UGG Trademark Disputes

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Trademarks are territorial, which means you register them country by country wherever you do business. Although this is can be expensive, and it may be tempting when starting out, to think it's easy enough, in theory, to trade in other countries under a different brand, UGG is an example of what can happen when a trademark is not available to a business internationally.

TMRBoots known as UGGS are worn around the world particularly in rural locations. The term UGG for this specific type of sheepskin boot has been used in Australia since the 1950’s and now many consumers believe the boots are from Australia.

The term UGG-BOOT was registered in 1971 in Australia, but then lapsed as it was not used. Then in 1999 the American outdoor company Deckers registered the word mark UGG AUSTRALIA. Celebrities began to wear the boots and by the early 2000’s the boot became popular and sought after all over the world. As a result Deckers became more protective of the brand and began issuing legal threats against companies in Australia who were using terms similar to UGG such as UGH.

In 2006 a competitor of Deckers, UGG-N-RUGS successfully applied to remove UG, UGG and UGH Boots from the Australian Trademarks register on the grounds that the term was generic and descriptive of a specific type of sheepskin boot in Australia.

Deckers still has its trademarks in the EU and the US However, in Australia the company  aroused much controversy over the question whether the name is a brand name or a geographical indicator for a type of boot., and as mentioned Deckers lost its trademark there.  The fact that Deckers is still a registered trademark outside Australia means that competitors cannot market their boots as UGGs in the EU and USA. Instead they have to use terms like Australian Sheepskin boots to describe the boots.

Competitors are trying to change UGG into more of a regional mark like Champagne and want consumers to associate UGGs with a particular type of sheepskin boot made in Australia and not a trademark which indicates they are made by Deckers. In response, Deckers is focusing on the fact that its UGG boots are made in China and not Australia.

The fact that the UGG trademark has been revoked in Australia but is still registered in the EU and the US presents Deckers with serious challenges.

It is difficult for Deckers to tackle the companies selling UGG boots from Australia on the internet as I found out when I tried to buy a pair of UGG boots for my daughter back in 2009. As I wrote on the Azrights IP Brands blog that’s when I became aware that UGG is not a trademark in Australia and Deckers can’t stop vendors from Australia labelling their boots as UGGs within Australia. It is notoriously difficult to prevent sales online from entering the EU or American markets once to reach  consumers in these markets. This is despite the fact that many of them are likely to have bought the boots online believing them to be the genuine article, and not from some Australian boot company producing a lower quality boot.

Arguably, Deckers could do more to prevent consumers from being confused. For example, they could rebrand so as to remove the word Australia, especially given that its UGG boots are in fact made in China. It would be even better if the company were to change its brand to DECKERS UGG.

Deckers would benefit from taking swift action to prevent confusion in the market place, and to ensure the name UGGs is associated with its own quality products. The importance of educating the public about its boots so people are not duped into buying UGG boots from Australia when what they’re actually looking for are branded UGG Australia boots from Deckers can’t be overstated. What do you think? Have you had any experiences buying UGG boots? Let us know by leaving a comment below.

What is Copyright?

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Copyright is a wide-ranging subject, and relevant to many creative and non-creative industries.  It is arguably the most universal of IP rights, covering written materials, music, art, logos, and computer programs, to name a few.  It protects most visual brand elements, such as logos, packaging and websites, though it may also be possible to register some of these as designs or trademarks to secure added protection.

Copyright protects original expression, but not ideas themselves.  So, if someone were to suggest you draw a picture of a bird, or gave you an idea for a plot, you would own copyright in the picture or plot you produce, as long as you don’t copy the words or image from someone else.  The person who suggested drawing a bird, or whose idea it was that you write a love story would not have copyright in your work.

Can I copyright my name?

Some people ask to “copyright” their name.  Surfers wonder whether copyright prevents them from using particular words for their product or business.  Even newspapers and popular online publications make the basic mistake sometimes of reporting names as being copyrightable.  In fact names are not protected by the law of copyright.  It is trademarks that protect names.

