Category Archives: trademark registration

How to trademark: 6 points you need to know

Posted on by

How to trademarkYour name is what you use to promote and advertise your business and it’s what your customers use to recommend your product or service. You build up goodwill in the name through using it.

Therefore, it makes sense to own the rights in it by registering the name as a trademark as a priority. Once registered, the rights in the name may be transferred just like any physical property.

The choice of name is important from a legal perspective. The more distinctive your name, the easier and more affordable it will be to take action against anyone who piggybacks off your success.

There are 6 key points to take into account in order to understand how trademarks operate.

Similar trademark names are a problem

An important objective of trademarks is to avoid customer confusion about the source or origin of goods and services. This means if you wanted to choose a name that was already registered, it wouldn’t be enough simply to make slight adjustments to the name (such as in the spelling or add an extra word) in order to avoid clashing with an existing registration.

The broad scope of protection of trademarks looks at the issue from the customer’s point of view. Without the legal protection of trademarks, consumers cannot rely on finding products and services they’ve liked in the past and want to use again. If the names are too similar, the customers can be confused and disappointed if they mistakenly purchased the wrong product.

Company and domain registrations are not enough

Owning a company name or domain name does not automatically give you a right to prevent others using a similar name. Even if you have registered the .com of the name or limited company, you will still need to check the trademark register first.

You may well be able to use the company or domain name you’ve registered, provided you don’t use it in competition with an existing business that has trademark rights in the name. It depends on the business activity you want to use it for and whether you will have a legal problem.

There is a difference between registered and unregistered trademarks.

It is not necessary to register a trademark in order to use a name. But there are serious downsides to not registering a name. For example unbeknown to you, someone else may have registration which prevents your using the name, or someone else might begin to use the same name or register it first.

If you have been using a name for a long time, you may have built up sufficient rights in it to be able to stop another party using the same name on the grounds that they are ‘passing off’ their business as yours. Bear in mind though, that it costs time and money to take action in these situation and you face all the uncertainties of litigation.

Trademarks are territorial

Trademarks are registered on a country-by-country basis. So if you register a trademark with the UK Intellectual Property office, it will give you the rights to use your mark in the UK. But if someone based in another country uses the same mark, your UK mark does not give you the right to stop them.

Trademarks comprise certain categories of goods or services

Names can be shared by more than one business, provided the businesses are not in competition with each other. The reason for this is that trademarks are registered against classifications, and you are permitted to use the trademarks for those predefined categories of business.

There are 45 trademark classes in all. The overriding issue is that the names must not cause confusion to consumers looking to buy products or services.

Famous marks are an exception to the classification rule

A famous or well-known mark may enjoy broader protection than an ordinary mark, in view of its widespread reputation or recognition. Such marks are not subject to the classification restrictions.

The objections to applications trying to register famous marks in different classes is that the applicant is taking unfair advantage of the mark’s fame and its use could have a detrimental impact on the well-known trademark.

These consideration need to be understood before choosing a brand name. To learn more, read ‘Legally Branded’ written by Shireen Smith.


Trademark protection of pantone 2685c not wrapped up by Cadbury

Posted on by

Image for Blog Post - Cadbury

Securing trademark protection for colours is notoriously difficult, as demonstrated by the recent Court of Appeal ruling in the litigation between Cadbury and Nestlé, concerning the trademark registration of pantone 2685c.

Nestlé v. Cadbury

In 1914, as a tribute to Queen Victoria, whose favourite colour was purple, Cadbury started to use the shade of purple known as pantone 2685c on its packaging, and it has done so ever since. In October 2004 Cadbury applied for trademark protection of this shade of purple for all chocolate goods. In 2008 Nestlé opposed the registration. After three years of proceedings between the parties the case went through to a hearing. Five months later, in December 2011, a final decision was made by the Hearing Officer, who concluded that the colour was capable of being registered. Nestlé subsequently appealed this decision. In May 2012, the High Court ruled in favour of Cadbury but limited the trademark protection to chocolate bars and chocolate drinks. See our previous blog post (Can You Trademark A Colour? Cadbury Secures The Rights To The Colour Purple) for further details. In its ruling of 4 October 2013 the Court of Appeal overturned the decision of the High Court.

