Category Archives: In the news

The (not) banned Iceland ad. But don’t try selling Rang-Tan™ merchandise.

You’ve seen Rang-Tan™. I know you have. You clicked on the link your uni mate shared on Facebook and you felt a bit, well, naughty. You were watching it. The banned advert.

Round of applause for Iceland and Greenpeace.

It is highly unlikely that the advert was ever going to make it on to our tv screens. It’s even less likely that the team behind the advert at Iceland ever thought it would make it there. The fact that Iceland added very little of their own creativity to the advert arguably demonstrates that. They took a Greenpeace film in full and added their own brief message at the end of it.

So why did they bother? Look around you. Type “banned Iceland ad” into Google and see just how much press coverage it’s had.

That’s why.

By getting a “negative” decision from Clearcast, and spinning the life out of it; they’ve pushed it into the consciousness of far more people than would likely have paid attention if it had been shown during a break in Corrie.

So it did the job, the message has been spread out there effectively.

What next? Well, I don’t want to be cynical but there’s probably going to be some Rang-Tan™ merchandise coming to an Iceland store near you very soon.

A UK trade mark application for RANG-TAN was filed in August and is currently open for opposition until 28 November 2018.

The application covers all kinds of things including clothing, stuffed toys, key rings and stickers. It also covers “cartoon character licensing”. If registered, the owner will have the right to stop anyone else using RANG-TAN (or anything confusingly similar) on the same or similar products.

Before you start plotting your own spin-off support, or range of Rang-Tan™ products; beware of the risks in stepping too close or suggesting a link with a viral campaign. However good your intentions. Always ask permission from the owner first.

(The trade mark is owned by DHH Limited, a private company, listed on the Jersey Companies Registry. You won’t get a lot of information from the publicly available documents, but I’m sure you’d get a cease and desist letter pretty soon if you use the name without permission).

More info:

RANG-TAN trade mark application details https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003334026

Greenpeace Palm Oil information https://www.greenpeace.org.uk/faqs-palm-oil-answered/

Clearcast https://www.clearcast.co.uk/about/

Advertising Standards Agency BCAP https://www.asa.org.uk/type/broadcast/code_section/07.html

Photo credit: Herbert2512 on Pixabay https://pixabay.com/en/users/herbert2512-2929941/

#slabgate

#SLABGATE – the dispute between Hotel Chocolat and Waitrose (or, why settling IP disputes in the media might not always go so well)

What’s #slabgate?

In case you haven’t seen the #slabgate IP dispute between Hotel Chocolat and Waitrose in the media:

Waitrose have been selling chocolate slab bars which Hotel Chocolat claim bear a resemblance to those produced by HC. Waitrose have recently agreed “to stop making the totally coincidentally very similar bars”[1]. HC have dubbed the whole issue #slabgate.

Waitrose agreeing to stop producing the bars is obviously a good outcome for HC. It also looks like a triumph for the idea of settling your IP disputes in the eye of the media.

I would caution taking this success too much to heart.

Here’s why:

  • Taking on people via the media is risky. You are relying on journalists and the public siding with you. They have no obligation to do so and it can backfire (think libel claims if you’re not careful about your own wording).
  • This outcome from this set of facts could unafirly give weight to the idea that “ideas” in themselves can be protected. Yes, HC have at least one European registered design[2], this one:slabgate

The design protection is granted for the whole image shown. This includes the shape of their “slab” inside packaging clearly marked with the Hotel Chocolat brand name and the sub brand “Caramarvellous”.

Quite honestly, I don’t think this was where the battle was won (particularly if this is the precise design right relied on).

  • There was no clear legal basis for the dispute. The result seems to be down to the fact that the two companies are very conscious of their PR and brand story. Put the same set of facts with two other companies and the outcome could have been far more brutal.
  • HC really capitalised on the PR which I would guess helped to get Waitrose to resolve this quickly. HC’s “amnesty” where customers could surrender their Waitrose bar in store in exchange for a “real” bar was a brave move.
  • Play this out as if the businesses involved were smaller, or less evenly matched, perhaps with a smaller budget and without the legal teams and PR teams talking to each other. The outcome for someone else is not guaranteed.