It was in a case in 1982 Exxon Corp, where it was decided that copyright does not protect names.  The company unsuccessfully applied to stop Exxon Insurance Consultants calling themselves Exxon, arguing that it had copyright in the name as it had spent substantial amounts of money developing the name.  In a landmark decision, the UK Court of Appeal disagreed and took the view that it was not possible to have copyright in a name, because a name is too brief.  Regardless of how much investment or time is put into the creation of a name, no matter how clever it is, from a policy point of view the court decided to keep names outside the scope of copyright protection.  Instead, names are protected by the law of trademarks.  Some famous examples of slogans which are also protected by trademarks are Nike’s Just Do It, and L’Oreal’s Because you’re worth it.

What does this mean for you?  Well, for names and slogans you need to turn to a trademark expert for help.  While for other works, such as those outlined at the start of this blog, generally all you need to do to own your work is to record it in some way (for example by writing it down, taking a photograph, or getting it on tape).  If you ask someone else to do work for you, for example to develop a website, then you need a contract before you engage them, to give you the copyright, otherwise they will own the rights in the site.

To secure exclusive rights to the name of your business or product, it’s important to get an expert in trademark law to evaluate whether the name is legally effective and available.  If it is, then registering it as a trademark is a sensible step to take so you can own the rights to the name you are generating goodwill in. So, when you come up with a name you like, remember that there are steps you need to take to own it.  Why not drop us a line to discuss trademark registration?

How Small Businesses are Wasting Money on Branding by Failing to Take Account of Legal Principles – Legally Branded Book

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Legally Branded is a new title by Shireen Smith of Azrights Solicitors, which fills a gap in the market by providing accessible, and easy to understand explanations about intellectual property law and brand law to help business owners consider the legal dimension of branding.

Image of Legally Branded book coverIn the book, Legally Branded, Shireen Smith, founder of Azrights Solicitors, a niche IP and Internet law firm, guides small business owners on the laws relevant to brands and online business.

‘I wrote this book as there are currently no accessible books for business owners on the legal aspects of branding’ Shireen said ‘For example, there is a world of difference between suggestive names and names that describe a product or service. Business owners should know that suggestive names are desirable brand names, and that descriptive names should be avoided at all costs’

Using insights from the book, business owners will be better equipped to avoid common problems, such as having to rebrand for infringing on the rights of others, or having inadequate branding that fails to serve their long term entrepreneurial dreams. Among other things the book addresses:

  • how to avoid infringing on the copyright, and design rights of others
  • the most effective ways to use domain names and search engine optimisation
  • why it’s important to ‘own’ names, logos, slogans, designs and innovations, and how to go about this
  • how to retain the rights you need when engaging staff or outsourcing
  • when to avoid making information public so you don’t lose valuable rights
  • how to manage your reputation in the digital word-of-mouth environment of social media
  • how to recover domain names registered by others which incorporate your brand name.
  • what not to do if you want to avoid litigation for passing off or infringing on others rights.
  • how to create and maintain a successful online brand

Shireen Smith is an experienced lawyer in Intellectual Property and Internet law. Before founding Azrights Solicitors, Shireen had extensive experience both in private practice and in industry, having held positions at Coopers & Lybrand, Reuters and Eversheds. Shireen completed a Masters degree in IP law at London University’s QMW in 1996, when QMW. She has written numerous articles on IP branding issues, including contributing a chapter to Bloomsbury’s recent publications Reputation Management Building and Protecting Your Company’s Profile in the Digital World. Shireen has also given Masterclasses in IP branding at LSE’s Entrepreneurship unit and delivered workshops to entrepreneurs at the British Library’s Business and IP Centre for two years between 2008 and 2010.

Azrights Solicitors is sponsoring a book launch to celebrate the release of the book which is taking place on September 11th. In the meantime, the book is available for pre-order on Amazon. The launch of Legally Branded will be at the British Library, and Shireen Smith will be signing copies of the book and will also give a brief talk introducing the book. She will be joined by some special guests, who will be announced at a later date.