Three Court of Appeal Judges found that the trademark lacked “specificity, clarity and precision of visual appearance”, and therefore to allow the trademark to be registered would, they said, “offend against the principle of certainty and the principle of fairness by giving a competitive edge to Cadbury and by putting Nestlé and its competitors at a disadvantage”. The reason for this decision was that the wording Cadbury had used to describe the colour was ambiguous. Cadbury described the colour in its application for trademark protection as: “the colour purple (Pantone 2685c) …. applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods“. It was the use of the word ‘predominant’ within this description that led to the Judges determining that the trademark lacked clarity, as it “opened the door to a multitude of different visual forms”. Cadbury argued that the word ‘predominant’ meant that the colour covered more than 50% of the surface area in question and Sir Timothy Lloyd did suggest that “if Cadbury had spelled this out in their registration it may have been possible to achieve certainty”.

Cadbury have indicated that they may appeal this decision. If they do appeal, the case will most likely be heard by the European Court of Justice. It will certainly be interesting to see what happens next.

It is important to remember that this decision does not mean that Cadbury cannot pursue anyone who now launches a range of chocolate bars and goods packaged within the same or similar shade of purple. They still have the right to bring a passing off claim against anyone who tries to misrepresent their goods as Cadburys.

Trademark protection for colours

To register a trademark, whether it is a word, logo, colour or shape, the applicant must show that the trademark is a sign, can be graphically represented and is capable of being distinguished from other trademarks. As this case demonstrates, it is difficult to secure trademark protection for a colour due to the requirement that the trademark must be graphically represented in a clear and unambiguous manner. Although difficult, it is not impossible to trademark a colour and many companies have managed to do so. For example, Tiffany’s have registered pantone 1837, better known as Tiffany Blue, for boxes, shopping bags and the cover of catalogues, and Heinz have secured trademark protection for the distinctive turquoise colour found on the packaging of its baked beans.

What can we learn?

It is important to ensure that when you register a trademark your application is clear, precise, durable and unambiguous. We must learn from the mistakes made by Cadbury in their application to register pantone 2685c.

Trademark law can be complex, especially if you are trying to register a colour or shape. Professional advice is essential, as trademark lawyers can help draft your application to ensure that it meets the necessary requirements, giving you a better chance of securing trademark protection. This is particularly important with UK trademark applications as the IPO appears to be taking an increasingly tough stance when determining what is and is not capable of registration.

Product Creation and Brand Protection: The Pitfalls of Duffins

Posted on by

Product Creation and Brand Protection Recipes Coca Cola ImageSpurred on by the popularity of cookery programmes such as The Great British Bakeoff, bakers have reportedly been expanding their product lines to include hybrid bakery products such as ‘duffins’ (doughnut fried muffins), ‘cronuts’, (donut fried croissants) and ‘townies’ (a combination of tart and brownie).  This flurry in product creation has turned out to be unexpectedly controversial, as bakeries have attempted to stop other bakeries selling these products by using trademarks.

Any business that creates innovative products is interested in how these can be protected from being copied by competitors. Businesses in the food and drink industry often find it frustrating that recipes are not protected by copyright. Recipes can be copied, changed and circulated without legal redress for the originator. This does not mean that it is not possible to secure protection for a successful recipe.

A useful way to protect recipes is by keeping the recipe secret. Coca-Cola is an example of a thriving recipe that is protected by trade secrets. Any business that wants to use trade secrets should take legal advice early in the product development process to ensure that the appropriate confidentiality arrangements are put in place.

