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The importance of ™ protection for new and established businesses
1. Importance of TM Protection for New & Established Business
25th October 2012
Allister McManus
2. Background to Venture Proof
What does VP do?
• Help investors, businesses, entrepreneurs & start-ups protect their ideas &
products.
• VP has qualified Patent & Trade Mark Attorneys to give you advice.
• VP offers a full range of services – from initial searches & advice right through
to preparing & filing applications, prosecution of those applications & post
registration maintenance.
• VP offers a number of fixed-price due diligence packages to check whether you
are free to protect and use your name or product.
3. My Background
Law Graduate Masters in IP Member of ITMA Registered TM Attorney
4. Introduction/background to Trade Marks (TMs)
What is a TM?
A TM can be
• Words
• Logos
• Slogans/strap lines
• Shapes – product packaging
• Characters, jingles, colours
5. Introduction/background to Trade Marks (TMs)
What does a TM do?
Essential function:
• Gives consumers a guarantee of identification of a marked product or
service.
• Helps distinguish from other products/services
• Badge of origin & guarantee of consistency
• Implied assurance of quality
• Sign to consumer that goods come from certain source & TM owner is
responsible for goods & their quality.
• Good example: Apple – we all want the new iPhone 5!
6. Introduction/background to Trade Marks (TMs)
What should you protect?
Choosing a TM depends on the functions it must fulfil:
• Distinctive TMs = indispensable tools for identification of goods/services
• Advertising & image is increasingly important. Power of a TM to act as a sign
guaranteeing source & quality is increasingly vital to business.
• Brand names = invaluable marketing tools.
• Many businesses invest significantly in development, marketing & protection
of brands.
• Can represent other appealing values or qualities: Aspirational associations of
high end fashion & technology brands.
7. Introduction/background to Trade Marks (TMs)
How long does it last?
• Potentially forever: Initial 10 years renewable indefinitely.
• First UK TM to be registered – BASS beer triangle – 1876
• Still in force – 136 years!
• Class 32: Pale ale
• Filed: 01 January 1876
• Renewed: 1 November 2011
• Next renewal date: 01 January 2022
8. Introduction/background to Trade Marks (TMs)
TMs as a company asset
• TM = property & can be assigned, licensed & sold.
• An intangible asset with monetary value - add it to your books & it can increase
your value.
• Gives investors & future buyers confidence of a protected & enforceable asset.
• Coca-Cola: The name is more important that the physical assets – factories etc.
• Successful brand owners know brands can add value to the business & as intangible
assets can represent a high proportion of overall business value.
9. Introduction/background to Trade Marks (TMs)
Brand value - BrandZ
• BrandZ website tracks monetary value of brands as intangible assets - 5 yearly
valuation ranking top 100 brands.
• 2012: Top 100 brands total $2.04 trillion in brand value - 5 year growth of 40% from
$1.45 trillion.
• BlackBerry not in Top 100 5 years ago, now at #14, with annual growth of 107% &
value $30.7 billion.
• Amazon up 63 places #78 to #15: A 46 % growth to $27.5 billion.
• Apple, now #3, value of $83.2 billion, up 26 places from #29: 51 % growth.
• Google now #1 brand with value of $114.3 billion - 32 % annual growth rate since
2006 (#7 with value of $37.4 billion).
11. Introduction/background to Trade Marks (TMs)
Why should I register my company or product name?
• UK traders can rely on unregistered common law rights - Passing-Off.
• But: New traders may not be able to stop an identical/similar TM Registration by a 3rd
party – not enough trading goodwill.
• Show convincing evidence that you have enough customers who recognise brand
throughout UK – difficult if trading locally or in certain parts of UK.
Real case story:
• Competitor registered a TM 4 months after client started using same name. Nothing
client could do – 4 months not long enough to show goodwill.
• UK RTM covers whole UK – Passing Off only goes as far as where you are trading.
• Registering a TM doesn’t get rid of common law rights - still develop goodwill & pursue
passing-off.
• You have registered & unregistered rights that compliment each other in certain ways.
12. Introduction/background to Trade Marks (TMs)
A few common misconceptions
• Searching Companies House does not mean you are OK to use a name.
