Category Archives: International trademarks

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The fact that the UGG trademark has been revoked in Australia but is still registered in the EU and the US presents Deckers with serious challenges.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

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.

Microsoft En-Trench-ed In Trade Mark Tussle

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Trenched, a video game developed by Double Fine and produced by Microsoft, has had its European release date set back, potentially indefinitely, following a dispute over the name.

The European Community Trademark TRENCH, filed in 2009 by the board game designer Rui Alipio Monteiro, is registered against both board games and computer games. The designer also invested in registration of a number of designs, protecting aesthetic aspects of the board game.

Perhaps as a result of poor due diligence, Trenched the video game was announced in March, and released by Microsoft and Double Fine on the Xbox Live Arcade in North America on June 22, without cooperation from Monteiro who now appears set to fight Microsoft for exclusive use of the brand.

Speaking about the dispute to Eurogamer, the Portuguese company Criações a Solo explained that they intend to “defend all their author’s copyright and intellectual property against any infringements”, and stated their goal as “putting Trench in the international Hall of Fame of both classic electronic and board games”.

Double Fine’s Trenched not only shares elements of its name with Monteiro’s board game – they are both military-themed, and set in or around the time of WW1. Double Fine designer Brad Muir told Destructoid ‘This entire process has been very frustrating to us and it makes us sad that the people of Europe can’t play our game. Microsoft owns the IP for Trenched and they are working to resolve things as quickly as possible’.

Mark Methenitis at Joystiq offers some explanation of complications with the position in the US – namely that both the application for the logo shown here on the left, and Microsoft’s application for the mark TRENCHED, have so far been filed as intentions to use. This means that it might be some time before either are granted, however, should Monteiro’s application succeed, his rights will extend back to June 2010, nearly a year before Microsoft filed their own applicatio. In that case, an important question will be whether Microsoft’s use of the word mark TRENCHED could be confused with the Trench logo.

Some cite their investment in marketing as motivation for sticking to their guns, and it will be interesting to see whether Microsoft and Double Fine can come to some arrangement for coexistence with the board game designer or whether they will dispute the scope of their rights.

Alternatively, it is possible that media attention (such as this blog post) generated by the dispute might create enough buzz to offset the loss of investment in marketing should Microsoft persuade Double Fine to re-brand.

In the meantime, Microsoft’s line is:

‘We don’t have an update on the distribution of Trenched in Europe yet… We’re working to resolve the matter as soon as possible and will keep you posted’

Irrespective of the eventual outcome, this dispute is another very public example highlighting the importance of early clearance of brand names; and in particular international trade mark searching when products or services will be sold abroad.

Country Names and Trade Marks

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Is it possible to register a country name as a trade mark? For example, would you be able to register a country name  like JAMAICA as a trade mark?

Does it make any difference which goods or services you provide? What if you wanted to register JAMAICA for jerk chicken spicy sauce or rum beverages?

These are questions that can come up if you choose a country name as your trade mark.

The trade mark Act at Section 3(1) (c) prohibits the registration of marks designating geographical origin.

A country name would, on first view, appear to be prohibited from registration.

However, where the geographical significance of the country name can be displaced then a trade mark may be registered.

This might happen through either extensive use of the mark or by conceptual disassociation.

Regarding extensive use, customers using the ICELAND store do not think that the goods come from Iceland as a country, therefore, the geographical origin of the name ICELAND in this case is displaced.

Regarding disassociation, where there is no possibility of the place name indicating geographical origin, such as NORTH POLE for bananas, the geographical significance is displaced.

It is notable that JAMAICA is already on the Madrid Protocol register in class 3 and 42  and on the EU register in class 3.

These were for soap and other beauty products and are owned by Procter & Gamble.

A JAMAICA registration was refused a Madrid application in 2006. This was for alcoholic drinks and fruit juices.

These examples show a potential trend whereby the Registry has to take a view as to whether the goods and services indicate geographical origin for a specific country name.

In other words, examiners use their discretion to decide which products are famously associated with a country name.

In the first example, the examiner decided the country Jamaica is not well known for its cosmetics therefore the geographical significance of the name may be displaced. Essentially, the general public will not think that the cosmetics come from Jamaica.

However, Jamaica is famous for its rum, so it is possible that the refusal of JAMAICA for alcoholic drinks was linked to the public thinking that the trade mark JAMAICA for alcohol would communicate that the products come from the country itself.

Following this line of reasoning it would be hard to see a trade mark application for GERMANY for sausages or FRANCE for wine or UNITED STATES for burgers succeeding.

It may also be the case that the reason JAMAICA succeeded for Procter & Gamble was through showing extensive use in the same way that ICELAND (the supermarket) did.

So if you are thinking about registering a country name as a trade mark consider whether you have  extensive use of the trade mark and whether, in the eyes of the public, your goods and services could be disassociated with the country name.  Also bear in mind that if you need wider international registrations, approaches may vary amongst registry offices and according to national laws.  This could therefore add to the costs of registration.