Another useful legal protection for recipes can be found in trademarks. If the business can develop a brand name or other elements of branding to market their food products, then trademarking a name can help protect the product the brand is used for, even products that can be easily copied. Think about food products like Bisto, who have managed to maintain a strong market share for an everyday food product using Bisto branding for over 100 years.

A UK trademark for DUFFIN has recently been registered in the name of Rich Products Limited, a bakery wholesalers who supply retailers like Starbucks. The brand name CRONUT is also trademarked. Independent SMEs manufacturing hybrid bakery goods now run the risk of trademark infringement if they use the names ‘Cronut’ or ‘Duffin’ for their own products. Disputes about trademark infringement can be time-consuming and costly for an SME.

Branding strategies of start-up businesses often focus on the protection of the business brand name. Creating an ‘umbrella’ brand, so that all the goods and services a business sells use the same brand, is often an efficient branding strategy for an SME as energy can be focused on building up goodwill in one brand name. However, it is important not to forget that products can be separately protected, and that giving particular goods or services their own distinctive brand name might create a commercial advantage. For example, Rich Products and their distributors now have a commercial advantage as only they can legitimately use the brand name ‘duffins’ for donut-muffin hybrids.

In order to benefit from trademark protection, the name chosen for a product must fit the criteria for trademark protection. In particular, it must be distinctive and not descriptive. The words ‘muffin’ and ‘donut’ are not trademarkable, because they are generic descriptive terms. The word ‘duffin’ could be seen in a similar light as it just merges the two words to describe a combination product, although combination words like this can have many variations. The word ‘duffin’ is not in widespread use yet, so the name contains an element of surprise or creativity that some might consider distinctive and therefore trademarkable. As hybrid bakery goods become more popular, this distinctiveness could wane.

When using brand names that verge on descriptiveness, early trademark registration is essential. Without registered trademark proprietors rigorously enforcing the distinctiveness of marks, the terms ‘cronut’ and ‘duffin’ might well go the same way as ‘sellotape’ and ‘hoover’, which both started out as brand names and are now generic descriptive words.  Avoiding descriptiveness in a product name should be part of a product development strategy. Descriptiveness should also be avoided if trade secret protection is sought for a recipe – keeping a secret is no use if it can be easily guessed.

The game is not over for bakery sellers. The underlying hybrid bakery products themselves are not protected; they can be freely made and traded. However, bakery businesses are going to have to carefully consider their product branding. Greggs, for example, are now marketing a product called the ‘Gregg-nut’. Bea’s of Bloomsbury are reportedly challenging the trademark registration for DUFFINS, on the basis that they have been using the name for their own products for over two years, and it will be interesting to see the outcome. Businesses seeking to exploit the popularity of certain products should always seek legal advice, both on how they can use trademarks to protect their own products, and on how their businesses may be affected by the trademark registrations of competitors.

Product manufacturers and developers often focus on brand protection for their business name, and don’t seek advice about the protection afforded to their products by intellectual property law until their products are already on the market. It is important to consider your brand strategy for your products from the beginning of the product development process and to obtain legal advice on trademark protection if your product is not eligible for patent or copyright protection.




UGG Trademark Disputes

Posted on by

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.

GOOGLE PLUS – Brand Naming Strategy

Posted on by

Google’s launch of its social networking site, Google Plus, has caused a lot of attention and speculation in the media.  However, it is not just the site itself that has provoked discussion, but its name too.

Google’s decision to create its social media site under the Google brand has been criticized and praised in equal measure.      

Unlike Google, Apple is a company that has launched its products and services under new names, for example, recently using a lowercase letter ‘i’ to distinguish a service as belonging to it.

Whilst this strategy has been successful in some cases, in others Apple’s use of common words such as ‘phone’ or ‘book’ in combination with ‘i’ has caused it to face lawsuits for trademark infringement as mentioned in our previous blog, Apple under fire again-this time over ibook.

