Trade Marks and Brands in the Internet age

Protecting your corporate identity,
logos and designs in the Internet age
Niall Tierney, Partner
Contego Intellectual Property, Solicitors
Copyright Niall Tierney 2012. All Rights Reserved.

My Background
Solicitor – England and Wales.
Barrister-at-Law – Ireland.
Registered Trade Mark Agent – Ireland.
European Trade Mark Attorney.
European Design Attorney.

Topics

Some Myths
My company registration gives me exclusive rights;
My domain name registration gives me protection;
I got there first with my name;
I have copyright in my name;
I can patent my name/logo.

Ways you can protect
Rely on un-registered (Common law) rights;
Register my name and/or logo as a Trade Mark;
Rely on copyright to stop others copying my logo;
Register my logo as a Design;
Register my product shapes and packaging as designs;
Domain name registration;
Register your Trade Marks as AdWords.

What is a Trade Mark
 A Trade Mark is a sign that distinguishes your goods and/or services from those of your
competitors.
 A Trade Mark can encompass anything from the brand name you use on your product,
to logos, the shape of goods and the get up of packaging. The list of what may constitute
a Trade Mark is not exhaustive.
 In some cases, it is possible to register smells, shapes and sounds as Trade Marks.
 A Trade Mark must be capable of being represented graphically.

Registering a Trade Mark in the UK
 In the UK, a Trade Mark registration is granted by the UK Intellectual Property
Office.
 Trade Mark protection in the UK can also be achieved by applying to register a
pan European (CTM) Trade Mark.
 A Trade Mark can be refused registration on the following grounds;
Absolute Grounds;
Relative Grounds;
 An unchallenged Trade Mark application will be registered within about four to
six months from filing

Types of Trade Marks
Shape Trade Mark Single Colour Trade
Mark

Types of Trade Mark
Olfactory Trade Mark Sound Trade Mark
The smell of fresh cut grass  Sound Trade Mark

Absolute Grounds of Refusal of a Trade
Mark
– Trade Mark is not capable of distinguishing your goods and/or services from those of your
competitors;
– Is not capable of being represented graphically;
– It does not have distinctive character;
– It describes the goods and/or services for which registration is sought;
– It consists exclusively of the shape of the goods for which registration is sought;
– It consists exclusively of a shape which is functional;
– It consists exclusively of a shape which gives substantial value to the goods for which registration is
sought;
– It is contrary to accepted principles of morality or law;
– It deceives as to the nature, quality, or geographical origin of the goods and/or services for which
registration is sought;

Relative Grounds of Refusal
 An application to register a Trade Mark can be challenged by the holder of an earlier identical
or similar Trade Mark that covers identical and/or similar goods and/or services.
 A Trade Mark will also be refused if the holder of an earlier reputable or distinctive Trade
Mark can show that use of the later Trade Mark, would, without due cause either:
take unfair advantage of, or
be detrimental to the distinctive character or reputation of the earlier trade mark.
 A Trade Mark can also be refused if it clashes with an earlier unregistered right in the
following circumstances:
• There is goodwill/reputation under the earlier right in the United Kingdom;
• The Trade Mark being applied for will deceive consumers into believing that the goods/services for
which registration is sought originate from or are endorsed authorised by the earlier right holder, and
• Use and registration of the filed Trade Mark will damage or is likely to damage the business goodwill
under the earlier right.

European (CTM) Trade Mark
The Community Trade Mark is a single Trade Mark registration that is effective and
enforceable throughout the 27 Member States of the European Union. This means it
is not necessary to seek registration of your Trade Mark in each EU Member State.
A CTM is an ‘all or nothing’ right. A CTM cannot be effective in some EU Member
States and not others. However, it may be possible to convert a CTM into
applications in EU Member States. These converted applications will retain the same
date of application as the CTM.
A CTM lasts for an initial period of 10 years, but can be renewed indefinitely for
further 10 year periods.