So yes, take heart, battles can be won even when the groundwork is shaky. But, think carefully before launching headlong into your own #slabgate campaign – it won’t necessarily be “…totally coincidentally very similar…” in outcome.

[1] https://www.theguardian.com/business/2018/may/25/hotel-chocolat-triumphs-in-chocolate-war-with-waitrose

[2] Design number 001438378-0011

 

trade mark brand endorsement

The power of the Trade Mark-le endorsement

Getting an endorsement from a celebrity can do wonders for a brand and the value of their trade mark. That’s no surprise.

So when Meghan Markle (Prince Harry’s fiancée, for those of you who may have been living under a rock) wore a pair of Hiut jeans last week in Cardiff, the brand exposure for the Welsh denim brand was HUGE.

(She also wore a coat from Stella McCartney, a DeMellier bag, and Tabitha Simmons boots.)

A week on, her outfit choices are still being talked about. As I was driving back from a meeting today, Radio 4’s You and Yours programme had a feature on Hiut.

You might be wondering why I’m writing about this. Surely this is a PR story, right? Well, yes. Mainly it is. But, it’s important from a trade mark and wider intellectual property perspective too.

If your brand unexpectedly gets this level of press coverage, the exposure is obviously amazing. But with that exposure comes a wider audience of rival businesses who may want to also enjoy and benefit from your press coverage and heightened brand awareness. How can you protect yourself against that?

Obviously you can’t stop someone else making a pair of jeans. But what about them making an inferior product, so-called “fast fashion” copying your design? What about a rival company calling their range of jeans the same name as you? Or maybe copying the description from your website and using it on their own website. What about if they set up a website selling similar products using a domain name that includes your brand name www.jeanslikeyourbrand.com

All those examples can be prevented, deterred, and stopped with a good intellectual property protection policy in place. Registered trade marks, design rights and copyright all play their part.

Registering your trade mark before you hit the global stage is a winning plan. All the brands mentioned have registered trade mark protection for their names, in case you were wondering.

If you’re sending out sample products to influencers (they don’t need to be future Royalty), or you’re a fashion brand with contacts in celebrity stylists, you’re probably hoping for similar golden exposure. If you would like some help putting together your intellectual property protection policy and registering your trade mark, please do get in touch.

Just as an fyi – the free 30-minute introductory call slots are fully booked until mid-March so don’t delay if you want to book one.

Birthday cake

Birthday cake giveaway

It’s our birthday week! 2 whole years of Stanmore IP. How exciting.

I’m a bit of a fan of cake. Who isn’t. And a birthday is a very good reason to have some cake I think. So with that in mind, I’m offering one lucky winner a “Cake For One” one month subscription from the brilliant The Cake Tasting Club.

To enter the competition, simply follow the various steps below, there are 4 ways to enter. The competition ends at midnight on Saturday 21st January. I’ll pick one winner at random and they’ll get a nice box of cake though the post. Delicious.

If you’d like to share the competition with your friends, please do. There are social media sharing buttons below.

Best of luck! Clare.

Stanmore IP Birthday Cake Giveaway

The EU Referendum result and your trade marks

It’s been a few days since the EU Referendum result was known. Whichever side of the debate you fall on (and everyone has had an opinion!), no one can deny that we’re facing some major changes to the way things get done in the UK and the EU generally. Having taken a few days to consider it, purely from a “trade marks for business” perspective, here are some thoughts:

  • Nothing has changed at the moment. Your UK rights are still valid. Your EU rights are still valid. EU rights still extend to the UK.
  • There is no need to panic. The UK won’t leave the EU until 2 years after the date that they “push the button” and give notice to leave. It doesn’t look like that notice will be given any time soon.
  • Your existing EU rights are not worthless. As and when the UK leaves the EU there will, almost certainly, be the option to keep your existing EU rights in the UK. This will undoubtedly attract a fee, but will nonetheless be possible.
  • For future trade mark filing plans, think about which countries you genuinely will use your trade mark in. At the moment, an EU trade mark is a cost effective way of protecting your trade mark in all of the EU countries through one application. If you have an interest in the UK and only one or two other EU countries, it might be better to file trade mark applications only in those countries of interest. Contact me for advice on your EU filing strategy.
  • If you have an EU trade mark coming up for renewal, so long as it is still of interest to you in part of the EU (including the UK), you should renew it. Letting it lapse now will not give you continued rights in the UK once the UK has officially left the EU.
  • Make sure that the details on the register are accurate. This includes ownership, address and representative. If you have more than one representative across your portfolio, consider consolidating to one single representative if it is possible within business decisions. This will make it much easier to handle any future changes to the EU trade marks, and the “new” UK protection. Please contact me if I can help consolidate your portfolio.