Although Apple has generally managed to fight or pay its way into keeping its chosen brand names, what is for sure is that Google by using its pre-existing trademark for its other services, will be unlikely to attract costly lawsuits over trademark infringement.

Google’s brand strategy

It is not just with Google Plus that Google has used this lower cost more straightforward approach to its new names.  It has launched other products under the GOOGLE brand name such as Google News, Google Translate, and Google Chrome.

As well as this, alongside the introduction of Google Plus, two of its existing services are also getting a rebrand. The names for Google’s longstanding products Picasa and Blogger are going to be retired.  Picasa will become ‘Google Photos’ while Blogger will become ‘Google Blogs’.

Brand unification

Ben Parr of Mashable states that this ‘brand unification effort will be the largest in the company’s history’. By bringing more of Google’s products under one brand name, this will help to strengthen and solidify the Google brand. Over the past few years Google has managed to be a consistently highly rated brand, meaning that any new products will benefit from using the company’s name.

However, despite the fact that Google’s strategy of launching its social networking site under the existing brand name has some upsides, its decision has come under scrutiny, mainly because some think that the name ‘Google’ is associated with a search engine rather than a Social Network, so that when they hear the name Google, ‘social’ does not enter their heads.  Therefore,  some have criticized Google for not launching its social media site under a different brand name

Brand extension

Is it really going to strengthen Google’s brand to extend the original brand name to other areas? Or is the power of a brand in its ability to pinpoint a specific service to one name? Whereas before, the word ‘Google’ was synonymous with its search engine service, extending this meaning to cover social networking as well could weaken or strengthen the power of this brand.

Rather than trying to launch a new service, separate from its search engine one, what Google is trying to do is to make Google more ‘’people centric”. Vic Gondotra, the leader of Google’s social efforts, statedWe’re transforming Google itself into a social destination at a level and scale that we’ve never attempted — orders of magnitude more investment, in terms of people, than any previous project”. Rather than trying to provide just a social media service, Google itself wants to become more social.

So when branding products, it seems Google’s approach is one that might eliminate lawsuits over trademark infringement, and also help to strengthen the brand as a whole. As the web becomes more social, and Google is in danger of being taken over and replaced by sites such as Facebook, Google’s decision to rebrand itself as ‘social’, bringing the company name into this brand, will help it to redefine itself in accordance to the changing nature of web usage.


One problem Google has been facing is the increasing tendency for people to use its name as a verb.  In recent times people have talked about ‘goggling’ or ‘facebooking’. While it may be flattering for a brand to gain such recognition this could be disastrous for its trade mark rights.

Take for example ASPIRIN.  It used to be a trademarked name for a pain reliever medicine made of acetylsalicylic acid which was made by only one company.  Now it is synonymous with that type of pain killer and made by many companies.

Many other once famous marks are now only generic words and no longer trademarks including CATERPILLER, HOOVER, THERMOS and WALKMAN while XEROX and KLEENEX have gone dangerously close to losing their marks.

When a mark is generic it means the trade mark is synonymous with all versions of that product.

There are steps you can take to prevent this from happening. One way to reduce risk is to use generic descriptors to clearly differentiate the trade mark and the product.  That is, Xerox copier or Kleenex tissues, and to ensure everyone else does likewise.

If a mark becomes generic it is almost impossible for the mark to be registered again. It will be deemed to lack distinctiveness and then everyone will be able to use it.

By choosing to stick with its existing brand name, for Google Plus is Google helping or hindering itself?  Will Google’s decision to use its name with brand extension descriptors put it in a better or worse position to avoid genericity?   What do you think? I hope to hear readers’ thoughts.

ELIO FIORUCCI – Owning own name?

Posted on by

In our earlier blog piece Fashion Industry. Fiorucci. Use of own name we wrote about Mr Fiorucci, a fashion designer who had achieved certain renown in Italy during the 1970s.  This is an update on the progress of that case, which has made its way from OHIM, through the Board of Appeal, to the General Court and eventually landed in the European Court of Justice, which recently rendered its decision.

