No IP blog would be complete without a warning on misleading IP invoices, so here’s ours!
If you are the owner of an intellectual property (IP) right then you may from time-to-time receive communications that resemble official looking invoices for IP services. Such misleading invoices are sent directly to the IP owner and are designed such that they give the impression to the IP owner that they have to either use the service offered or pay the amount listed.
It is important that all IP owners double check the invoices they receive and satisfy themselves that such invoices are genuine.
The press has widely reported the launch of the new generic top-level domains (gTLDs) which can include a geographic location (e.g. NYC), a generic term (e.g. Music) or a mark (Ralphlauren). Nearly 2000 applications should be added this year to the currently available gTLDs (.com, .net) and country code top-level domains (ccTLDs, e.g. geographical location .uk, .eu). The examination of hundreds of candidates revealed last year (see article in the Figaro blog here) the avid appetite of Amazon and Google for new extensions who spent millions to request 101 and 76 Internet extensions respectively revolving around digital content and media issues.
This is considered one of the most important changes in the structure of the Internet for years. A symbiosis has to be found to regulate the protection of trade mark owners and their Intellectual Property rights.
In this respect, The Internet Corporation for Assigned Names and Numbers (ICANN), which is responsible for the management of the top-level domain name space, has established a rights protection system through the creation of a database, called the Trademark Clearinghouse (TMCH), for names that are the subject of a prior registration. The Trademark Clearinghouse has been available since 26 March.
Proposals for reformed legislation, which have been drafted in order to help modernise and further synchronise the European Trade Mark system, have surfaced on the web. The European Commission has indicated that the reform package will ‘foster innovation and economic growth’ throughout the EU as well as ‘ensure coexistence and complementarity’ throughout the trade mark systems. Further, the European Commission has stated that the reform ‘will be beneficial for applicants and owners of both the Community Trade Marks (‘CTMs’) and national trade marks’ by increasing the efficiency of the EU internal market. Further, regardless of the size, market and geographical influence of an entity, the proposals will aim to create a more level playing field.
Once the proposals have been adopted (potentially Spring 2014) the Commission advise that EU countries will have to implement the new rules of the Directive into national law within two years. With regard to the Regulation, most amendments will become effective when it is enforced. However, the Fees Regulation will require prior authorisation by the Committee on OHIM fees with the aim of adopting it before the end of 2013. Below is an overview of some of the proposals. Please note that these proposals are not official.
“A registered trade mark is not infringed by use of another registered trade mark for goods or services for which the latter is registered (…)”(s.11(1)). This section of the UK Trade Marks Act 1994 (also referred to as “registered mark defence”) has generally been the basis for advising clients to obtain a UK trade mark registration in addition to a Community Trade Mark (‘CTM’) registration.
UK trade mark proprietors have been able to rely on the registered mark defence mentioned above as a prima facie defence to trade mark infringement proceedings. Prior to the EU decision below, the validity of a UK registered mark would have to be challenged first before infringement proceedings commenced. It would appear from the EUCJ ruling below that there may be a movement away from this defence.
There have been further developments in the YouView and YourView trade mark battle as the proprietors of YourView, Total, have initiated trade mark infringement proceedings against Lord Sugar’s YouView business.
Earlier this month the High Court upheld the UK Intellectual Property Office’s decision that the names were confusingly similar. Despite the court decision, YouView are yet to change their branding and state that they ‘have no intention of changing name’.
Things are boiling over in the restaurant industry as Gordon Ramsay has applied to register a trade mark for ‘The Spotted Pig’ in the UK covering various food products and, importantly, restaurant services.
As readers might know, The Spotted Pig is a Michelin starred restaurant in New York City run by fellow Brit chef April Bloomfield, and boasts celebrity co-owners Jay-Z and Bono. The Spotted Pig is a hit in NYC serving ‘seasonal British and Italian, using local ingredients where possible’ and has been open since 2004.
What happens when one trademark is owned by two different traders? This is almost a contradiction in terms, since the role of a trademark is to distinguish the goods and services of one trader from those of others. But it does sometimes happen.
A prime example of a famous trade mark being “split” between two separate traders is the ROLLS ROYCE brand. When the company split off into the vehicle manufacturing enterprise, and the aircraft engine enterprise, ownership became completely separate, though both companies continued to use the famous brand name.
It has emerged that the long-delayed broadband TV service backed by Lord Sugar has lost its battle over the right to use ‘YouView’ as their trade mark.
Before filing a trade mark application or using a mark, it is advisable to conduct independent searches on the relevant official Register (or Registers if more that one territory is of interest). Whilst these searches are not compulsory or necessary in order to file a trade mark application, it is certainly a useful tool to establish whether or not there are any earlier identical or confusingly similar marks that may bar your own use or registration for the desired mark.
Independent searches available for new marks include:
1) Identical search – this is a coarse filter looking for identical marks in identical goods or services only; or
2) Full availability search – this looks for both identical and confusingly similar marks in identical/similar goods or services.
In general, an identical search is great if you have a variety of marks, as it can reduce the list significantly, or if you have already been using the mark unregistered for a period of time and do not wish to change it and full availability searches are recommended for new marks that have not yet been put to use and can be changed should a conflicting mark be identified. However, ad-hoc advice on the best searching strategy is strongly recommended.
It is also possible to conduct a proprietor search in order to review the marks of your competitors. Again, a useful tool to ensure that you do not step on anyone’s toes and that they are not straying too close to your own marks.
Whilst not exhaustive, it may also be advisable to check trade directories and the Internet against the possibility of existing trade marks which are in use and enjoy protections but are not registered.
Charlotte Blakey 14 November 2012