Tag Archives: trade mark

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.

Trademark Infringement and Apple – a familiar story?

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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 icloud.com, whilst iCloud Communications owns the domain name geticloud.com. 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

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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.

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.

Tottenham Hotspur: Loss of Trade Mark Rights Through Relocation

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Tottenham Hotspur’s bid to move from Tottenham to the new Olympic Park has been raising eyebrows recently.  David Lammy, MP for Tottenham and former Minister for Intellectual Property, has threatened to take legal action if the club take their name with them when they move. It is argued it would be misleading and deceptive if they continue using the registered trade mark “Tottenham Hotspur” once they have moved. This raises an interesting question: what happens when a trade mark owner decides to change the location of their business, when their registered trade mark is inextricably linked with their geography?

Successful registration does not guarantee the indefinite protection of a trade mark.  Aside from expiry, there are two important ways in which a mark might be removed from the registers: invalidation, and revocation.  One of the grounds for revocation is, as argued by Lammy, that the use of the trade mark is liable to mislead the public, but when does the use of a trade mark become misleading? Can a trade mark become misleading where its owner alters the geographical location of their business in such a way that the mark, formerly suggestive of origin, leads consumers to make an incorrect assumption about where goods or services come from?  Of course it can, but not in all cases. A trade mark owner should be entitled to move their business around, but at the same time the law should protect consumers from being mislead about where goods and services come from.

The question here is whether the move of Tottenham Hotspur to the Olympic Park will indeed mislead the public. In this regard it should be considered to what extent the public rely on Tottenham in the club’s name as a geographical indication. The name certainly shouldn’t be taken to suggest that the players are Tottenham born and bred, given that the team includes stars from Brazil, Russia and Ireland. Nor does the name of a football club tell you where the majority of the fanbase is located – Manchester Utd being the obvious example. In this case, it might be argued that the public expect the name of the team to tell them the location of the club’s home ground, but on the other hand, could the name not be seen as simply characteristic of the club’s history? If the players, management and fans of a club are not bound geographically, then does it matter that a club’s home ground isn’t where it was when the club was founded? What are your thoughts?

Football fanaticism aside, a takeaway point for businesses here is that successfully registering their trade mark is not necessarily the end of the battle.  Third parties can apply for revocation on a number of grounds, and trade mark owners should give some thought to the way their marks are used, where relevant including provisions in licensing agreements to ensure that licensees don’t use their mark in a misleading manner, which might jeopardize its registration.