What every business needs to know about trade marks

Dr. Roman Cholij Trade Mark Attorney

Cam Trade Marks & IP Services

www.camtrademarks.com

© Roman Cholij 2011

Intellectual Property

• Legal rights that protect your creativity, innovation, investment and shared ideas. Rights which you own and can license or sell

• Patents – protect inventions• Trade Marks – protect company and trade identity• Copyright – protects literary, artistic, musical works etc

and software • Registered Designs - protect the outer appearance of

objects• Other: database rights, plant breeders rights, trade

secrets (in common law) etc.

Trade Marks – why protect a name?

• Company identity• Being known in the marketplace – source of origin of

goods and services, distinguished from other suppliers and operators

• Brand value – communicator of messages: lifestyle, youth, energy, efficiency, quality, reliability etc

• Independent quantifiable business asset separable from the business – can be used as a security against a loan; sold separately from business goodwill

• Used as a basis for franchising and licensing

Name protection in law

• Because names potentially generate huge consumer magnetism, being the effect of large marketing spend, intellectual property laws protect brand owners

• In common law: mainly in ‘passing off’ (used where a mark is unregistered)

• In statutory law: Trade Marks Act (1994) (for registered marks)

Risks of ignoring trade mark law

• Companies who value their brands monitor newcomers

• In the past big companies did not bother with start-ups and small new companies

• Today start-ups can have major presence on Internet search engines - search engine optimisation

• Large companies will not tolerate new threats to their business if there is possibility of confusion or dilution or taking of unfair advantage

What brand owners don’t want

US Court case Coca-Cola Co v Gemini Rising Inc

Registration gives wide protection

• A protected name has wide protection – over similar names and similar goods

• Sometimes even for DISSIMILAR goods!

What does ‘similar’ mean?

It is not at all obvious what is ‘similar’, since this is a ‘legal’ rather than common sense concept, and there is plenty of UK and European case law to illustrate this point...

New mark chosen: Earlier registered mark:

KO BOXER JOE BOXER(for men’s underwear) (for clothing)

ALREX ARTEX(for eye drops) (medicinal products for

hypertension)

FLEXI AIR FLEX (for hair care products) (for hair lotions)

(for watches and clocks) (for clocks and watch making; goods; jewellery)

Confusingly similar

Advising choice of name

• Choose a name that is free to use, i.e. will not infringe a third party’s rights. Names descriptive of the products or service or in general use in the trade do not infringe because they cannot be protected

• Get list of possible names that are potentially protectable under trade mark law (if they are ‘free’). Made-up words are the best

• Register can be crowded so choose as unusual or original name as possible

Guidelines for choosing a name

A name, if it is going to be registered should be:

• Distinctive: a non-distinctive sign would be ‘Great’ or ‘Wonderful’ or ‘Best Buy’ (unless having acquired ‘secondary meaning’)

• Not descriptive: e.g. ‘Fish shop’ for retailers of cooked or uncooked fish (also automatically not distinctive)

• Not a generic term used in trade• Not deceptive: e.g. ‘strawberry jam’ for manufacturers of

marmalade• Not immoral, liable to cause offense or contrary to law for

other reasons

From trade mark to domain name

• Pen Island™ (trading in pens and biros)

www.penisland.net

• Experts Exchange™ (recruitment services)

www.expertsexchange.com

• Choose a name carefully!

Need to check a name

• Need to do an availability search on the trade mark register to see if the name of the business is ‘available’. Check www.ipo.gov.uk under trade marks and follow the instructions, or ask a professional.

• A companies house registration does not give authorisation to trade under the registered name. A company house registration gives a company legal identity, status and form

Companies House website FAQ

“Does the registration of my company name with Companies House also mean that my trade mark is protected?

No. Company law is different from trade mark law. You cannot stop someone using a trade mark, which is the same or similar to yours, merely by registering your name with Companies House. You should ensure that your company name does not conflict with a trademark.”

Reasons to register

• Once a mark is free to use a business should consider registration protection in the UK or abroad – if it intends to go overseas

• Prevents newcomers from using the same or similar name in the same/similar line of business

• No necessity to register, but what can a business do to stop others copying or riding on the coat tails of the success of the business or simply keeping competitors out of their ‘name’ space?

• Passing off – common law action –requires substantial goodwill, proven misrepresentation and proof of likely harm to the business. Difficult hurdles to overcome and very expensive to do this with lawyers and in court

Case study

• An ‘entrepreneur’ watched to see, through trade sources, companies house and internet, who was opening bars up and down the country in the smoothie /fruit drink business

• Immediately went to the register to see if they had protected their names

• If not he applied for registration for all the names

• Once registered demanded £60,000 for transfer of registration otherwise would force them to rebrand because they were infringing his intellectual property rights

• Can a new business afford lawyer fees and court fees to stop the man?

• Moral: think of protection as an important insurance policy

Other benefits

• Once registered a very valuable monopoly on the name is owned as intellectual property – can be sold, licensed and transferred independently of the business

• Lasts potentially as long as the business lasts (unlike other IP rights)

• The secure basis to build a brand and brand value• Need to be renewed each 10 years• Gives right to use ® symbol

BASS & Co's PALE ALE

UK Trade Mark Registration No: 1Filed 1 January 1876Still in force

Long-lasting benefit

Thank you for your attention!Questions?

Dr Roman Cholij

camtm@camtrademarks.com

www.camtrademarks.com