Further to our post on patent related issues that were raised in our London Tech Week IP seminars and workshops, here is the trade marks instalment based on the common themes that surfaced in our discussions involving trade marks.
Is it a trade mark, is it copyright, is it a design?
One theme raised at our London Tech Week sessions was the identification of the relevant rights that might apply to a “sign” ie a company logo. There are overlaps between the various forms of IP but it is important to know exactly what IP rights you own.
Copyright – exists on creation of any artistic creation or literary works. Does not require registration.
Registered Trade Mark – A sign that acts as a badge of origin. Does require registration and must specify what goods and services a trade mark covers
Registered Design – A registered right that protects the overall appearance or features of a product that make that product desirable. Does require registration.
It is always beneficial to speak to a trade mark or patent attorney at the earliest stage possible to assist you with identifying the relevant IP rights you may hold and invest in.
Misconceptions of an IP Checklist
Somewhat related to the above, when identifying the relevant IP rights that apply to your business, it is important to remember that whilst a company name and a domain name are requirements on a “new brand” checklist, these are not always the priority points. You will need to check and clear the whole package to obtain a “brand” of rights and this should always start with trade marks searches.
Both company names and domain names are registrable, but they do not provide you with an enforceable right without first acquiring a reputation or goodwill in the names themselves. In other words, the name must be known to consumers as an identifier of origin. In addition, simply because a company name or domain name might be available does not necessarily mean that you are clear to use that particular name in the course of business. If a third party has an earlier right to that name, you could risk infringing their rights.
On the other hand, a trade mark does provide you with an enforceable right that can be used against company names, domain names, other trade marks or general unauthorised use in the course of trade. Therefore, clearing a trade mark for use and registration should always be the first point of call when considering a new branding exercise.
Find the problem first….and have a back-up just in case
In the planning/creation phases, it is easy to get attached to a potential name or logo that may be used as a trade mark. It can also be difficult and disappointing if a problematic mark is revealed by a trade mark search that may pose a serious risk to the use and registration of a mark of interest, particularly if that mark is the only mark of interest.
A useful point to consider is having several back-up marks ready to go if a mark of preference runs into any issues at the searching phase. Whilst this may be a bit of a burden at the initial stages, it can save on both time and costs later down the line.
Having several potential marks can also be useful when combined with a phased searching approach. This allows for several trade marks to be searched using cheaper, coarse filter searches such as identical searches only to save on the costs of having to conduct full availability searches for each mark.
Unfortunately, there is no such thing as a worldwide trade mark registration covering every country of interest. Similarly, if you were to file trade mark applications in every country worldwide it would cost a good few hundred thousand pounds.
Whilst trade marks are generally territorial, there are a few different methods of obtaining trade mark protection in multiple countries of interest. These are:
Community Trade Mark – A CTM covers all 28 members of the EU with one application and covers up to three classes for the basic filing fee; further classes can be added at extra cost. If you can get it, a CTM registration is the quickest, simplest and most cost-effective way to obtain pan-EU protection. The downside is that third-party objections are relatively common on CTMs given that oppositions can be filed by holders of prior national registrations anywhere in the EU, as well as prior CTM holders.
International Registrations via a Madrid Protocol application (IR) – The IR system is another system for obtaining trade mark protection in various countries and/or regions using a single application. Member states – of which there are currently 82 – can be designated through this single application, which effectively saves on the costs of filing separate national applications. The EU is a member of the IR system, which raises the possibility of designating CTM protection through an IR. An IR is also useful as subsequent designations can be added to the registration at a later time, say when a new territory becomes of interest. The IR Is a useful tool to save on costs through the phasing of the relevant countries.
A CTM or UK application or registration can be used as the basis for the IR ‘framework’, which the supports your choice of designations of the other territories. These other territories are then examined separately so that objections against one will not necessarily hold up another. The downside is that IRs are dependent on the base CTM or UK right for the first five years and so are vulnerable to cancellation if that base right is attacked. We normally recommend using a UK as a base application as it is less likely to be opposed.
National trade mark applications – National trade marks are not dependent on any central registrations or vulnerable to attack from rights in other countries. The problem is that they tend to be a lot more expensive than CTMs or IRs if you cover multiple countries and multiple classes. The cost differential only narrows if a CTM or IR attracts significant objections. However, national trade mark applications are the strongest trade mark rights available.
In summary, identify the rights you may have, invest a bit of time trying to clear those rights as far as possible and then decide where you want to register those rights.
Azhar Sadique 7 July 2014