Tag Archives: Trade mark

Burger

Oh burger. McDonalds didn’t prove use of the BIG MAC trade mark in Europe.

Burger, big mac

Do you know what a Big Mac is?

Do you know which company produces them?

Do you know that they are sold in Europe?

Chances are the answer to all those questions is a resounding yes. Even if, like me, you’ve never actually eaten one.

So it might come as a bit of a surprise if I tell you that McDonalds weren’t able to prove that they have used the Big Mac trade mark in Europe. As a result, the European Trade Mark Office have decided to cancel the trade mark registration.

Cancelling a trade mark

Once a trade mark is over five years old, it’s generally assumed that the owner will have started using it. If it hasn’t been used, and there’s no good reason for that, it can be cancelled. If it has been used, the owner can be asked to prove genuine use – that proof needs to be for each item covered by the trade mark registration, show more than just “token” use, and in the case of an EU-wide trade mark, the use must be in a significant proportion of the EU.

Supermacs, an Irish burger company, applied to cancel the EU trade mark registration for BIG MAC. McDonalds had to prove that they had in fact used the trade mark, in order to keep the trade mark registration.

You wouldn’t think that would be too tricky, I think we can all agree that it’s a pretty well-known brand throughout the world. So what was the problem?

Evidence

McDonalds filed evidence which included 3 affidavits from employees of the company; samples of packaging; print outs from various national McDonalds websites from within EU countries; copies of menus showing the Big Mac offering; a print out from Wikipedia about the Big Mac.

The decision (which you can read as part of the official file here) reviews the evidence submitted and explains a little about why this wasn’t sufficient.

For a start, almost everything was internal. The EU IP Office generally like evidence to be independently verified and give independent evidence more weight.

Secondly, they were unimpressed that there wasn’t some data to support the evidence submitted. Copies of websites are all very well, but how many people visited the website? Where did those visitors come from? This is information that most businesses can get hold of relatively easily.

Thirdly, Wikipedia is not a source of evidence in itself because it can be amended by any of its users, the content can’t be relied on.

What can we take away from this?

If you’re in a situation where you have to defend your trade mark rights, evidence is key. I would always recommend that good record-keeping throughout is important so that if this crops up, you’re not faced with a monumental task to gather information and evidence.

Know your figures. Website hits, sales volume, sales value, market share, advertising spend, are all important. Be able to break those down by country, and by year.

Evidence. Save copies of any adverts that you place and know the date you placed them/how long they ran for. Alongside that, know the average circulation figures of those publications in the relevant countries, or website hits for those sites, or footfall in the areas for your posters. You should know this because presumably it was a driving factor in your decision to place the advert in the first place. If you don’t know it, the company you paid to do the advertising, or for the advertising space, should know this and be able to give you that information.

Press coverage. Keep copies and details of all press mentions. Again, circulation figures are handy to know. If people are talking about your brand, it’s raising awareness independently from you. For example, since 1986 The Economist has produced a “Big Mac Index”, using the price of Big Mac burgers in various countries as a way to compare the economies of those countries. Evidence from these kind of independent sources is really valuable.

Chances are you are already sitting on this information within your company, but it might be handled by various departments, or just in different folders. I would recommend finding a way to join this up centrally. And if you can’t, chat to your legal team about a way to keep this centrally for you.

If you’re a small company, this still applies. Would you be able to pull together that level of information on your brand if you were asked to? And could you afford the time to do this as a standalone task?

If you need some help with evidence gathering, streamlining your evidence collection process, or creating a process in the first place, please get in touch.

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/

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.

How to use ™ and ® to identify your trade mark for others

Hello!

If you’ve heard me go on (and on!) about using ™ and ® to show your trade mark but you can’t work out how to actually do that and end up writing “TM” and “R-in-circle” here’s how:

On an iPhone, they can be found hidden deep in the emoji keyboard (shown in the picture).

On a laptop/computer with a keyboard, the keyboard shortcut is CTRL+ALT+T for ™ and CTRL+ALT+R for ®

So please use them. They’re a great deterrent, and make you look more professional when used correctly.

Remember, you can only use ® if your trade mark is registered. Otherwise, use the ™.

Twitter and Instagram both allow you to use ® and ™ in your Profile Name (not in the actual @handle).

Facebook won’t let you use ® or ™ in the Page Name for some unclear reason. Their guidance on Page Names is here https://www.facebook.com/help/519912414718764/?ref=u2u

Hope you’ve found that useful. Get in touch if I can help you protect your trade mark or if you have any questions.

trade mark overseas

Taking your trade mark overseas – what you need to consider

Depending on your business type, you might have the opportunity to take your trade mark overseas. This could come quite quickly in your business, or might be a step that you consciously take after trading in the UK for a few years first.