A virtual launch accessible to people wherever they are in the world is also planned. A live video stream from the main event itself is on the cards, as is a podcast interview of the author to be released around the date of the launch.

The details of the events are still being planned, and in the meantime, save the date in your diary and join Shireen, either virtually or in person, on the 11th September to celebrate the launch of Legally Branded.

For additional information about Legally Branded please visit www.legallybranded.co.uk

Banner for Legally Branded

Protecting the Shire: Fry and McKellen step in to save the Hobbit

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Some may see it as unwarranted bullying, while others say it is to be expected.  Either way, the publicity arising from recent allegations of IP infringement have certainly thrown The Hobbit pub in Southampton firmly into the limelight.  The Saul Zaentz Company, owners of rights to the Hobbit and Lord of the Rings brands, among other JTT Tolkien work, have taken action against small business owners in the past, such as in November of last year where their lawyers argued that the Hungry Hobbit cafe took unfair advantage of the Hobbit trade mark.

While the cafe is reportedly considering a change of name, the pub, which sells Frodo and Gandalf cocktails, has received overwhelming support not only from the online commuity, but from actors involved in the upcoming Hobbit film. A Facebook campaign has rallied the support of 60,000 Facebook users (Save the Hobbit, Southampton), and actors Stephen Fry and Sir Ian McKellen have even agreed to pay licence fees on behalf of the pub to settle the dispute.

When issues like this capture the imagination of the public, the results can be surprising, I’m sure that SZC were not expecting such a backlash.  More so than any marketing or education by businesses in the field, these disputes serve to increase public awareness of IP issues crucial to businesses worldwide.  Taking advantage of the public interest, a group of Tolkien enthusiasts have now also begun a campaign against exclusive rights in the word Shire, encouraging visitors to their website to proudly showcase a Save the Shire poster.  It will be interesting to see how much momentum they are able to generate.

Iconic Brands

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When a brand becomes as iconic as Apple it can get away with potentially reputation damaging incidents which would tarnish a lesser brand.

This article on IPKAT  about how Apple has fared following news of its association with Foxconn, a Chinese manufacturer alleged to mistreat its staff,  is interesting for that reason.

According to the IPKAT last month This American Life, an acclaimed radio programme, focused on the harsh working conditions of employees at Foxconn.  The programme was widely distributed as the podcast of the show was downloaded by an extraordinary number of people.  Now it seems the story has been retracted and the parties concerned have given explainations as to why the topic should not have been aired.  In the meantime, Apple has declined to comment at all about the matter and the matter will probably go no further.

I’d love it if any readers know of an example where a brand’s reputation has not been strong enough to withstand the pressure of  an adverse media news report.

 

Hasbro Trade Mark Infringement Claim Stops Launch

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Alleged infringement of the TRANSFORMERS trade mark recently sparked a dispute between the leading computer technology company Asus and Hasbro, a multinational games business.

Hasbro is the maker of a line of toy alien robots named Transformers, able to disguise themselves as automobiles. The Transformers universe features two warring factions of these robots: the Autobots and the Decepticons. First introduced in 1984 the robots have, in the course of nearly thirty years, spawned comic books, animated TV series and a live-action movie franchise.

Filing suit for trade mark infringement, Hasbro alleges that Asus’ release of the Transformer Prime laptop takes advantage of the trade mark in order to make money, a representative stating that ‘Hasbro continues to aggressively protect its brands and products and the specific actions we are taking today against Asus underscores yet again Hasbro’s willingness to pursue companies who misappropriate our intellectual property for their own financial gain.’

So, why is a toy company concerned about a consumer electronics business using the word TRANSFORMERS?  After all, there seems to have been no quarrel between Hasbro and Boots over registration of TRANSFORMERS for cosmetics. How likely are consumers to be confused into linking Asus to the Autobots?  Tablet devices and toys do seem quite far removed from each other.  However, the combination of TRANSFORMER and PRIME does offer some support to Hasbro’s case as discussed below.