In 1990, due to some cash problems, he sold his company, Fiorucci SpA, to Edwin Co. Ltd, a Japanese Multinational, along with its entire creative assets including all the trademarks it owned and “all the rights exclusively to use the designation ‘FIORUCCI’”.                   

Subsequently, Edwin registered as an EU word mark the name ELIO  FIORUCCI.  However in 2003, Mr Fiorucci brought an action to invalidate this registration on the grounds of his right to the name under a national law. The Cancellation Division duly declared the ELIO FIORUCCI community trademark invalid holding that Elio Fiorucci had an earlier right under Italian laws.  These laws stipulated that well known personal names may be registered as a trade mark only by, or with the consent of that person. In this case, the ELIO FIORUCCI mark had been well known, and no such consent had been given.

That decision was then annulled by the Board of Appeal, who held that his situation did not fall within the scope of the Italian regulations, which were designed to prevent third parties from exploiting for commercial purposes the name of a person who had become well known for non-commercial activities. As Mr Fiorucci’s name was renowned as a result of commercial activity the Board found that the rule did not apply.

Fiorucci took the case to the General Court, hoping to have this decision set aside, and the registration revoked or declared invalid. The Court refused to revoke the registration on the basis that it was likely to mislead consumers. However, it did reject the Board’s view that the situation fell outside the scope of the Italian regulations, on the basis that the wording of the national law does not require renown to derive from non-entrepreneurial activity. The effect was merely to set aside the decision of the Board of Appeal, and leave standing the Cancellation Division’s declaration of invalidity.

The General Court’s interpretation of this national law has now been upheld by the European Court of Justice following appeal by Edwin. The ECJ rejected Edwin’s argument that the right to a name under the Italian law was limited to its protection as an attribute of personality, holding that the provision may be relied upon as a right to commercial exploitation of a name.

It is interesting to note that Elio’s case might have reached a different outcome if the Board of Appeal had examined Edwin’s argument that they were assigned trademark rights in the name ELIO  FIORUCCI.  As the Board did not do so, the ECJ found that the General Court was correct in not dealing with this question, as it was not within the Court’s power to substitute its own reasoning on issues where the Board of Appeal had not adopted a position.

Important points to take away from this case include:

  1. The holder of rights to a name is entitled to prevent its use as a Community trade mark where national law so permits.
  2. If there is to be an assignment of trademark rights in some elements of a personal name, like in Elio’s case (FIORUCCI), then the extent of that assignment should be made very clear, for example whether the assignment extends to the full name of that person.
  3. Provided that the essential function of a trademark is maintained (i.e. to guarantee the nature, quality or origin of goods or services), and there is no likelihood of deceiving consumers, then an individual is unlikely to succeed in securing revocation of a trademark for their personal name which was assigned earlier to another business now owning the mark.

Trade names or business names as trademarks

Posted on by

Quinn & Donnelly is one of Ireland’s well-known and most successful fashion design partnerships which was founded more than 30 years ago when the pair were fashion students.

Their collections, which are generally affordable, and primarily aimed at working women, have been sold for more than 15 years by retailers including Brown Thomas and House of Fraser. Recently, they were involved in a dispute concerning their brand name Quinn & Donnelly.

Although they registered their name as a business name years ago (on the register of Business Names, which has now been abolished) they did not register it as a trademark. They only applied to register it as a trademark last year.  However, their Irish manufacturer, Sonole Designs has objected claiming rights in the mark. There is currently little information available about the basis on which Sonole is claiming rights in the trademark.  It is possible the dispute is based on the terms of the original agreement between the parties.

Quinn and Donnelly have worked with this manufacturer for the past eight years. The dispute is now before the Intellectual Property Office which may take six months or longer to resolve and until a decision is reached in the matter, no collections may be produced under the mark.

Distinction between trademarks and business names.