Louboutin’s trademark – Red Soles

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Louboutin shoes

Image from Wikipedia

The Paris based designer, Christian Louboutin sued Yves Saint Laurent last week for using their trademarked red soles on its shoes. The purpose of the red sole in Christian Louboutin’s design is branding – to help distinguish their shoes from those of other designers. The designer claims that Yves Saint Laurent’s use of the red soles is trademark infringement.

Reuters reported that the trademark infringement lawsuit filed in the Manhattan Federal court said ‘Mr. Louboutin is the first designer to develop the idea of having red soles on women’s shoes.’ and the use of red soles on other designer footwear may cause confusion amongst the public. Louboutin wants Yves Saint Laurent to pay $1 million in damages and to stop producing similar designs. The lawsuit said ‘The Red Sole has become synonymous with Christian Louboutin and high fashion,’ and added that the design had been trademarked since 2008.

Less than a week after Christian Louboutin sued Yves Saint Laurent, they have moved to sue another shoe designer, a Brazilian label Carmen Steffens. However, Carmen Steffens insists that it had been using red soles on its shoes since 1996, whilst Christian Louboutin had only registered the trademark in 2008. The brand’s international developer states: ‘We are ready to provide unassailable evidence that we have been using colored soles, especially red, before Mr. Christian Louboutin popularized his.’

The president of the companies US operations Mark Willingham stated ‘Of the 250 styles in Carmen Steffens France’s current collection, only three styles utilise red tones on their soles.’ The label finds it surprising that Christian Louboutin has tried to claim rights over a particular colour.

Although claiming rights over the colour of the sole of a shoe might seem surprising, in the fashion world it is common knowledge that a shoe with a pair of red soles is a Christian Louboutin design or at least a knock-off. According to the lawsuit ‘Mr Louboutin is the first designer to develop the idea of having red soles on women’s shoes. The location of the bright colour on the outsole of a woman’s pump is said to provide an alluring “flash of red” when a woman walks down the street, or on the red carpet of a special event

If the red sole really does act as a method of branding in the fashion world, then it might seem understandable that the designer wants to protect and limit the use of a red sole on other shoes as it would be much like protecting any other sort of brand. However, there is still the question over

whether one designer should really be able to prevent the use of a particular colour being used on the soles of a shoe?

Under trade mark law, ultimately the question turns on whether consumers would be confused into believing that a pair of shoes bearing red soles emanate from Louboutin (at $1000 a pair) or from another source.

International trademark registration and searching

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Trademarks are territorial, which means they only protect you in the countries in which you have registered them. So, a UK trademark registration gives you rights over your name just in the UK.  So, if you operate within a global market, you will need to extend your basic registration to some other countries.

Online means international
Online businesses, by virtue of being on the internet, already have international exposure and even if your company is based in the UK selling your products via a website to other countries would mean you are trading there.

With this in mind it may be worth looking into the international aspects of your branding before starting to use the name or logo. To extend your name protection to other jurisdictions, it is possible to use the Madrid Protocol application to apply for registration to countries that are members of the Madrid Protocol.

Priority date
Once your UK application has been submitted you will be given a filing date. This date is crucial because if you apply to extend your rights to other countries within 6 months of this filing date, you would have priority over other applications submitted after you filed your base application.

Madrid Protocol application
The application itself is lodged with the World Intellectual Property Organisation (WIPO) in Geneva (see WIPO website for list of countries).  At the time of writing not all countries are parties to the Protocol — Canada and South Africa are not parties. In the application, you name the countries where you require protection.  Please see list of the countries within the Madrid system.

Official fees are payable for each country selected.  We have a useful Madrid protocol calculator, so you may get a good idea of the overall costs involved in bringing a Madrid application, as the official fees are the main element of the cost. Then there is a period of 18 months in which the national registry offices or other trademark owners may raise objections to your application.

There are many advantages of registering through the Protocol, in terms of ease of administration, cost savings, and flexibility. The basic fee for the application is in Swiss Francs and additional fees are payable depending on the number of countries in which you seek to register your mark. It is always possible later to add countries as and when you need to, but this is more expensive than covering all your desired countries in a single application.

Comparison with EU trademark
Once you file an application under the Madrid system, if objections are raised in some countries that you are unable to overcome, your mark will not be accepted in those countries. However, unlike the EU trade mark your application will continue to be acceptable in other countries unless there are valid objections in any of those countries.

International Searching
Before proceeding with a trademark registration internationally it is possible to conduct an international search to reduce the risk of failure. This could involve searching the national trademark registers of the countries in which you are interested in registering a trademark. Trademark searching is essentially an exercise in risk management.  If you are an established mark, a search may be less important, than if you are just launching a new product or business.