action against a former licensee for trademark infringement as he was using the trademark after the license had expired.  On the surface, this appeared a fairly simple case of infringement.

However, the original licence agreement exerted no control over the way the trademark was used, and the court ruled that this therefore eliminated Eva Bridal’s trademark rights in that name.

This is because licences over a trademark granted without any regulations or restrictions, are considered to be abandoning the trademark, no matter how long you may have previously had the rights over it.

Therefore, it is vital to ensure when you license a trademark to a third party, it is  not just an agreement stipulating how much you are licensing a trademark for, but also to ensure you have control over the way the trademark is used.

Trademark as a Symbol of Trust

Trademarks are there primarily to indicate to the public the origin of goods, and to protect them from confusion.  It enables the public to rely on a brand as a signifier of quality, or standard, and is a symbol of trust.

Therefore, if you are planning on licensing your business, be sure to introduce quality controls, and limit the distributor’s rights to sub-license the trademark.

How to License Effectively

The first consideration when approaching a licence agreement is to describe what is being licensed, and to take account of the extent of your trademark portfolio.  What specific products or services are covered and in which geographical areas?  Who will be responsible for filing further trademarks, and who will bear the cost of these?

As a general rule, it’s important for you, the licensor, to retain responsibility for the trademark registration.  The licence will be for a specific period of time and may impose a number of conditions.  In return, the licensee agrees to pay you royalties and is willing to do so because you have something that’s popular.

Licensing can be an invaluable tool to some business owners wishing to expand their brand, so, it is essential to make sure that licensing helps rather than hinders your business.

If you have had any experiences of licensing which you would be willing to share, I’d love it if you left a comment below.

Trademarks and Britain Overseas

Trademarks and Britain OverseasIncreasingly, awareness of the value of a brand is leading businesses to protect their names and logos through trademark registration.  As registration is territorial in nature, only offering protection in the particular countries where an application is filed, businesses typically begin by focusing on their primary market before extending their registrations internationally.  For example, a company which operates in the UK might file a UK trademark and then later take advantage of rules which allow that registration to be extended to other countries as their business develops.

There are a variety of ways to protect your trademark further afield, but it is important to appreciate that the scope of a UK trademark may not offer as broad protection as you might expect.  While a UK trademark covers England, Wales, Scotland, Northern Ireland and the Isle of Man, it does not automatically extend to Guernsey, Jersey, the Republic of Ireland or Gibraltar.  So, when devising an international trademark filing strategy it’s important not to lose sight of priorities which might be closer to home.

The Madrid system offers a way to register international trademarks based on an earlier filing, and a European Community Trade Mark (CTM) registration can protect your brand in nearly 30 countries, but it may surprise you to learn that, even together with a UK application, these will not cover all of your bases.  There isn’t scope in this article to detail all of the Crown Dependencies (such as Jersey or Guernsey) or British Overseas Territories (such as Gibraltar or the Cayman Islands), but to give an indication of what might be involved to trademark a name in some of the countries which might be relevant to you, we have summarised some of the intricacies of the system below.

Jersey Trademarks

Jersey has its own trademarks registry, and is not party to the Madrid system but is covered by European (CTM) registrations.  So if you have only registered your trademark in the UK, you would need to either re-register in Jersey or secure a CTM.  One curiosity is that, although UK registrations do not extend automatically to Jersey, an international application that designates the UK does offer protection in Jersey.

Guernsey Trademarks

As with Jersey, Guernsey has its own trademarks registry and is not part of the international Madrid system.  However, CTM registration does not protect your trademark in Guernsey, and nor will an international registration designating the UK.  So, it is necessary to register directly.

Trademarks in the Republic of Ireland

There are three ways to protect your trademark in Ireland.  If you operate elsewhere in Europe, then a CTM may the best way forwards, and you can also designate Ireland as part of an international application through the Madrid system.  Alternatively, if you don’t need wider protection you can file directly with the Irish Patents Office.

Trademarks in Gibraltar

The European system also covers Gibraltar, so if you would like to register a trademark in Gibraltar you will need to either file directly in that country, secure international protection designating the EU, or register a Community Trade Mark

Cover your bases

Only a handful of jurisdictions are mentioned above, and there are a range of former British Protectorates and Commonwealth territories, Bailiwick’s and other Crown Dependencies, and British Overseas Territiories which each have their own particular quirks.   Bearing in mind the diversity of routes available when registering trademarks internationally, through national registration, re-registration based on national marks, the CTM system, the Madrid Protocol and the Madrid Agreement, a well thought out strategy for securing protection of your brand is crucial.  Without expert advice, it’s easy to leave gaps.

If you want to protect your brand internationally, 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?

Your Brand and Your Domain Name

Choosing names that say what your business does on the tin may not be the best approach to choosing domain names online, despite it being an approach many businesses have adopted in the past.

Often, it seems like a good idea to follow in the footsteps of those who have gone before, taking what looks like the tried and tested approach.

However, whilst in the past descriptive domain names may have given businesses certain advantages online, recent changes to Google’s algorithm at the end of 2012 have done away with many of these previous benefits.

The early days of the Internet

When the Internet was young, and not unlike a small village with just one top shop, one grocery store, one pet store, and other businesses who were the trailblazers in their industry with a website, a tradition started of using descriptive names or phrases for domain names. People searching for these pioneering online suppliers could readily find them by using descriptive keywords to search for them, and search engines made the websites easy to find.  In those early days if you wanted to find a business chances are you would just type into your browser Books.com when looking for books or Hotels.com to find somewhere to stay and so on. Nowadays, less than 25% search in this way.

Google’s algorithm

As online business took off, and nearly every business put up a website, the online space became overcrowded.  A high ranking in search results grew to be the key objective of many businesses, as more and more of us turned to Google whenever we wanted to find a product or service, and so the practice of using descriptive domain names became entrenched because Google continued to give a preference to domain names describing what their potential customers were searching for. For example if you were called Jobs.com, you would be more likely to show up in the top results, assuming your website was otherwise well designed.

However, this led to marketers using “exact-match domain names” as a way to cheat the system, pushing low quality websites up in search result listings. With Google’s recent changes to its algorithm, Google has made it harder for sites to cut corners, ensuring that the focus is on quality and relevance. Today, Jobs.com does not even make the top 10 search results for a search for ‘Jobs’.

Brands over descriptive

Selecting descriptive names has never been good practice in branding, as these names do little to set you apart from competitors, but now with Google’s alterations to its algorithm, this method of choosing names is even more inappropriate.

Even before this algorithm change, the online environment that influenced people’s practices has been quietly moving on away from descriptive names, with users searching online being much more likely to opt to visit sites with recognised brand names. Rand Fishkin, a renowned online marketing expert and co-founder of SEOMoz, which helps websites get found online, summed up the point concisely in a recent blog post: ‘Unbranded sites may be losing significant amounts of traffic vs. their better-branded competition. Choosing a “keyword-match” domain seems like a worse decision than ever’.

We couldn’t agree more, and encourage readers to take care when choosing a domain name for products and services.  Choosing a distinctive name comes with a whole host of benefits, not least of which is the opportunity to own it through trade mark registration. It is also easier to deal with competitors who seek to copy your domain names. Do get in touch if this resonates with you, and you want to find out more about branding your business.