Category Archives: Intellectual Property

10 Years of the IPKat!

IPKat 10th BirthdayIt was a pleasure to celebrate the 10th birthday of the IPKat yesterday with blogmeister Jeremy Phillips and friends, and having had a thoroughly enjoyable time I wanted to say a few words personally about the value Jeremy has brought to the IP community.

Managing and contributing to the IPKat, one of the most renowned, freely accessible resources of information for intellectual property enthusiasts and professionals, whilst balancing numerous other commitments like moderating and contributing to about 10 leading blogs on IP law, also set up by Jeremy, is a task Prof. Phillips does day in day out with flair and enthusiasm.

Jeremy’s innovative approach of using the internet to reach out to a wider audience beyond academics and practitioners is certainly worthy of recognition. Prior to the arrival of the internet, access to information on legal subjects would be provided in printed form. These publications would be housed in university libraries or practitioners would subscribe to the specialist magazines or journals. It was a very niche and specialist world, with considerable barriers to entry. Having set up the first trademark blog in the UK, Prof. Phillips was a pioneer of the use of blogging as a platform to promote the free and rapid exchange of ideas on IP and to entice the interested public to engage and read about IP issues which affect them.

Arguably Jeremy’s greatest contribution, is his peerless ability to build IP communities through writing, networking, and the events he organises, and his approach is always inclusive. His work has encouraged open international dialogue and cooperation, developed relationships between practitioners, and inspired among many an inquisitive attitude towards intellectual property that can only have a positive impact upon the way in which intangible rights benefit our society.

Jeremy’s degree of dedication to people is outstanding, as a teacher he regularly assists students in finding jobs within their chosen field, is constantly writing references for them, and has a knack of spotting and nurturing talent.  He regularly organises free seminars and events, and while developing an engaging community where there would have been none before, Jeremy also still finds the time to give individualised responses to all those who write to him or comment on his network of blogs.  Overall, it’s not an exaggeration to say that no other individual has shown this level of commitment to the IP community, and I’m looking forward to what Jeremy and the IPKat have in store for the next 10 years!

This post was co-authored by Stefano Debolini

Apple granted a trademark over physical layout of the Apple Stores

Fifth Avenue Apple Store (Image courtesy of Wikimedia)

Trademarks can protect more than just a brand name or logo. Chocolate maker Cadbury successfully trademarked the shade of purple associated with the brand, while Coca-Cola famously managed to secure a trademark over its iconic Coke bottle. But, in typical ‘think different’ fashion, Apple has now gone a step further, and legitimately trademarked the physical layout of its popular retail stores.

Although not the first instance of a shop interior being granted a trademark, the news has attracted a lot of attention. The U.S Patent and Trademark Office twice rejected Apple’s efforts to trademark the store layout, before finally accepting a “distinctive design and layout” after additional documentation was submitted.

The stores are known for their sleek and uncluttered look. Apple reportedly spends an average of $10 million launching each individual store, usually located in carefully selected upmarket districts. Attention to detail is taken very seriously- the sandstone flooring is imported directly from Florence, while the late Steve Jobs even patented the minimalist glass staircases himself.

Apple’s new trademark covers the trade dress, and overall visual appearance of its stores in the United States. This encompasses elements of the store design, such as the “rectangular tables arranged in a line in the middle of the store” and “multi-tiered shelving along the rear walls”.

With so much investment to ensure the overall quality and unique identity of the Apple Stores, one can understand why Apple is so keen to prevent anyone else mimicking its stores. Competitor Microsoft recently launched its own retail store strategy, while Google has also unveiled plans to open retail stores in California. In fact, Microsoft reportedly acquired a trademark for its own stores in 2011, which covered “a retail store with four curved tabletops at the front and rear side walls and a rectangular band displaying changing video images on the walls”.

Another obvious reason behind Apple’s move is to protect itself against the cheap ‘copy-cat’ stores popping up in China. These stores are deliberately conceived to fool customers into thinking the traders are selling official Apple merchandise. Indeed, many of their customers may have never set foot in an authentic Apple store, and would be unaware they were buying false products.

While the decision clearly benefits Apple, some commentators question if it is appropriate to grant companies trademarks over the layouts of retail stores. Forbes  has criticized Apple’s ability to prevent competitors using in-store rectangular tables, and argues that in the fight against Asian rip-offs, the law of passing-off is sufficient to defeat copy-cat merchants, without resorting to trademarking physical spaces.

But while this argument is valid, proving a passing-off claim is often much harder and more expensive without an established and watertight trademark. With an army of handsomely paid corporate lawyers, Apple is leaving nothing to chance.

Many business owners and company directors are calling for legal reform, to further assist businesses to protect their carefully nurtured brands without resorting to costly litigation. However, some fear that companies would soon monopolise combinations of fairly simple features. IPKat points out, that UK law is far stricter when granting trade dress, as the test requires a mark to be “truly distinctive”.