• CH does not include TM Registers. Only gives some indication of unregistered rights.
• Proper search of TM registers is vital, particularly for infringement reasons.
• Searching Google does not guarantee you are free to use a name. Google useful to
limited degree for checking unregistered rights.
• TM owner may have just registered a name & not started trading yet, but could still
enforce the RTM against you.
13. Why should I use a professional?
Benefits of using a TM Attorney
Due Diligence/Clearance searching & review of your TM…
• Law on comparing TMs = complex & continually changing.
• TM attorneys know the law & have experience in analysing searches.
• You may have already selected a name but we may find existing problematic TMs.
• Advice on goods/services you can cover after the search, or if you should re-brand.
• Advise whether any companies with unregistered rights could still object.
• A problematic TM is not always the end of the line…find a way around this.
• Advise if your TM is actually registrable i.e. is it highly distinctive, too descriptive or
just on the right side of distinctive - knowledge of complex case law.
• The sooner a search is carried out the better!
14. Why should I use a professional?
Benefits of using a TM Attorney
Filing & progressing your application - Exam Reports & Oppositions…
• Help you respond to & overcome Examination objections.
• Even after careful searching, someone may still oppose. TM attorneys can defend
oppositions or negotiate a settlement for co-existence.
Infringement…
• Searching not just about registering, but also checking if you can use a TM.
• Using a similar/identical TM to a Registered TM = infringement & TM owner may
pursue proceedings
• Damages, legal costs & court orders.
• Advise you if there is a risk of infringement.
• Defend you from claims of infringement
• Pursue claims of infringement for you.
15. Why should I use a professional?
Benefits of using a TM Attorney
Post registration brand maintenance …
• Look after your TM to ensure no 3rd parties register confusingly similar names.
• Watching service.
• Stop counterfeiting of your products & develop strategies.
• Maintain strong brand - ensure it does not become generic – e.g. Escalator, Shredded
Wheat.
• License to ensure proper use so your TM strength not diluted.
• Maintain deadlines & renewals. Ensure all renewal dates monitored & inform you.
• Create & follow brand guidelines to ensure you & your licensees/franchisees use TMs
correctly.
• Ensure any update or change to your brand is protected or existing rights may be
invalid.
16. Why should I use a professional?
Benefits of using a TM Attorney
Worldwide Protection…
• Network and access to TM attorneys around the world - cover any country in the world
for you.
• Knowledge of individual TM laws around the world.
• Protect & expand your portfolio.
Real case example of the benefits of Due Diligence…
• Client supplying major UK retailer with a product did no searching.
• UK retailer’s IP dept. found information questioning if product infringed 3rd party rights.
• Product already on the water & the UK Retailer threatened to pull it by the following Monday 9AM
unless client could provide evidence that it was safe to sell product.
• Client instructed VP who worked quickly to carry out full due diligence report in time.
• UK Retailer was satisfied & client saved tens of thousands of £.
• Client now carries out preliminary searching in the early stages of any product design.
17. Why should I use a professional?
Media case examples of the pitfalls of not having proper TM protection & Due Diligence
Apple IPAD issue…
• Major legal battle in China over use of Apple’s lucrative `IPAD` brand.
• Apple entered into what it thought was an authorised assignment of the TM IPAD from a Chinese
company who owned the rights in China. Global launch of IPAD began in Jan 2010.
• Later emerged that company who signed the assignment was one of 2 subsidiaries of same parent
company who since Feb 2010 are pursuing Apple for infringement in China, claiming Apple does
not own rights for IPAD in China.
• Chinese Court in Dec 2011 held that the parent company is the rightful owner of IPAD TMs & the
company who originally assigned IPAD TMs to Apple had no right to do so.
• Chinese co has so far succeeded in infringement claims against Apple’s distributors in Shanghai.
• Request with China Customs authorities has been filed & if successful Apple’s iPads will be seized.
• Feb 2012, online retailers in China such as Amazon have stopped selling iPads in China.
• Speculated that settlement will be reached – but at what cost to Apple?
• Even Apple occasionally has issues with due diligence!