International Trade Mark Registration
(Madrid Protocol)
– Allows Trade Mark owners to protect their Trade Marks on an international basis by filing
one application with the World Intellectual Property Office (WIPO) in Geneva,
Switzerland.
– A Madrid application must be based on a Trade Mark application or registration from the
home country of the applicant and it must be filed through the owner’s national or
regional Intellectual Property Office.
– An applicant for a Madrid application simply has to designate the other countries of either
the Agreement or Protocol where protection of the Trade Mark is required.
– Designated countries have 18 months to notify WIPO of any objections to the application
for protection otherwise protection is automatically granted.
– The renewal, transfer and licence of an International registration can all be managed by
means of submitting a single application with WIPO.

Trade Mark registration outside the
UK
– Most countries maintain and run their own national Trade Mark registers.
– Some countries co-operate in running a single register, e.g. the Benelux
Trade Marks Register (Belgium, Luxembourg and the Netherlands).
– The majority of countries throughout the world are members of The Paris
Convention 1883. This means that all Member States must treat
applications filed by non nationals in the same way as those filed by its own
nationals.
– In the European Union (EU), the criteria under which Trade Mark
applications are examined have been the harmonised by the Trade Marks
Harmonisation Directive 207/2009, e.g. a ‘devoid of distinctive character’
objection can be raised in any EU Member State.

Enforcing a Trade Mark registration
 A Trade Mark registration gives its holder the exclusive right to use the Trade Mark in
relation to the goods and/or services for which it is registered in the territory where the
Trade Mark is registered.
 A Trade Mark registration allows its holder to prevent the unauthorised use of:-
 An identical sign in relation to identical goods.
 An identical sign in relation to similar goods/services where use would give rise to a likelihood of
confusion (including a likelihood of association).
 A similar sign in relation to identical and/or similar goods/services where use would give rise to a
likelihood of confusion (including a likelihood of association).
 An identical and/or similar sign in relation to similar and/or dissimilar goods/services where use would,
without due cause, take unfair advantage of, or be detrimental to, the distinctive character or reputation
of the Trade Mark.

Un-registered rights – Passing off
 In the United Kingdom, the holders of both registered and un-registered Trade Marks
can seek protection under the Common law tort of Passing off.
 Passing off can be relied on if:
 A misrepresentation has been made in course of trade by another person to customers or prospective
customers of the aggrieved party.
 The misrepresentation is calculated to deceive others into thinking that the offending sign is that of the
aggrieved party or is licensed/authorised by the aggrieved party.
 The misrepresentation is such that it has damaged, or is likely to damage, the goodwill/reputation that
the aggrieved party enjoys under his name.

What is a design ?
 A design constitutes the appearance of the whole or part of a product which results from
features such as lines, shape, contours, texture.
 A design can also include the materials of the product itself and/or its ornamentation.
 Product - Any industrial or handicraft item, including inter alia parts intended to be
assembled into a complex product, including packaging, get-up, graphic symbols and
typographic typefaces, but excluding computer programs.
 A complex product is a product which is composed of multiple components which can
be replaced permitting disassembly and re-assembly of the product

Requirement for a valid design
For a design to be valid in Europe, it must:
1. Be new, i.e. no identical design has been made available to the public:
a. in the case of an un-registered design, before the date of claimed protection.
b. in the case of a registered design, before the date of application for registration
2. Have individual character, i.e. if the overall impression it produces on an informed
user is different to designs that are already known:
a. in the case of an un-registered design, before the date of claimed protection.
b. in the case of a registered design, before the date of application for registration

Types of Designs
Motorcycle helmet Product packaging

Design Right - UK
 Design Right is unique to the United Kingdom.
 Design Right is a form of un-registered protection.
 Design Right gives automatic protection for the internal or external shape or
configuration of an original design.
 Design Right does NOT provide protection for two dimensional designs such as
patterns.
 Design Right lasts from either:
• 15 years from the date of creation of the design, or
• 10 years from the date the design was first marketed.

European (RCD) Design
 An RCD is a unitary design registration that is effective and enforceable throughout the
27 Member States of the European Union.
 The RCD Register is run and maintained by OHIM (aka the Trade Marks and Designs
Registration Office of the European Union).
 An application to register an RCD is not examined to assess whether it meets the legal
criteria for registration. However, to avoid third party challenges, an RCD must be
valid.
 To be valid, an RCD must be novel and have individual character.
 An RCD can be registered for up to 25 years provided a renewal fee is paid every 5
years.