For the Apple Store layout to acquire a trademark or trade dress in the UK, Apple would have to demonstrate the stores were so unique and distinctive that the public would easily associate the store designs with the Apple brand. Clearly, for most businesses, attempts to secure a trade dress will not be viable. And as the law currently stands, it is difficult to protect distinctive features of a shop layout without engaging the expensive litigation route.

In the high street, distinctive stores can be beneficial. Customers are able to immediately identify store branding and associate particular shopping experiences with particular stores. Therefore, as branding becomes increasingly important, the expansion of legal protection over unique in- shop experiences is likely to be sought out. But until it becomes easier to protect others from copying the interiors of a retail business, the easiest option for most business will be to rely on printing their trademarked brand names or logos on various surfaces throughout the store to act as identifiers which are protected against copying.

Copyright, emulation and software – is imitation not the sincerest form of flattery?

Software is essential to everyday life, it’s how we carry out research, get our entertainment fix, communicate with each other, manage information, carry out calculations, implement business processes and unleash our creativity.  But what if the software you need is out of reach?  Can you roll your own version of a tool sold by someone else? This is a difficult question to answer, because even the simplest software is a bundle of different elements, each of which might be protected by a variety of intellectual property rights, such as copyright, design protection, or patents.

The concept of writing programs which replicate the functionality of existing software is commonly referred to as emulation.  At a high level you can think of it as making sure that if the same information is input into an emulator, then it produces the same output as the software it emulates.  A recent court case sheds light on the legality of this practice in the UK.

The dispute between the SAS Institute and World Programming dates back to 2009, and arose when WP decided to develop their own version of SAS’ software. While copyright protects the underlying code behind software we use, in this case WP did not have access to the source code, they simply knew what went in and what came out of the software.   The WP version would accept the same instructions as the SAS version, read the same file formats, and give the same outputs, but the source code was not copied.  The question arising in court was whether copyright protects the set of instructions, or language, that a piece of software will accept - it’s functionality and interface with users, rather than its internals.

Why is this important?  Well, consider a situation where your business becomes reliant on a particular system, for example a piece of bookkeeping software.  Over the years your staff will have become familiar with it, and you might have integrated it with other aspects of your business, such as with payroll, invoicing or tax calculation software.  If it becomes unavailable, perhaps because the company that sells it goes out of business, or increases their prices, then you could find yourself with two options: retrain all of your staff to use a replacement, and rewrite your payroll, invoicing and other software to work with it; or create a replacement that can slot in to fill the gap.

Clearly, the best approach depends on how important this particular software is to you.  If it’s only used by one member of staff, and there’s a cheap alternative which is simple to learn then resolution is easy, but if there isn’t an alternative, or if it’s embedded into your processes and procedures, then rolling your own could be a far more attractive option.  However, if copyright were to protect the way you use software, i.e. the set of instructions it accepts, this wouldn’t be an option.

Although there were other questions involved, this is the issue raised in the SAS v WP dispute with the potential to have far reaching implications.  The judge, the Honorable Mr Justice Arnold, answered most succinctly:

  • In short, copyright in a computer program does not protect either the programming language in which it is written or its interfaces (specifically, its data file formats) or its functionality from being copied.

So, at least for the moment, you are likely to be entitled to develop or commission programs which emulate the functionality of other piece of software, provided that you do not actually copy source code or other protected works which make up the original.

Please do leave a comment if you think this is likely to affect you, or if you have any comments on the issue.

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.

Do you need to bother with trade marks?

Since writing my book, Legally Branded, a number of business owners have thanked me for making this fundamentally important subject of intellectual property (particularly trade marks) understandable.

Some entrepreneur friends have even  suggested I emphasise the risks, and danger of ignoring intellectual property advice.  However, I’ve always tried to steer clear of scare mongering as a tactic to raise the profile of intellectual property, preferring to work with those clients that “get” the importance of intellectual property.  Our clients are the ones that get it, even if they’re not in industries where IP is obviously critical to their success.  They value their IP from the moment they start their businesses as did our client Headspace, for example, who are doing great things to make meditation accessible.

I recently attended a meeting with a business owner whose mind was firmly made up that there was no point paying expensive lawyers to give advice on IP.  I had agreed to meet with him at the request of his marketing manager who understands the importance of IP and hoped that someone more aware of the ins and outs of IP may be able to persuade his boss.  However, this business owner’s views did not shift one bit as a result of our meeting mainly because he talked far more than he was willing to listen, and his mind was already made up.  So, I know better than to try to address those whose minds are already made up that they know all they need to know about IP.