18. Why should I use a professional?
Media case examples of the pitfalls of not having proper TM protection & Due Diligence
Michael Jordan `Qiaodan`…
• Chinese translation of Jordan is 'Qiaodan' (乔丹) - Jordan known as Qiaodan in China since 1980s.
• 1993 - Nike registered TM `JORDAN` in China. Didn’t register `Qiaodan`.
• Qiaodan Sports Co Ltd is a Chinese sportswear & footwear manufacturer & In 1998 successfully
registered QIAODAN & 乔丹 in China & registered domain name.
• Qiaodan has tried to register TMs in English & Chinese for 'Michael Jordan' & his jersey no.
• Jordan now engaged in legal battle with Qiaodan to try & stop them selling products under
QIAODAN in China.
• Jordan has an uphill struggle - under Chinese law he can’t cancel the Qiaodan TMs - in use for 10
years.
• Has to rely on his `personal name` rights & show Qiaodan acted in bad faith & use of his name
damages him by causing confusion among consumers.
• Survey found 90% of young people in China’s small cities believe Qiaodan is Jordan’s own brand.
• Qiaodan profited heavily from confusion: $45.6 million in 2007 to $456.3 million in 2010.
• Qiaodan claim they are doing nothing wrong & there is no confusion or connection!
19. Why should I use a professional?
Media case examples of the pitfalls of not having proper TM protection & Due Diligence
The lessons from Apple and Jordan…
• TM registrations in many jurisdictions based on `first to file` principle.
• Even if TM products only manufactured & not sold in China, consider searching & filing
applications `defensively` to prevent sabotage by 3rd parties registering TMs in bad
faith.
• If Jordan & Nike had registered Chinese translation of his name in 1993 - issue may have
been avoidable.
• Apple - Carry out enough due diligence before signing TM assignments – make sure
assignor is registered owner.
20. How effective are Registered Trade Mark Rights?
Media case example of using RTM rights to stop misuse of your brand
Asda v Specsavers…
• Asda sailed too close to the wind in 2009 with launch of advertising campaign for optician services
poking fun at spec savers by using the following:
“Be a real spec saver at Asda”
“Spec savings at Asda”
• Asda also used a similar double circular logo to Specsavers:
• Asda tried to be as careful as possible to avoid obvious confusion/infringement of Specsavers’ TM
rights. Wanted to sail as close to the wind as possible but stay on right side of the law.
• Specsavers still managed to take successful injunctive action against Asda - Court found Asda’s use
of both straplines infringed Specsavers’ word mark & Specsavers logos & Asda logo infringed
Specsavers logos when used as part of the advertising campaign.
21. Tips to take away from this talk
Avoid the TM issues discussed today
• Searches prior to use of a name or ASAP after using it.
• Register TMs in all territories you trade in & plan to trade in before someone else does!
• Monitor your brand portfolio.
• Look after your brand – enforce it, license it, strategise & expand.
• End up on the BrandZ top 100!
• Due diligence before entering into a binding agreement or commercial transaction
affecting your TMs.
1. Just to introduce myself, I’m Allister and I’m a UK and European Registered Trade Mark Attorney. I started out as a law graduate & went on to specialise in Trade Mark law becoming qualified as a Registered TMA under the IP Regulation Board & a member of ITMA.2. What does it mean to be “regulated by IPReg” and a member of ITMA? It means: • to qualify, I had had to complete a rigorous examination and training programme and have to do at least 16 hours further professional training every year• I am subject to the IPReg code of professional conduct• your work will be protected by professional indemnity insurance• you can complain to IPReg
1. A TM can consist of words, Logos , Slogans/strap lines, Shapes – packaging, Characters, jingles, colours.2. As an example you can see that Palmolive have protected the packaging of their coral themed hand wash.
Essential function: 1. Gives consumers a guarantee of the identification of the marked product or service.2. Helps distinguish from other products/services3. Its A badge of origin & guarantee of consistency 4. An implied assurance of quality5. A sign to the consumer that the goods come from a certain source & the TM owner is responsible for those goods & their quality.6. Example: Apple – we all want the new iPhone 5, even though it probably doesn’t do that much more than the iPhone 4!