At this point it is worth considering the distinction between trademarks and business names briefly. A trademark is a distinctive sign or indicator used by a business to identify its products or services to consumers.  It is a sign informing consumers that goods or services originate from a particular source, so they are able to distinguish it from similar products or services in the market.

A business name is the name under which a business trades.  So, if you are a sole trader or have a registered company name you could choose to be known as something else. For many businesses the trading name will be the same as their registered company name and will also act as their trademark. It all depends on how the names are used in practice.

To be able to function as a trademark a name must meet certain criteria, such as to not simply describe the products or services of the business.  If a trade name is used as a designation of origin to inform consumers where a product or service is coming from, then it is being used as a trademark.

This seems to be the case with the fashion designers in the present dispute.

As happens all too often in practice, the designers were under the impression that their registered business name was sufficient.  They had not realized they needed to register it as a trademark.

In such cases, the best advice is to register the trademark as soon as trading begins. If Quinn & Donnelly had done so, they may have possibly avoided the current dispute with their manufacturer, assuming they  understood the importance of clarifying who owns the IP rights when entering into agreements with manufacturers.

Often when businesses have not registered trademarks they have to rely on unregistered trademark rights in the name.  An unregistered trademark must be either inherently distinctive or possess secondary meaning to receive protection under trademark law. In other words, the question turns on whether there is goodwill in the name.  Does it act, in the eyes of consumers, as a designation of origin of the goods?  The evidential burden of proof can be substantial, and it is much simpler to establish rights in a name if it is registered as a trademark.

So the moral of this story is to register a trademark at the earliest opportunity.

Trademark Infringement and Apple – a familiar story?

Posted on by

It’s been widely reported that Apple is being sued by iCloud Communications, an Arizona based company, following its announcement about the launch Apple iCloud Services.

iCloud Communications’ lawsuit states that Apple is infringing its trademarked name iCloud. Apple has been involved in numerous lawsuits to do with copyright and trademark infringement within the last few years.

The idea behind Apple’s iCloud Services is that it will allow users to store all their data, such as music and photos, on the secure servers for easy access.  The service will be available from this Autumn and will be free to use for the first 5GB of storage.

iCloud Communications have stated that the online services Apple is providing are very similar to what they themselves provide:  ‘The goods and services with which Apple intends to use the ‘iCloud’ mark are identical to or closely related to the goods and services that have been offer by iCloud Communications under iCloud Marks since its formation in 2005.’

The company claims its business is already being affected by Apple’s new service announcement. It believes the term ‘iCloud’ is now being associated with Apple rather than with iCloud Communications, and so the company is seeking monetary relief.  It is also requiring Apple to stop using the name iCloud for any of its services.

It is not the first time Apple has been faced with lawsuits and allegations over trademark infringement. Even the name Apple sparked a legal battle with Apple Corp, the Beatle’s Record labe.  That trademark infringement dispute was resolved when Apple agreed not to use the name for music. Even once Apple launched iTunes, the company still got round the suit by agreeing to include the Beatle’s albums in their iTunes library. Following this, Apple has entered into a number of other legal battles over names they have adopted for their products or services.

For example, Apple has fought with Cisco over the name ‘iPhone’, and is fighting with Microsoft and McIntosh labs of Macintosh computers over the name ‘App Store’. So Apple’s clash with iCloud Communications follows in the line of many others.

Using such common names as Apple has chosen to do, it is not surprising that the company has run into a fair amount of legal trouble over them. Apple’s use of the lower-case ‘i’ being placed in front of common words is bound to result in other companies who also have similar names and ideas.

iCloud Communications in its lawsuit even pointed out Apple’s tendency to do so. They stated,although Apple aggressively protects its trademark rights, Apple has a long and well known history of knowingly and willfully treading on the trademark rights of others’

Apple has already spent $4.5 million on purchasing the domain name, whilst iCloud Communications owns the domain name So far Apple has not commented on the lawsuit, but by the look of things Apple must once again fight off a trademark suit in order to keep the name. In previous cases Apple has managed to settle out of court and has not had to change its desired product names. Will Apple be able to do the same this time?