European (RCD) Design – contd/...
 An RCD gives its holder the exclusive right to use the design throughout the 27
Member States of the European Union and to prevent its unauthorised use by third
parties whether by deliberate copying or by independent creation of a similar design.
 It is possible to file multiple designs in one application.
 It is also possible to keep the RCD confidential for a period of up to 36 months from the
date of filing.

Country by Country Design
Registrations
 As with Trade Marks, most countries throughout the world run and maintain their own
national Design Registers.
 Some countries also offer limited un-registered protection for designs.
 To be protected in some countries, designs must have some aesthetic feature.
Generally, functional designs are not capable of protection.
 To be registered, most countries require that a design must be ‘new’, although the
interpretation of this requirement varies from country to country.
 In some countries designs can also be protected under Copyright law, although certain
qualifications may apply.

Enforcing my design
 The holder of a Registered Design has exclusive rights to use it throughout the relevant
territory and to prevent third parties from both deliberately copying and independent
development of a design with the same overall impression.
 Protection of a Registered Design extends to all products, e.g. if your registration is
registered in respect of toys, you can prevent the use of a design of the same overall
impression on biscuits.
 The rights in a European Registered Design (RCD) can be enforced in any of the
designated Design Courts throughout the European Union.
 The holder of an un-registered Design can only prevent the deliberate copying of the
protected design and protection only lasts for three years from when the design was first
made available.

Licensing Trade Marks & Designs
 By licensing the use of its Intellectual Property Rights to other parties, a business can
secure an additional and regular source of income.
 Licensing of Intellectual Property may also facilitate increased market penetration.
 Registered Intellectual Property Rights are generally easier to license than un-registered
rights.
 Licences involving Intellectual Property should always be in writing.
 It is also possible for Intellectual Property rights to be sub-licensed.
 Intellectual Property licences can be exclusive or non-exclusive.
 Intellectual Property licences can also be Sole, i.e. only the Licensor (the IP owner) and
the Licensee can use the IP.
 Licenses involving Patents, Designs and Trade Marks can be recorded on the relevant
IPR Registers.
 Failure to record a Licence may mean that the Licensee’s rights will not be recognised in
the event that the Licensor transfers the IPR to another party.

Internet use
Registration of a domain name as a Trade Mark.
Disputes over Trade Marks and Domain Names.
UDRP Procedure.
Use of Trade Marks and Designs on the Internet.
Banners & Metatags.
Google® AdWords.

Domain names and Trade Marks
• It is not possible to register a domain name address as a Trade Mark, e.g. www.primebroker.com.
• The TLD part of a domain name (.com or .uk) is considered ‘devoid of distinctive character’.
• It might be possible to register a domain name if it has added graphical features.
• No two domain names can be identical. e.g. it is not possible to have two separately owned
www.nike.com domain names.
• Domain name registration is on a ‘first come, first served’ basis.
• It has become common for others to register the trading name or trade mark of a well known company
which is then offered back to the brand owner.
• Also common for people to register domain names which are similar to well known brands/trade marks
in order to attract attention to a website – this activity is better known as ‘Cyber-squatting.

Disputes over domain names and
Trade Marks
• Disputes over .com and .net domain names are heard by ICANN (Internet Corporation for
Assigned Names) under the Uniform Dispute Resolution Policy Procedure (UDRP);
• Disputes concerning ownership of .co.uk or any .uk domains are heard by Nominet;
• Some countries like Ireland (.ie) have adopted the UDRP procedure to deal with disputes
over their own ccTLD domain names;
• Disputes can also be heard in court,e.g. BT v One in a Million (1999);
• Potentially the registration of a domain which clashes with an earlier registered Trade Mark
may give rise to a claim of Trade Mark infringement;
• Where the domain name is identical to the earlier Trade Mark, the owner of the earlier
Trade Mark will need to show that the goods/services supplied under the domain name are
identical to those covered by the Trade Mark registration.