This is for readers who are curious, or undecided

This post is for those who may be curious, or who are still on the fence about whether it’s worth bothering with trade marks.  While it’s never a good idea to generalise about who does or does not need IP, I will stick my neck out and say that if you’re a lifestyle business (by which I mean you’re aiming to earn a livelihood and are not trying to build a big business or one you can ultimately pass on or sell) you can ignore trade marks.  You’re unlikely to come to anyone’s attention, or pose a threat to existing trade mark owners such that they would want you to rebrand for infringing on their rights.  Even if someone did require you to rebrand, chances are it will just be an inconvenience to change your marketing materials and rename the business.  You won’t have a name that attracts business, so could rename the business without suffering a drop in activity.  Similarly, if you’re setting up a business and want to first see if it will take off, then you MAY, depending on your business idea, be able to use a temporary name, or take a chance with the name you want to use (provided you’re willing to change it if the advice is that you would do better to choose an alternative name), and see if you can get anything off the ground before worrying about trade marking.  But for everyone else, it would be really foolish not to get trade mark advice from a specialist lawyer on the name you’re using.

Trade marks may be revoked

Trade marks can be cancelled, so even if you’ve secured a trade mark registration it doesn’t mean you’re alright to use that mark.  That’s why it’s misguided to do your own registration work, just to save on legal fees.  You may end up getting a registration, but it may not be for a mark that is capable of generating brand value.  You may not have an adequate scope of coverage, so that although you’re registered, it may not protect you if someone were to challenge your rights.  For example, registering a logo with a totally descriptive name – that is, one that describes what the business does – is easy enough to secure.  However, it’s an extremely poor choice of branding.

The law protects businesses against various unfair competitive practices, and helps you fight off competitors who use similar marks to yours, but you have very limited recourse with a descriptive name.  Using a descriptive name or a name that is otherwise incapable of being owned by you as a trade mark, leaves you wide open.  You will lose business that may have been intended for you, and you will have a business that is far less valuable than it might have been had you selected a legally powerful name.  This is the reason you should always consult your own IP lawyer on any name your branding professionals help you to choose, unless they are willing to take responsibility for its legal effectiveness.

Keyword rich names probably best avoided 

Also, take a look at the blog I wrote about Google’s recent algorithm change, which makes it even more of a poor decision to use descriptive names now online.  The writing is on the wall, so I would avoid choosing keyword rich names too when branding your business online.  The slides from my talk at Make It Big in 2013 also discuss descriptive names more.

Get legal advice

Even though you get some protection in this country just by using a name, don’t let that lull you into a false sense of security.  For example, if someone registers a Community Trade Mark they can stop you using a name you’ve been using, or limit you to using it only in a certain geographical area.  Why court the vagaries of litigation with all the cost implications when you can secure your rights in a name you’re getting recognition with, by paying ten times less?

Trade marks and legal advice should not be dismissed as too expensive to bother with for anyone who has a viable business.  They are an investment, and are the foundation for licensing and other ways of monetising your products and services.  In particular, don’t wait till you have reached certain turnover targets, because trade marks are fundamentally relevant to any business that aspires to be more than a lifestyle business.  Your business name is what the law protects when competitors behave unfairly.  So, trade marking is good business practice and isn’t just about whether you intend to become a brand, or think that if you sold your company whoever bought it would want to use your brand name.

Misunderstanding IP

There is a lot of misunderstanding about the relevance of IP, and huge generalisations are made about its costs.  But given that there are many different IP rights, of which trade marks are just one type, it’s foolish to dismiss them all as too expensive.  Knowing how to implement procedures to protect just one of these rights may be the critical element to your business success after all.

I think the problem is down to the complexity of IP law.  We are still in a transitional period between an industrial economy and a knowledge economy.   Consequently knowing how to deal with the physical things, the tangibles comes easy while intangibles that you can’t feel or touch, are less well understood. Intangibles are our knowledge, our brands, our digital content, and more.  By their very nature, they are easy to lose. Being transient, and non-physical, their legal significance can sometimes be overlooked or misunderstood.

Scrabulous and other high profile cases

The fact is that it can be difficult for lawyers to point out the benefits of IP except by pointing to situations where there have been well known incidents, such as with Scrabulous, which I discussed in a post recently.  Those of us IP lawyers who prefer to focus on the positives, won’t therefore want to keep pointing out the dangers, but I have outlined a number of scenarios in my book Legally Branded, which should help you better understand the risks.  Don’t assume that just because big businesses like Apple resolve their IP issues, that you will do so too.  People should know that for smaller businesses, the scenarios they hear about in the news about the Googles, Microsofts, Apples of this world would put them out of business because they would not have the resources to get themselves out of trouble.

So the moral is if you are a small business without access to huge sums of money to litigate your way out of  trouble then you absolutely need to make sure you avoid the problem in the first place by getting professional advice to register your trade mark.