If you have any questions or concerns about the consequences for your trade mark rights following the EU Referendum result, please get in touch.

Image from Pixabay with thanks.

Alexa Chung blog heading picture

Alexa Chung, brand collaborations and trade marks

Archive by Alexa Chung for Marks & Spencer was launched this week.

It might just be my Instagram feed, but it feels like everyone has been obsessing over this. Especially the Harry blouse. It got me thinking about trade marks and brand collaborations generally. They’re great, they’re mutually beneficial, and they’re not exclusive to big names and high street retailers.

Alexa Chung Harry blouse

The lovely Anna from Little Flea looking fabulous in the Harry blouse.

The key thing with making a brand collaboration work is to make sure that everyone is clear about who owns what and what the collaboration is going to look like.

Alexa Chung has a European-wide trade mark registration for ALEXA CHUNG, it covers clothing goods amongst other things. Marks & Spencer own various trade mark registrations for Marks & Spencer and M&S also covering clothing amongst other things. Both sides own their own “names”. Put them together and agree who owns what and you have a brand collaboration in the making.

Commercially I imagine there were some meetings, probably several. They all probably chatted about their vision, how many pieces there would be in the collection, the retail price point, how they wanted the PR to be handled, who was going to be invited to the launch party, etc etc. Somewhere in amongst those meetings, there will have been an agreement covering the use of the trade marks.

Alexa Chung will have licensed M&S to use her registered trade mark on this range, it will have included requirements about how it is used, the quality of the products (after all, if you buy a dodgy blouse it’s her name and reputation that’s linked to it as much as M&S) and how the agreement will come to an end. It will also cover things like whether this agreement is exclusive or not – are M&S the only people that will have an Alexa Chung clothing line this year?

If you’ve got a brand and you want to increase your profile, and maybe launch a collaboration with another company, you’ll also want to think about some of these things. One of the starting points will be whether you have rights in the brand that you’re licensing out.

Feel free to get in touch if you want to have a chat about how Stanmore IP can help you with that.

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Intellectual Property Rights Creative Bedfordshire

Protecting Your Intellectual Property Rights – Creative Bedfordshire Conference March 2016

Intellectual Property Rights (IPR) are important in every sector, especially the creative industries. A couple of weeks ago I was asked to speak at the Creative Bedfordshire Conference held at the University of Bedfordshire. Amongst other speakers covering topics such as valuing your work, accounts, using social media and why business collaborations can be important, my talk covered (funnily enough) Intellectual Property Rights and Contracts.

The slides from all of the talks, including mine on protecting your intellectual property, can be found on LinkedIn SlideShare http://www.slideshare.net/CreativeBedfordshire/creative-bedfordshire-conference-2016-protecting-your-intellectual-property-clare-mullarkey-stanmore-ip

And for those wanting further information, or some more guidance on the topics I covered, here are some useful links:

The UK Intellectual Property Office has lots of useful information and summaries, links to a few of the key pages:

Trade marks https://www.gov.uk/how-to-register-a-trade-mark
Copyright https://www.gov.uk/copyright
Designs https://www.gov.uk/register-a-design
Patents https://www.gov.uk/guidance/before-you-apply-for-a-patent
ACID – Anti-Copying In Design: http://www.acid.uk.com/
Contract terms for freelancers: https://www.crunch.co.uk/blog/freelancer-advice/2014/11/07/protect-yourself-with-these-contract-samples/

If you would like more information, or would like to discuss a specific matter, please do get in touch.

Clare@stanmoreip.com

@stanmoreip on Twitter

Coca-Cola sweets

Coca-Cola Goes Flat

An application to register the Coca-Cola bottle as a trade mark has been rejected by the General Court of the EU.