1. Choosing a TM depends on the functions it must fulfil: 2.Distinctive TMs are indispensable tools for the identification of goods/services3.Modern consumer society: Advertising & Image is increasingly important. So, the power of a TM to act as a “distinguishing” sign, guaranteeing the source & quality of goods/services is increasingly vital to business. 4.Brand names = invaluable marketing tools & many businesses invest significantly in the development, marketing & protection of their brands & marks.5.A brand may also represent other appealing values or qualities: Associations – “aspirational” (e.g. high end fashion & technology brands).
1.Potentially forever – an initial 10 years & renewable in 10 year blocks.2First UK TM to be registered – BASS beer triangle for pale ale – filed 1/1/18763.Still in force – 136 years!
1.TM is a form of property that can be assigned, licensed & sold just like normal property.2.An intangible asset like brand has a monetary value - add it to your books as a company asset & it can increase the value of your company. 3.it gives investors and future buyers’ confidence that they have a protected and enforceable asset.4.Coca cola – a head of coca cola once commented that if he woke up and all the coke factories burned down he wouldn’t be so worried as they can be re-built – if he woke up and the world had forgotten about the name coca cola, he’d be very worried. 5.Successful brand owners know their brands can add value to their business & these intangible assets can represent a high proportion of the value of the business overall
1. As an example – the website BrandZ tracks the monetary value of brands as intangible assets & provide a 5 yearly valuation publication ranking the top 100 brands.2. For 2012, the top 100 brands total $2.04 trillion in brand value, which means that in the past 5 years, since the ranking was first published in 2006, the brand value of the Top 100 has grown by 40 % from $1.45 trillion.3. Notably, the BlackBerry brand, not even listed in the Top 100 5 years ago, now ranks at #14, with annual growth of 107 % pushing the brand value to $30.7 billion.4. Amazon moved up 63 places in the ranking from #78 to #15, reflecting a 46 % growth pushing the brand value to $27.5 billion.5. Apple, now ranked #3, with a brand value of $83.2 billion, moved up 26 places from #29, based on a 51 % growth.6. Google is now the #1 brand by far with a value of $114.3 billion - a 32 % annual growth rate since 2006, when Google ranked #7 with a brand value of $37.4 billion.7. This shows the power of TMs as marketing tools and valuable company assets.
1. Extractof the Brandz chart for 2012. Usual suspects on it!
1.It’s true that in the UK – you don’t have to register a TM to have rights – unregistered common law rights exist via passing-off2.But, if you’ve just started using a name & someone registers the same or SIM name for the same goods/services – if there is only a few months or even a year’s difference – you may not be able to object to a TM registration 3. You would have to show convincing evidence of your `trading goodwill` i.e. that your company has enough customers who recognise your brand throughout the UK – difficult if you are only trading locally or in certain parts of the UK, or if its via a website that enough UK customers from around the UK have accessed your product/service.4.Real case story – a competitor registered a TM 4 months after a client started using the same name & there was nothing client could do – 4 months was not enough to show enough goodwill to prevent the TM registration – so the competitor technically had the stronger right to the name.5.A UK Reg covers the whole UK – Goodwill –Passing Off only goes as far as where you are trading – so if someone is using a SIM brand in Yorkshire & you only trading within Bournemouth – it would be very difficult to show that customers in Yorkshire will be deceived – with a TM Reg this is not an issue.6.Registering your TM doesn’t get rid of your common law right – you can still develop & extend your goodwill and pursue passing-off – instead what you have are both registered rights and unregistered rights in your armoury as both compliment each other in certain ways.7.Vice versa – if you have only started trading (not enough time for GW) you can rely on your registered trade mark rights to stop a 3rd party using a SIM/ID name.
Searching Companies House for similar/identical company names does not mean that you are OK to use a name. CH does not include TM Registers & only gives some indication of possible unregistered TM rights. A proper search of the relevant TM registers is vital, particularly for infringement reasons.4.Searching on Google does not guarantee you are free to use a name. Google is useful only to a limited degree for again checking `unreg rights`. 5. A TM owner may have just registered his name & not started trading yet, but could still enforce his RTM against you, unless you can show that you have earlier unregistered rights.