Asus has used the word TRANSFORMER when naming its products in the past, releasing the Eee Pad Transformer tablet device at the beginning of January. However, this time round the addition of the word ‘Prime’ has given rise to suspicion, as the leader of one of the robot factions is a character called ‘Optimus Prime’. Hasbro is not sure that this is just a coincidence.

Included in Hasbro’s trade mark portfolio are registrations and applications for the trade mark TRANSFORMERS PRIME in various jurisdictions.  While not yet registered in the US, Hasbro does own UK and European registrations for these words, originally filed in June 2010.  TRANSFORMERS PRIME is clearly a much closer match than just TRANSFORMERS, but is not registered against tablet devices.  It remains to be seen whether the notoriety of the TRANSFORMERS brand will tip the case in Hasbro’s favour despite differences in the goods sold under the mark.

Techweek draws a parallel between the tablet and the robots, noting that ‘the major selling point of the Asus Transformer Prime is that it converts [transforms?] into a form that closely resembles a laptop when the keyboard dock is used’, so mimicking the Transformers’ ability to disguise themselves as vehicles.  Still, the word ‘transformer’ is somewhat descriptive in this context, arguably referencing the functionality of the product rather than ripping off the robot franchise.  Dailytech further observes that ‘The Transformer Prime doesn’t convert into a truck, and the Transformer toys don’t offer the Android operating system with apps and Web-browsing capabilities.’

Asus claims that internal studies have shown ‘no issues’ with its use of the Transformer brand indicating an intention to stick with the name, but if Hasbro has its way it could be some time before the tablet reaches consumers.

When to know you need to rebrand

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The importance of the name you give your business was clearly brought home in an episode of Hotel Inspector about the Hotel Weyanoke in Eastbourne.

A name that is so difficult to spell, or to pronounce is surely a liability. Quite rightly, the owners were persuaded by the Hotel Inspector to choose some alternative names. Surprisingly, they were quite reluctant to do so.              

The owners eventually agreed to choose some new names.  Therefore, WEYANOKE was pitted against names like COAST and EAST BEACH.  People in the streets of Eastbourne were canvassed for their opinion as to which was the better name. WEYANOKE got just one vote, EAST BEACH 33, while COAST came in just behind EAST BEACH.

Being interested in trade marks, I naturally wonder whether trade mark searches affected the decision to opt for EAST BEACH rather than COAST. Did anyone even search the trade mark registers?  I’d love to know.

Interestingly, despite apparently turning around its fortunes since the Hotel Inspector’s visit, the hotel has not bothered to register its new name as a trade mark.

Twitter goes for TWEET!

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We have written previously on this topic about Twitter’s bid to protect its trade mark and brand.  As Twitter co-founder Biz Stone said in a blog post in 2009,

“We have applied to trademark TWEET because it is clearly attached to Twitter from a brand perspective but we have no intention of “going after” the wonderful applications and services that use the word in their name when associated with Twitter. In fact, we encourage the use of the word TWEET”.

Ironically, their application was refused by the United States Patent and Trademark Office (‘USPTO’) in April 2009 and again in March 2011 due to the existence of the mark “LET YOUR AD MEET TWEETS” registered by an online advertising service provider called Twittad.

Now, Twitter has finally decided to sue the third party developer over the use of the word “TWEET” in Twittad’s trademark – “LET YOUR AD MEET TWEETS”.  The mark was applied for back in July 2008, thereby blocking Twitter’s own application to trade mark the word TWEET.  So, Twitter now wants to own the mark.  It believes it has more legitimate right to use the mark TWEET.  Its legal filing says “The defendant’s registration unfairly exploits the widespread association by the consuming public of the mark ‘TWEET’ with Twitter and threatens to block Twitter from its registration and legitimate uses of its own mark.”