Is Trade Mark Registration Necessary? – Part 2

Posted on by

In our blog post last week  Is a Trademark necessary for your business? we mentioned how some people are confused about trademarks.

We explored the relevance of trademarks for SMEs, the potential danger of a DIY approach and when a trademark may not be capable of registration.

This week, among other things, we look at international registrations, name searching, and risk management.

International registrations

International registrations which involve extending an existing trademark registration to other countries, such as under the system known as the Madrid Protocol, make it very important to have a well drafted UK trademark registration.

If your initial trademark registration is not adequate to cover your business activities it will be worthless.  To then invest in wider international trademarking on the basis of that application would be misguided.

So, if you have registered your own trademark, it’s worth getting professional help from a trademark lawyer before extending the registration to other countries.  It may well be necessary to file a fresh base application – that is, a UK trademark, at the same time with your Madrid Protocol application.

Otherwise, if you base a Madrid protocol application on an inadequate registration you will be transferring those inadequacies across to the registrations in other countries.

Businesses that just want to get going

Some people use a new name not because they are particularly attached to it but because they need a name in order to get going with their business.

If you fall into this category then trademarking would not be appropriate for you.  Instead check the trademark registers to ensure your use of the name will not cause problems by infringing on others’ rights, and then just proceed to use the name.  There is no requirement to have a trademark in order to use a name.

The 3 registrations: company, domain and trademark.

The simple road map for choosing names for an online business is to check 3 registers: trademark, domain and company.

The order is significant and it is best to start with the trademark registers, as trademarks are the most legally effective way to stake out claims in a name.  If the name is already registered on the trademark registers for your category, then choose another one.  There is no point even looking at available domain or company names.

But we have noticed people often confuse the rights granted by each type of registration.  It is widely believed that a domain and company registration give conclusive rights in a name.  Often the trademark registers are completely neglected.

Although the law of passing off gives you some rights over a business name you have used, and in which you have built up rights, the scope of your protection is, in practice, limited to the rights you can prove you’ve generated.  This requires evidence of use, confusion and more resources to enforce than small businesses can afford.  It also has all the uncertainties inherent in litigation.

It is, in practice, easier to enforce rights in a name you have registered as a trademark, than in a name you have simply been using. A registered trademark is on the public registers, and as such notifies the world of your rights in the name.

If you have a domain name dispute, it is easier to pursue your claim by attaching a trademark certificate.  Without a registration, you would need to produce volumnious information about your rights in the name, and your domain name ownership may be more vulnerable to attack by other trademark owners.

A trademark is also indispensable if you have any user name disputes relating to social media sites.

We have seen instances of clients registering a domain without doing a trademark search, and then finding themselves on the defensive when a trademark owner considers the domain name to be confusing, and applies to have it transferred.

Therefore, in practice, not having a trademark registration could mean building your brand on a house of cards.

Risk management

If you have been in business for a long time, you may wonder (like many it seems) whether registering a trademark is really worth the expense.  One reason it might be, is when it comes to exiting the business.  Anyone taking over the  business will expect to see a registered trademark in the name you have been using for the business.

A prudent businessperson should constantly seek to pre-emptively reduce their exposure to risk.  So, risk  management is another important reason for protecting the brand with a trademark and other IPRs.

While acquiring a trademark may seem costly to a start-up which is inherently conscious of cashflow, it is inexpensive relative to the potential cost of litigation further down the line. 

The fact that you can build up rights to a name without registering it as a trademark does not mean there is no value in registering a trademark, and so it should not dissuade you from registering a trademark.  Whether you would be able to prevail in future litigation to reclaim the name from someone else who may beat you to it by registering the name first is uncertain.  So why set yourself up for litigation, when it is so easy to register the name when it’s available?