1. Law on comparing TMs (i.e. too similar or identical) is complex with detailed case law setting out the rules & is continually changing.2. TM attorneys are well versed in the case law & experienced in carrying out & analysing searches of the TM registers to determine whether your TM will face any attacks from earlier TM owners.3. You may have already selected a name/TM. However, in doing a search, we may find several existing trade marks that could pose a problem either for your registration or use of your selected mark.4. TM attorneys can advise you on what kind of goods/services you will be able to cover in your application, taking in to account what the search report has revealed.5. TM attorney can advise whether any companies who have not registered their TMs may still object to your registration - if you do not have any goodwill, you may have to consider re-branding at this stage. 6. But because a problematic TM exists doesn’t always mean the end of the line…TM attorneys can assist in finding a way around an apparent obstacle.7. Finally and vitally, TM attorneys can advise if your TM is actually registrable i.e. if its highly distinctive or too descriptive, or just on the right side of distinctive, again by knowledge of the complex case law in this area.8. So, the sooner a search is carried out the better.
1.Once your application is filed- the Examiner may raise objections or queries in your exam report – TM attorneys can help you respond accordingly and overcome these.2.Even after careful searching, someone may still try and oppose your mark whether they have a good case or not – TM attorneys can defend oppositions on your behalf or negotiate a settlement that can allow two TM owners to co-exist in harmony by agreeing terms that will allow both sides products/services to co-exist on the market & TM register.3.Searching is not just about seeing if you can register your trade mark, but also if you can use it at all 4. if you are using a SIM or ID TM to a TM registered, that TM owner could pursue you for infringement proceedings resulting in damages and legal costs that can be in the tens of thousands of £ and injunctions. 5. A TM attorney can advise you if there is any risk of infringement or whether you may have an earlier entitlement to a name/brand (common law rights).6.Defend you from claims of infringement7.Pursue claims of infringement against 3rd parties using your RTM without your authorisation or Passing-Off.
TM attorneys not only help protect your brand, but can help you look after it to ensure that no 3rd parties are allowed to register a SIM or ID name to your own in the same area of trade Monitor your TMs – watching service3.Assist you in stopping counterfeiting of your products & developing counterfeit strategies – e.g. Customs4.Practical advice on how to maintain a strong brand e.g. by ensuring that you don’t do anything which will risk your name becoming generic – e.g. Escalator, Shredded Wheat used to be TMs. 5.Value of a RTM can be compromised by misuse by you or others– TM Attorneys can ensure that you know how to care for your TM so that its strength is not diluted. 6.Once registration of TMs secure - provide on going advice on how to achieve the best value from your registered rights. 7.Maintain deadlines & renewals – especially if you have a large portfolio – renew TM registrations every 10 years. Ensure all renewal dates are monitored and that you are informed. 8.Offer you ‘best practice’ advice on maintenance of TM portfolios and the proper use of RTMs e.g. your use directly or allowing others to do so by a license which we will draft for you – so you can avoid these types of problems.9.Help you to create and follow brand guidelines to ensure you & your licensees/franchisees use the TMs correctly – e.g. specific font, upper case lettering.10.Ensure that If you change or update your brand/logo, applications are filed as your existing RTM may become invalid.
1. Our network and access to TM attorneys around the world means we can cover any country in the world for you.2.This access gives us knowledge of individual TM laws around the world.3.These resources around the world allow you to protect & expand your portfolio.4. Real case example:Company who supplied a major UK retailer with a product had not had any searching carried out – the UK retailer’s IP dept. found some information that questioned whether the product would actually infringe a 3rd party’s rights.• The product was already on the water & the UK Retailer threatened to pull it by the following Monday 9AM unless the company could provide evidence on why it was safe to sell the product.• Company instructed VP who worked quickly and efficiently to carry out a full due diligence report which the client delivered to the UK Retailer on Monday morning.• Following the report the UK Retailer was satisfied that it was safe sell the product and the client had saved tens of thousands of pounds had the product been withdrawn.• Client was naturally delighted and now carries out preliminary searching in the early stages of any product design.
