What price? The value of intellectual property

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All too often, too much money and too many man hours are wasted by companies and agencies not proactively thinking about legal aspects relating to their brands, such as registering trademarks and other forms of intellectual property. Theuns van de Merwe from IP experts Cedar White Bradley shares practical experience on the intellectual property aspect of brand selection. Starting with trademarks, clearance exercises and the potential pitfalls new brands face, this is a session not to miss for anyone considering a rebranding or for those who work in the branding arena. From the Transform conference MENA in Dubai on 2 June 2014.

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Brands: how to put a smile on your trade mark lawyer’s face

Theuns van de Merwe

Tel: +974 44 101562Mobile: +974 33 751576Email: theuns.vandemerwe@cedarwhite.com

Copyright © 2014 Cedar White Bradley

The story of the smiley face

The Smiley Company“Smiley brand” was “founded” by Franklin Loufrani in 1971 “through a newspaper promotion to make people happy”

*Source: http://www.smiley.com/company

Screenshot http://www.smiley.com/

Today?

The Smiley Company ranked as 90th top licensor by License Magazine

USD168 000 000 in retail sales in 2011/2

Smiley Face Logo registered in over 80 countries worldwide

They effectively own as a trade mark

Not so happy litigation in USA

*Copyright and trade marks of Wal-Mart Stores, Inc.

1995/6

The legal battle

The Smiley Company and Wal-Mart tried to register smiley face as a TM

Litigation: both said smiley faces are “generic” - shouldn’t be registered unless - associated with the company

Wal-Mart won that round with 18 month’s commercial use of the mark with $$$ marketing

Present:

Matter settled out of court in undisclosed terms

Wal-Mart phasing out use of Smiley as advertising symbol

Both parties incurred substantial cost

Ownership rights in USA unclear (lost market for Smiley Company?)

Where do you need to be?

Create the best intellectual property framework for you brands

Registering trade marks

Exclusive right - trade mark - goods or services specified in the registration

Exclusive right - authorise - goods or services specified in the registration

Registration - personal property - can be sold

Registering trade marks

Strong, wider legal remedies: Injunctions Delivery up of infringing materialsCriminal complaintsDomain name/Advertising Standards’ complaintsDamages/penalty/royalty payments

Recording licenses - ensuing benefits

Assignments - valuable consideration

Stopping infringers

Sri Lanka

How do we best protect trade marks?

Choosing the right mark

Generic

Descriptive “Apples for Apples v. Computers”

Offensive “J-sus”

Functional

clearance searches Check if available Is the search possible? Trustworthy? How long will it take? Costs? How wide should we cast? Can we beat potential obstacles? What steps can be taken before-hand (e.g.

filing combinations)?

Filing application and prosecution What do we file for? What will we use?

Filing application and prosecution

Good and services?

Manufacturing services

Electronics

Banking

Territorial nature of TM’s

Proper use (e.g. as registered; “genericide”)

Proper licensed third party use

Employment agreements

Monitoring third party applications and use

Appropriate steps when potential offending third party applications and use

Trade mark ownership notices (e.g. on websites)

Keep record of all use of trade mark (advertising, sales figures, invoices, letterheads etc)

Overlap

Remember there is an overlap between different types of IP

To keep your trade mark lawyer happy:

1. [pay on time] 2. be aware of brand related rights;3. identify your brands;4. protect your brands; 5. enforce your rights; and6. exploit brands correctly.

Questions

Thank you

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