Disputes over domain names and
Trade Marks
• The best known case involving a dispute over domain names was BT v One in a Million (1990).
• One in a Million had registered numerous domain names which were virtually identical to the
Trade Marks of a number of well known companies, e.g. BT and Marks & Spencer.
• One in a Million then offered to sell the domain names back to the owners of the Trade
Marks.
• Court held that One in a Million had “created instruments of fraud’.
• Mere registration and maintenance in force of a domain name which leads people to think it is
connected with somebody else’s trade mark will be considered an ‘instrument of fraud’.

UDRP Procedure
Used by World Intellectual Property Organisation (WIPO).
.com or .net domain names can be cancelled where:
1. identical or confusingly similar to a trademark or service mark in which the TM
owner has rights;
2. Domain name registrant has no legitimate rights in the domain name;
3. Domain name has been registered and is used in bad faith, namely:
a. Acquiring the domain name for the purpose of selling, renting or otherwise transferring to the owner of the earlier trade
mark;
a. Preventing the owner of the trade mark from using it as part of a corresponding domain name;
a. Registering the domain name for the purpose of disrupting the business of a competitor;
a. Using the domain name to attract business away from the website of the Trade Mark owner.

Use of a Trade Mark on the
Internet • Protection of Trade Marks and Designs are limited to the geographical territory where protection has
been obtained.
• UK or European (CTM) Trade Marks cannot be used to stop use of an identical or similar Trade Mark
say, in Australia.
• The mere fact that websites can be accessed anywhere in the world does not mean, for trade mark
purposes, that the websites are used everywhere in the world.
• Crate & Barrel case – An American owner of a UK and European (CTM) was unable to stop use of an
identical sign by an Irish based website as it could not show use in the UK.
• Euromarket case – defendant had deliberately targeted UK market through his Hong Kong based website
which was in English. Also currency for paying was GB Sterling. Court held there was infringement.
• If you wish to deliberately attract non-UK business from a UK based website, it is wise to run a Trade
Mark search in the target country to ensure you do not infringe any domestic Trade Marks

Banners and Metatags – Reed Executive v
Reed Business Information case
Defendant used the word “Reed” in the following ways:
– metatags leading to their ‘totaljobs.com’ website;
– in banner advertising on search engine home pages linking to their ‘totaljobs.com’
website
Court held neither use infringed Reed Executives Trade Mark registration for REED because:
1. There was no visible appearance of the word REED in the banner advert
2. Even if use of a word as a metatag was deemed to be trade mark use, there would be no
infringement in the absence of consumer confusion.
Causing a site to appear in a search result does not necessarily suggest any connection with
somebody else.

Google® ‘AdWords’
• Google® ‘AdWords’ allows advertisers to buy ‘keywords’ which has the effect of promoting themselves
in Google® searches.
• The same keyword can be purchased by any number of parties.
• In a recent case Marks & Spencer purchased ‘Interflora’ as a keyword.
• Search for the word ‘Interflora’ resulted in a sponsored link to the M&S website that sells flowers;
• Court held use of an ‘AdWord’ only infringes if it has an adverse effect on the function of another’s trade
mark, i.e. to guarantee the origin or quality of the trade mark owners goods/services.
• Given that ‘Interflora’ is so well known, most consumers would have realised that there was no
connection between Marks & Spencer and Interflora.
• Marks & Spencer case has now gone back to English High Court for final determination.

Summary & Tips
• Always register your domain name as a Trade Mark;
• A Trade Mark registration will assist you in preventing others from registering
confusingly similar Domain Names;
• Register your most important Trade Marks as a Domain Names;
• Register your most important Trade Mark as an AdWord;
• If you have a UK based website that actively targets customers in another country,
always check to see if nobody else in that country has an identical or confusingly similar
Trade Mark;
• If nobody else in your target markets are using or have registered Trade Marks which
are identical or confusingly similar to yours, register your Trade Mark in that new
market.

Useful links & information
• UK Intellectual Property Office
• European Trade Marks and Designs Office
• World Intellectual Property Office
• Nominet
• UDRP

Thank you
ANY QUESTIONS?

Trade Marks and Brands in the Internet age

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