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Common soft IP related mistakes made by SMEs

mistake

Photo by DTL at morguefile.com

IP value and risk

Risk is the chance of something going wrong, and the danger that damage or loss will occur. By its very nature, there are both rewards and risks associated with IP. For anyone involved in IP, then IP related risks are part of working life.

However many ignore the risks associated with IP or only react when the risk has materialised, which is most times too late. Also, many of the IP related risks that companies face are due to their own lack of awareness or proper understanding of IP, and/or their own actions or lack of actions.

Soft IP

There are multiple forms of IP such as patents, trademarks, copyright, etc. etc.

The term ‘soft IP’ is sometimes used to refer to trademarks, copyright, and domain names, in contrast to ‘hard IP’, which is sometimes used to refer to patents.

I accept that use of this phrase is controversial among some IP practitioners, and that the term soft IP may mean slightly different things from one IP practitioner to another

This paper focuses on soft IP and in particular on trademarks, domain names and social media handles, and some of the common mistakes made by SMEs as far as these forms of IP are concerned. (more…)

ITMA becomes CITMA

d5qznw49Today marks the official launch of The Chartered Institute of Trade Mark Attorneys (CITMA) following the grant of the Royal Charter to the Institute in April and the formal issue of the Great Seal of the Realm.  Keltie welcomes its new ‘Chartered Trade Mark Attorneys’ and congratulates the Institute on its hard work in securing this recognition for itself and its members.

Royal Charters are reserved for bodies that work in the public interest and which can demonstrate pre-eminence, stability and permanence in their particular field. The grant of the Royal Charter to the Institute is an endorsement of the high standards that the Institute has set for its members in qualification, regulation and education since it was established in 1934 and it brings the Institute in line with other notable professional bodies such as the Chartered Institute of Patent Attorneys (CIPA).

Joanna Lucas-Munce 24 November 2016

Keltie hosts Sports IP Seminar with LawInSport

lawinsport-seminar

(l-r): Adam Lovatt, Manuela Macchi, Sean Cottrell, Zane Shihab, Sean Corbett

Last Thursday, Keltie joined forces with LawInSport to present an afternoon of interactive presentations and discussions regarding the importance of IP in Sport.

To kick off the presentations, Sean Corbett, Brand Protection Manager at Formula One Management Limited, discussed the use and protection of IP and, in particular, trade marks, in sport and the battles that major sports brands face in protecting their trade marks and enforcing their rights. The take home message was to ensure that trade mark owners in the sports field allocate adequate resources and time to maintain, police and enhance their portfolios of registered trade marks to support the value of their brand and attract sponsors. (more…)

Make America Great Again: The Trade Mark

trumpWhilst perusing a book of Trump quotes while buying a greetings card recently, I noted that one of his statements was directed toward an IP issue, namely his campaign slogan, “Make America Great Again”, and how he’d trademarked the saying.

Given that a favourite pastime of the US media seems to be fact checking everything Trump and Clinton say, IPcopy took a gander at the USPTO trade mark register to find out. (more…)

T-312/15 – Market Watch v EUIPO – Glaxo Group (MITOCHRON)

Court (Small)This post contains a case review of T-312/15 in which the General Court discussed issues of the relevant public, comparison of marks and likelihood of confusion.

Background

On 4 September 2012 Market Watch Franchise & Consulting, Inc. (‘MWFCI’) applied to register a EUTM for MITOCHRON in Classes 3, 5 and 35. On 8 April 2013 Glaxo Group Ltd (‘Glaxo’) opposed the Class 5 goods on the basis of Article 8(1)(b) in respect of its earlier UK registration for MIVACRON in Class 5.

The Opposition Division upheld the opposition on 17 December 2013. This decision was appealed and dismissed by the Second Board of Appeal (‘BoA’) on 20 March 2015.

MWFCI bought an action at the General Court (‘GC’) against the dismissal requesting that the GC annul the decision, reject the opposition and order EUIPO to pay costs. (more…)

Brexit means Brexit

brexit-1481028_1920It’s been just over two months since the UK decided to take back control and, as the summer parliament recess comes to an end, IPcopy thought it would be a good time to take stock of where things stand.

The process of Brexit has been split between three Ministers – the Three Brexiteers of Johnson, Fox and Davis – which has already resulted in some turf wars. David Davis, heading up the Department for Exiting the European Union, has raised some eyebrows by claiming that the UK could do one-to-one trade deals with individual member states of the EU (it can’t) and that he wants to negotiate a trading area 10 times the size of the EU which sounds impressive until you realise that that would actually be 1.5 times bigger than the economy of the entire planet Earth1. (more…)

IP in the UK after the Brexit Referendum

GB+EU flagOn 23 June 2016 the UK public voted in favour of the UK leaving the EU (commonly referred to as ‘Brexit’). If and when the UK formally starts the exit procedure, there will be at least a two-year negotiation period before the exit itself occurs. So, any changes won’t be implemented for some time yet.

Any UK national IP rights will be unaffected by Brexit. Some EU IP rights that have effect in the UK will be affected to different extents. Crucially, no IP rights will be lost as a result of Brexit, although some transitional measures are inevitable.

IPcopy takes a look at the key impact Brexit will have on IP, and what you should be considering now. (more…)

Eye D (Case review O/094/16 – Opposition & Invalidity)

Eye D

This post contains a case review of O/094/16 (EYE D) Opposition – 10 February 2016; O/094/16 (EYE D) Invalidity – 10 February 2016.

Background

The matter concerns Vision Care At Home Limited (‘VCH’) and Visioncall Limited (‘VL’), both concerned with eye care passports or reports primarily aimed at care homes for the elderly to assist staff in identifying the correct glasses to be worn by those being cared for.

VCH applied to register the mark  under Application No. 3032938, as well filing a declaration of invalidity against VL’s UK Registration No. 2652006 for EYE D on the basis of Sections 47(2) and 5(4)(a) and Sections 47(1) and 3(6) of the Trade Marks Act 1994 (‘the Act’). VL later opposed VCH’s application on the basis of Sections 5(2)(b), 5(3) and 5(4)(a) and Section 3(6) of the Act. (more…)

Bad Faith and Trade Marks in China

Great WallAs IPcopy discussed back in 2013, Trade Mark Squatting has long been a concern of European businesses considering entering the Chinese market. Too often, European brands which have not registered their trade marks in China at the earliest possible stage, find that their trade marks are already registered to third parties without a legitimate interest in the mark by the time China features as a potential market in their business plans.

This can cause significant disruption to businesses as these earlier ‘bad faith’ applications act as bars to their own applications. Further, whilst trade mark registration is not a legal requirement to trade in China, many businesses find that their Chinese partners will actually request it as a condition to operate. The consequences of having one’s trade mark application refused in China because of an earlier bad faith application are, therefore, compounded, as walking away and trading without a registered mark may not be a viable option. (more…)

The Special One – Trade Marks and Image Rights

MourinhoIt has been widely reported in the general press in the last few days that ‘image rights’ issues have delayed the signing of the contract that brought Jose Mourinho to Manchester United as its next manager, following the departure of Louis van Gaal. However, as of this morning it appears that these issues have been overcome with confirmation that Mourinho has signed a three-year contract.

As we know, despite the 2015 Rihanna v Topshop Appeal decision, image rights as such are not protected by the English legal system, and the more discerning IP reporters have probably correctly identified that the tricky point might evolve around the registered trade mark for Mourinho’s name. (more…)