Twitter contends that Twittad has used the strap line ‘LET YOUR AD MEET TWEETS’ solely as a generic phrase in advertising itself in connection with Twitter. Therefore it is not a trade mark within the meaning of trade mark law and thus, renders the mark subject to cancellation. Alternatively, they contend, even if Twittad is successful in establishing the strap line as a mark, then the mark should be cancelled due to Twitter’s pre-existing rights in the mark.

Twitter comments, “Twitter’s organic growth has taken many forms, including a widespread, dictionary-documented association of the word ‘TWEET’ with the use of Twitter. It is in the best interests of our users and developers for the meaning of ‘TWEET’ to be preserved to prevent any confusion, so we are taking action to protect its meaning.”

On the other hand, Twittad founder James Eliason said “We firmly stand by our position of the legitimacy of the trademark due to the fact that our mark was cleared by the Trademark office in 2008.”

Twitter already owns trade marks ‘COTWEET’ and ‘RETWEET’, however, in this case they were beaten by the third party developer Twittad who filed their trade mark application for the mark ‘TWEET’ earlier than them.

Twitter is not only determined to defend its brand name in the trade mark area, but also to third party app developers using Twitter site to aid their businesses. Generally, in such cases, Twitter either acquires these applications or suspends their use on its site. For example, Twitter has acquired TweetDeck, an application for organizing the display of tweets, for more than $40 million.

In the meantime, Twitter has suspended the twitter account of Twittad.

 

Painkillers and Product Recall

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The makers of Nurofen plus recently had to recall all remaining stock of the product, after it was discovered that some packs, in particular those in branches of Boots in Victoria, Beckenham and Bromley, contained the antipsychotic drug Seroquel. At first, the Medicines and Healthcare products Regulatory Agency (MHRA) put out a safety alert to warn people about the mistake, potentially affecting thousands of packets.     

Later, further evidence of tampering came to light in Northern Ireland, where a pack was found, this time containing the prescription medicine Neurontin, typically used to treat epilepsy.  Dr Aomest Bhatt, medical director of Neurofen Plus, said ‘We are taking this matter extremely seriously and have decided to recall all packs of Neurofen Plus as the most prudent course of action in the current circumstances. We’re asking consumers to return any packs of Nurofen Plus to a pharmacy. No other Nurofen products are affected or being recalled’.

Impact of a product failure

Nurofen has long been one of the leading Ibuprofen brands, but in addition to the financial expense incurred as a result of these incidents, a recall of all Nurofen Plus products sems likely to have a significant negative impact on the brand, and the public’s trust in Nurofen.

Product failures as high profile as this can cost companies millions, and in some cases destroy their reputations.  So far, the incidents have not been shown to result from actions of the company, and a formal investigation into the mix up is being conducted with help from the police.  But irrespective of whether any negligence is found to have occured, these events are likely to damage the brand.  The severity of the impact depends on how the recall is handled.

One criticism levelled against Reckitt Benckiser, the product’s manufacturer, was that they did not act fast enough in putting the public at ease following the discoveries. Although product recalls are invariably bad news for business, if handled correctly the damage to brand reputation might be controlled.  On the other hand, Santosh Desai, CEO of Future Brands suggests that ‘the best thing to do is not look for a quick fix solution. The healing process takes time and there’s no quick plaster’.

Inform customers at first

Jonathan Hemus, in his blog for The Drum, points out that Reckitt Benckiser provided no information about the product recall on the Nurofen website, their corporate website or their Facebook page. Hemus suggests the danger of not communicating with the public is that ‘customers turn to others for advice rather than Nurofen itself, a risky proposition in terms of reputation management.’

Nurofen has since added a statement to its websites and facebook page about the recall, but was arguably slow off the mark in doing so.

Vigilance is key to protecting the considerable investment involved in developing a brand – while Benckiser might not be at fault, the Nurofen recall may still have a major negative impact on the company as a whole.  As suggested in the Economic Times article, ‘product recall is the worst possible nightmare for every marketer’, reputation is fragile and what took years to establish, can come crashing down in hours.  No one can avoid the unforeseeable.  However, communication and engagement are key when information travels the world in milliseconds.  This is especially true in a crisis.