Also, if you’re going to ignore IP protection, you need to know what you’re doing.  It could in some cases be rather like deciding not to bother with the foundations of a house you’re building.  In television programs like Grand Designs, the participants who overspend may end up not having enough money to do all the fine design details they had wanted.  Their  lack of funds means they have to compromise on the surface issues like designs.  They can’t compromise on the very structure and foundation of a building.  Unfortunately, the opposite approach happens in business when IP is ignored.  People can spend a fortune on the surface things like branding and websites while ignoring the fundamentals.

Distinguish IP from other legal work

While there are some legal issues you can and should skimp on in the early days of a business, IP isn’t one of them.  Note that IP is very often a contractual matter, and isn’t just about registrations.  So, take advice to see how to minimise your IP expenditure in a safe way if you think spending on IP may seem a waste.  Some business owners question any expenditure which doesn’t enable them to make money (such as learning a new marketing trick would increase their  chances of generating revenues).  However , think of IP as what enables you to keep the money you make, and in some cases to continue to earn revenues. So at the very least you absolutely have to take advice in order to develop your strategy for IP.

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?

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?

Copyright Protection: How to Manage Copyright in an Unregulated Space

‘I have endeavoured in this Ghostly little book, to raise the Ghost of an Idea, which shall not put my readers out of humour with themselves, with each other, with the season, or with me. May it haunt their houses pleasantly, and no one wish to lay it.’ – Charles Dickens

Dickens’ ‘A Christmas Carol’ is a tale of generosity, giving, and a story often attributed to reigniting the Victorian Christmas spirit at a time when it had started to wane. Indeed, it has been attributed as being partly responsible for the way we celebrate Christmas today.

Dickens and ‘Piracy’

When it was published the book was an immediate success, selling six thousand copies on the first few days of sales. However, despite the book’s success, Dickens did not make much money out of it in part because his work suffered at the hand of ‘pirates’.

Unlike today, copyright laws in the Victorian times did not give protection in countries outside of where a work was first produced and created. Therefore after ‘A Christmas Carol’ was published, copies started popping up abroad in America, produced by publishing houses very cheaply.  They gave Dickens absolutely no financial benefit.

Berne Convention

As the world continues to change, laws, and in this instance copyright laws, sometimes take a while to adapt to the new problems these changes present. It was not until 1893, 50 years after the publication of ‘A Christmas Carol’, that the Berne Convention was created to give authors copyright protection over their work abroad as well as in the country in which the work was created

Copyright in the Internet Age

However, even though nowadays owners of copyrighted work no longer have to worry about the lack of control over work being produced abroad, there is a new challenge that has not yet been solved by current copyright laws: the Internet.

Your company might not be looking to create the next ‘A Christmas Carol’, but content your company produces may still be extremely valuable for the business – yet the Internet can make it difficult to ensure that people don’t misuse your copyrighted content.

Sometimes when the laws have not caught up with advances in technology, it is an unfortunate reality that there is little you can do in practice to tackle infringement, beyond prevention.

You can campaign for changes in the law (as Dickens tried to do in the Victorian times), or hope that there will be a way for the law to better protect your work or content.  However, sometimes the best that you can do is to understand how to benefit from the work you produce in the unregulated world of the Internet, despite the fact that some people may take advantage of your work and infringe your copyright.

The ‘Freemium’ Business Model

An important factor in building success online is attracting customers to your website. And in this Internet age one of the main things people are looking for is information, meaning that freely available and useful online content can be vital in achieving online success.

Giving information away for free can actually prove financially beneficial in unexpected ways. For Dickens, despite the fact he did not make money in the US from selling copies of his book, when he went over there to visit he discovered that he had a large fan base, and managed to make a good amount of money from giving readings of his works.

This just goes to show that just because the law might not adequately protect your copyrighted content from pirates; it does not always mean your company will suffer. Some successful bands have also profited from giving material away for free.  For example, Radiohead decided to allow customers to decide how much they paid for their album ‘In Rainbows’. And The Grateful Dead managed to create a devoted following and generate $60 million a year through their unorthodox approach to protecting their intellectual property, such as by allowing audiences to tape their concerts.

Managing Your Copyright Online

However, if you are concerned about keeping your copyright protected, here are some tips that might help:

  • Before publishing content online, evaluate what the consequences might be for your business if someone copied your content
  • Consider using measures like backlink, Google Alerts or copyscape.com to help you track down people who copy your site’s content.
  • If you know the Internet Protocol (IP) address of a copyright infringer, you can ban them from using your website (although they could still get round this by changing their IP address).

If you want to learn more about how to protect copyright or other IP online, buy a copy of Legally Branded. You can download free chapter of the book here.

This post was co-authored by Chloe Smith

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.