1. Major legal battle in China over use of Apple’s lucrative `IPAD` brand. 2. Apple entered into what it thought was an authorised assignment of the TM iPad from a Chinese company who owned the rights. Global launch of iPads in Jan 2010.3. Later emerged that the company who signed the assignment was one of two subsidiaries of the same parent company who since Feb 2010 are pursuing Apple for infringement in China because it claims that Apple does not own the rights for iPad in China.4. A Chinese Court in Dec 2011 held that the parent company is the rightful owner of the IPAD TMs in dispute & the company who originally assigned the iPad TMs to Apple had no contractual right to transfer the TMs to Apple, even though the company is a subsidiary of the same parent company.5. Chinese company has already succeeded in infringement claims against Apple’s Chinese distributors in Shanghai.6. A request with China Customs authorities &has been filed & if successful Apple’s iPads will be seized.7. Early Feb 2012, online retailers in China such as Amazon have stopped selling iPads in China, probably through fear that they are committing TM infringement in China even though they are authorised resellers.8. Speculated that settlement will be reached – but at what cost to Apple?9. So, even Apple occasionally has issues with due diligence!
1. Chinese translation of Jordan is 'Qiaodan' (乔丹) which Jordan has been known as in China since mid-1980s start of his huge popularity. 2. 1993 - Nike registered the TM `JORDAN` in China. They didn’t register `Qiaodan`.3. QiaodanSports Company Ltd is a Chinese sportswear & footwear manufacturer who In 1998 successfully registered QIAODAN and 乔丹 as TMs in China & registered the domain. 4. Over the years, Qiaodan Ltd has unsuccessfully tried to register TMs in English and Chinese for 'Michael Jordan', & Jordan's jersey number. 5. Jordan is now engaged in a legal battle with Qiaodan to stop them selling products under QIAODAN & 乔丹 in China. 6. Jordan has a huge battle on his hands because under Chinese law, he can’t cancel the Qiaodan TMs as they have already been in use for 10 years. 7. Jordan has to try & rely on his `personal name` rights (not TM rights) & show that Qiaodan Ltd has acted in bad faith by intentionally using his name without authorisation; and that the use damages him by causing confusion among consumers.8. A survey found that 90 % of young people in China’s small cities believe Qiaodan is Jordan’s own brand in China. Qiaodan has profited heavily from this confusion: Revenue went from $45.6 million in 2007 to $456.3 million in 2010.9. Amazingly, Qiaodan Ltd claim that they are doing nothing wrong and there is no confusion or connection!
Lessons from Apple & Jordan: TM registrations in many jurisdictions are based on a `first to file` principle – even if TM products are only manufactured and not sold in China, you should consider searching & filing TM applications `defensively` to prevent sabotage by 3rd parties registering TMs in bad faith & recording them with Customs to prevent exports.3. Jordan - If Jordan & Nike had registered the Chinese translation of his name in 1993 along with JORDAN this issue could have been avoidable.4. Apple - Carry out enough due diligence before signing TM assignments – make sure the assignor is the registered owner.
1. How effective are RTMs? Let’s ask Asda: 2. Asdasailed too close to the wind with the launch in 2009 of their advertising campaign for optician services poking fun at spec savers by using the following: “Be a real spec saver at Asda” “Spec savings at Asda”3. Asdaalso used a similar double circular logo to Specsavers: 4. Asdatried to be as careful as possible to avoid any obvious confusion with (and infringement of) Specsavers’ TM rights. They wanted to sail as close to the wind as possible but remain on the right side of the law.5. Specsavers still managed to take successful injunctive action against them - Court found Asda’s use of both straplines infringed Specsavers’ word mark & the Specsavers logos & the Asda logo infringed the Specsavers logos when used as part of the advertising campaign.
1. Carry out searches/due diligence prior to use of a name or ASAP after using it.2. Register your brand names, logos and relevant product packaging in all territories you trade in & plan to trade in before someone gets in before you.3. Monitor your brand portfolio – look after your brand – enforce it, license it, strategise & expand. End up on the BrandZ top 100!4. Carry out professional due diligence before entering into any binding agreement or commercial transaction affecting your trade marks.