Last week the General Court of the EU issued a decision refusing registered trade mark protection for Coca-Cola’s bottle shape. The trade mark applied for was this:

Coca-Cola Bottle

Coca-Cola applied to register the bottle shape as a European Trade Mark in December 2011. The European Trade Mark Office rejected the application on the basis that the trade mark did not have any distinctive character in relation to the products Coca-Cola had tried to protect (including plastic bottles, household goods, and non-alcoholic beverages). The Examiner felt that the Coca-Cola bottle was not significantly different from other basic bottle shapes for the same goods.

Coca-Cola tried to convince the Examiner that the trade mark had become distinctive because of the use they had made of the bottle before the trade mark application was filed. They submitted evidence from customer surveys conducted in 10 European countries, as well as sales figures, advertising material, website extracts, photos, pop art and third party publications. The trade mark Examiner, the Second Board of Appeal, and now the General Court, decided that this was not sufficient evidence to prove that the bottle shape had become distinctive. Criticism of the evidence included that a lot of the material was not from the EU, and that as a bottle shape (and any other 3D trade mark) has no language barrier, that evidence of acquired distinctiveness must show that the mark has become well known across all 28 countries of the EU.

Coca-Cola do have registered trade mark protection for their more distinctive and iconic “contour bottle”. They can still appeal the decision to the Court of Justice of the European Union.

When applying for trade mark protection for 3D marks, as well as any other type of trade mark, it is important to consider whether the consumer of the goods will see your trade mark as a badge of origin, or if it simply blends into the background. In this case, I think the decision is the right one. When looking at the picture of the trade mark applied for, I’m not sure I would be certain that it was a Coca-Cola bottle and not from any other company. In the absence of sufficient evidence that the public have been educated to see that shape as a trade mark, it seems that the right decision has been issued.

Case reference T-411/14. Press release from the General Court here http://curia.europa.eu/jcms/upload/docs/application/pdf/2016-02/cp160016en.pdf

For more information on protecting your trade mark, or defending it against others, please get in touch.

Email: clare@stanmoreip.com

Twitter: @stanmoreip

Brewing a trade mark dispute

You might have seen a recent brewery trade mark dispute play out. Derbyshire brewery, Intrepid, is launching a new IPA this autumn named “Trade Mark”. This is a collaborative brew between the brewery and their law firm, after they successfully managed to get a national brewery to withdraw a trade mark application for INTREPID covering beer and related goods.

Their success in stopping the big national brewery was based on Intrepid’s use of their name pre-dating the trade mark application filed by the national brewer. They did not have trade mark protection in place. Fortunately for them, the national brewer capitulated and withdrew their trade mark application before the opposition proceedings progressed too far.

brewery trade markThey filed an official opposition for which the opposition fee, excluding any legal advice is €350, as well as filing initial arguments and evidence which would have taken a few hours of legal advice to prepare and submit. I can’t guess how much their total legal bill would have been for this one case, but it would certainly have been more than the cost of filing a trade mark application. On top of the bill for dealing with the opposition, they have also now filed a new trade mark application in the UK to protect their own brand.

During “#CraftBeerHour” on Twitter a couple of weeks ago (14 July), I asked Intrepid whether they would recommend trade mark protection to others as a way to head off issues like this in the future. Their answer: “obvious answer is yes, it would have saved is a lot of trouble but setting up a new business is a frenetic time”

Having trade mark protection in place would not necessarily have stopped the national brewery from filing their own application. But having protection in place would mean that the case would have been significantly stronger. Intrepid acknowledge this and when I asked them whether they had trade mark protection in place before the issue arose, they said “no, unfortunately not. That was the start of the problem. We concentrated on setting up the business”.

There are lots of reasons to file a trade mark application and formally register your trade mark. One of which is that by having your trade mark on the register, it is available for other companies to search and find out that you exist. The national brewery may well have conducted searches of the trade mark register, and, having found nothing of note, decided to proceed with their own application. If Intrepid had trade mark protection in place from the start, there may never have been the issue in the first place.

For more information on protecting your trade mark, or defending it against others, please get in touch.

Email: clare@stanmoreip.com

Twitter: @stanmoreip