What does trading overseas mean?

When I say take your trade mark overseas, I don’t specifically mean that you need to set up a physical office or shop to be active. How about if your products are stocked by someone in another country. Maybe you sell online and find that you have an increasing number of sales in a particular country, or group of them. Perhaps you manufacture your products and use a factory overseas to do that. Do you visit and exhibit your products at international trade shows. All of those situations (and countless others) result in your business having an interest outside of the UK.

Brexit has meant that there are some unanswered questions about what will happen to any trade mark rights you have at a European level (see my blog post here).

However, several companies don’t have any rights beyond the UK. This means that you could be vulnerable to all kinds of issues when you take the trade mark overseas.

So what should you think about doing to protect your trade mark overseas?
  • Check that the trade mark is available. You should look at whether there are possible conflicts with existing companies. And do this in each country of interest. Someone else might have earlier rights than you. Just because you are an expanding business, doesn’t mean you have automatic rights to use your trade mark overseas.
  • If you are manufacturing in another country, you should have trade mark protection there. The most common trade mark issue with overseas manufacture is that products are copied in that country, and the company has no rights there.
  • Protect the trade mark in each country you trade in. You might have a minimum trade rule for each country. So if you sell over a certain value in a particular country, then it makes the “hit list”. You should review this each year and every time a new business milestone occurs, such as securing a new stockist.
  • If you’re attending trade shows overseas be aware of how far and wide your brand is travelling. Stockists, manufacturers, distributors (and those who would like to be your stockists, manufacturers and distributors) might decide to protect your trade mark “for you”. This can be a nightmare for investors as well as taking action in case of trade mark enforcement issues. Best to get in there first and be the clear owner of your trade mark.

If you would like more information or would like to discuss how I can help you protect your trade mark everywhere that matters to you, please get in touch.

good trade mark

What makes a good trade mark? Branding advice versus trade mark attorney advice.

There’s lots of debate about what makes a good trade mark. And the answer is that it depends what you’re trying to achieve with it. And who you ask/who is asking!

Branding/marketing advice for a good trade mark is likely to be:

From a branding perspective a good trade mark will be memorable as the main thing. You also want it to be clear to your customers who you are, as well as being clear about what you do/offer. Most of all, you probably want it to stand out from the crowd. In addition, I know some people think that it’s a great compliment to a brand if it is used frequently, or becomes synonymous with your product or service. Who doesn’t say “I’ll Google it” when they actually mean “I’ll use an internet search engine to find that out”.

Trade mark attorneys will say that a good trade mark:

Is also memorable and stands out from the crowd. Also you want to be unique in your business area. You don’t want to describe exactly what you do – so neither “Your Local Accountant” or “Get Mums Fit” would be considered a good trade mark from that point of view.

Ideally, you want your trade mark to be able to be registered. So a trade mark attorney’s advice about what makes a good trade mark will be that you need to choose one that will satisfy the requirements for registration. The Examiner at the trade mark office will decide if it can be registered as a trade mark. This means that they look at;

  • Whether it can identify one business from another.
  • That it doesn’t describe the goods/services offered.
  • That it is not customary within the trade/industry.

You also need to make sure that it doesn’t conflict with anyone else’s existing trade mark(s).

These are all things to think about when choosing a name for your business or product range. If you need any help with choosing a new name, rebranding, or protecting your existing trade mark, please get in touch.

Trade mark registration – what does it give me?

Trade mark registration seems to be on lots of people’s “to do” list. For most businesses a trade mark is a fair chunk of investment, especially in the early stages. Lots of people aren’t really clear what a trade mark registration gives them. And just as importantly, what it doesn’t. As a result, it often gets overlooked on that “to do” list.

So here’s a quick run down of some general pointers* about what kind of benefits and security you get from having a trade mark registration.