There is a place for DIY registrations provided you take the time to learn to do it well.  But do get professional help later if your business takes off.  Professional guidance will check that your registration is adequate, and is particularly important when you want to apply for wider protection internationally.

Is a Trademark necessary for your business?

Posted on by

Effectively protecting your intellectual property rights (“IPRs”) is one of the most vital decisions a start-up business can make.  Unfortunately however, taking the appropriate steps to legally protect the brand and goodwill of a business is all too often the last thing on the mind of eager entrepreneurs.  Even experienced business persons are prone to misunderstanding the scope and effect of IPRs. Undoubtedly, one of the most misconceived IPRs is that of trademarks.

Pooling research from an Azrights poll, as well as analytics from search engine suggestions, we have compiled a number of common questions and trends in order to ascertain firstly: which aspects of trademarks are generally misunderstood, and subsequently to explain the legal and commercial advantages in exploiting your IPR by acquiring trademarks.

If you are contemplating whether a trademark is of relevance to you or your business, you may find the following useful.

General  confusion

From our research it became apparent that there is a general confusion regarding trademarks and how they operate.  Many queries we received asked what trademark law, infringement, dilution, protection etc actually is.

Also, there was a general confusion as to what trademarks actually protect and how they differ from copyright, why a trademark is important or necessary at all, concerns about how much registration is going to cost, and several queries relating to which trademark symbols to use (either ™ or ®).

Questions, opinions and concerns regarding trademarks
More specifically one point which became clear from our research is an obvious do-it-yourself attitude with regard to trademarks, in particular in relation to trademark registration.

For example, common requests from business start-ups are for templates for contracts , licencing agreements, applications and assignments, cease and desist letters and letters of consent.

It seems people would rather take the obvious risks involved in copying a sample precedent obtained for little cost, or registering a trademark themselves, in order to avoid paying for legal advice. 

DIY and risks

If you are intending to register your own trade mark then I imagine the key motivation is to economise.

However, Trade mark law is complicated and registering a trade mark yourself will inevitably entail risk.

First, you need a thorough search to be done of the registers to clear your brand name before registering.

People who neglect this first step can quickly end up with an opposition to their mark by other trade mark owners and dealing effectively with oppositions involves a significant amount of time and resources.

So if you were originally aiming to save money, when faced with an opposition, you may be forced to seek legal assistance, legal advice to clarify your chances of success and possibly representation.

But if you can minimise the occurrence of an opposition by instructing a proper search first then this could actually save you money in the long run.

Beware also that searching is not simply a matter of checking the registers. Trade marks are organised by categories of goods, so if you see someone with the same name as your trade mark then that may not be the end of the game.  An experienced trade mark attorney can guide you within this field.

What can I or can’t I register?

From our survey we saw that people are often confused about what they can and can’t register as a trade mark (for example letters, figures and logos).

Conversely, some people may think that they can trade mark any word, but that is certainly not the case.

There are a number of restrictions on the types of trade marks or words that can be registered. Not knowing the limitations of trade marking could mean the registry office throws out your application.

The value of your trade mark

Another area to be aware of is that trade mark applications have to have the right scope.

They should be tightly drafted and should respond to your current and future business (i.e. they should reflect the potential growth of your business).

In this respect, you will need to know which categories of goods and services ‘Classifications’ are relevant to your business and from the thousands of descriptions within a classification you will need to assemble and adapt the descriptions to your business, which is certainly not a straightforward task.

This is because your descriptions and classifications essentially determine the scope of your trade mark, so getting them right is fundamental , as the value of your trade mark is intrinsically linked to this exercise.

Badly drafted applications end up not being worth the paper they are written on, and essentially defeat the purpose of pursuing legal protections in your business at all.

Also, some people register their logos on the misapprehension they are obtaining substantial rights in the word elements.  To avoid future misunderstandings, you should be clear from the outset about what rights you will be obtaining in a registration.

More on this next week…