What you get with a trade mark registration:
  • First of all, you get the presumed right to use the trade mark. In the country it’s registered in. On the goods or services it’s registered for.
  • Then you also have the right to stop someone else from using the same, or similar trade mark. In the country you have it registered in. If they are using it on the same or similar goods or services to the ones you have it registered for. And there is a likelihood that customers will be confused.
  • There’s the increased ability to ask for investment because you can legitimately say that you own the brand. Think of Dragon’s Den – the first question they ask is “do you own it”.
  • You can license it to other people to use. Think of franchises, spin-off product ranges, collaborations.
  • The ability to use it to raise finance for your business, e.g. by mortgaging it.
  • Also the right to sell the trade mark as part of your business.
  • You can use the ® symbol which tells other people that your trade mark is registered and warns them about your existence. A great deterrent.
  • It can be used to object to similar domain name registrations that contain your trade mark, or something similar.
  • You have the ability to use it to stop counterfeiters.
  • Also, you can use it to register with customs authorities to help prevent the importation of counterfeit goods.
What you don’t get from a trade mark registration:
  • Global protection. Registered trade mark rights are restricted just to the countries where you have a registration. If it’s not registered in that country, you’re not protected there.
  • Every type of product or service is protected. Unless you’ve got a registration for them all. There is no “catch all” term like “merchandise”, you have to be specific.
  • Other people copying your business idea, or simply running the same type of business (there are lots of clothes shops in the world for example). So long as they are using a different name, brand etc your trade mark registration won’t be able to stop them. Even if you are the first to the market.
  • You won’t be able to stop people using descriptive words. For example, “Bargain Books” can still be used by everyone else to describe their bargain books, even if you have, say, a logo version of that registered.

If you have any questions, or would like help protecting your trade mark, either in the UK or overseas, please get in touch.

*Not all countries have the same laws, these are general pointers from a UK and EU perspective. If you have a query about a specific country please get in touch.

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

When, and why, should I get a trade mark protected?

Hello!

Things have been a bit quiet over here on the blog. It’s been a hectic few months with lots of lovely new clients joining us, as well as a holiday, a birthday and the initial stages of a house move, busy busy!

when-and-why-register-trade-mark-2

Inspired by this overwhelming busy-ness, it got me thinking about how hard it is to know what to do first when you’re setting up a new venture; and I’m the first to admit that getting your trade mark protected isn’t quite top of the list in terms of exciting things to do (like actually launching a product, getting your website done etc).

So when should you look at getting trade mark protection?

The answer is as soon as possible.

Why bother?

Having a trade mark registered gives you the presumed right to use the name to trade under. You don’t get that from your domain name, your logo or your article in the local magazine.

It also gives you the right to stop others from using the same, or a confusingly similar, name for the same business. This bit is important if you think you might be susceptible to those “inspired competitors” trying to encroach and pinch your brand.

But it seems like a lot of money to spend.

The costs are modest for a UK trade mark, and trade mark rights last for 10 years. Think of it as insurance for your brand name. It will be less than you spend on marketing, or website development, or even branded stationery over the same period.

I haven’t had any issues yet and I launched ages ago.

If you’ve been trading for a while, you’re not too late – it’s always a good idea to get trade mark protection no matter how long you have been trading. Trading for a while will have given you some reputation rights, but in practice these are hard to enforce, expensive to enforce, and likely to be limited to the geographical area you’ve got the reputation in.

You would say that, you’re a trade mark attorney.

I appreciate that this advice will seem biased. But bear in mind I’m not insisting you use a trade mark attorney to help you protect it – although there are lots of good reasons why you should here – seeing businesses adequately protect their brands will always make me happy, even if I haven’t helped them directly.

So, go forth and register your trade marks. And if you need some help, give me a shout!

Small Business Saturday

Small Business Saturday – Inspire Series

The lovely folk at Small Business Saturday have asked me to run a workshop for their even lovelier small businesses. That’s everyone with a small business by the way. No matter what stage you’re at.

You should know already that I’m quite keen on protecting brands and making sure that businesses are getting the most out of theirs. This workshop will cover everything from how to choose a name, or indeed a rebrand, to how to use it to make sure it remains yours, and also how to protect it to hopefully stop other people pinching it. There should be something for everyone in there although it’s mainly aimed at businesses who perhaps haven’t yet had any advice in this area or taken any steps to protect their brand yet.

The date is set (Thursday 29 September), the invites have been sent (please consider this yours) and now we wait patiently for the RSVPs. Well, the tickets to be reserved. Last time I was this excited about RSVPs was for my wedding – no pressure!

The tickets are free. You get to come and see me in person. The venue, Somerset House in London, is fantastic. Did I mention that the tickets are free? Well they are.

If you can’t make it in person, or if you miss out on a ticket (places are limited), you can follow along online. We’ll also have a live Twitter Q&A as part of the session – make sure you’re following us both @stanmoreip and @SmallBizSatUK

Full details and to book a ticket are here.

Hopefully see you in a few weeks.