Tag Archives: Trade mark

Why use a trade mark attorney to help with your trade mark?

Why use a trade mark attorney? There’s lots of information online… It’s a question I get asked a lot.

It’s true, you absolutely do not need to use a professional to help with your trade mark protection. In the same way that you don’t have to use an accountant to file your tax return, or the Check&Send service for your passport application.

My answer is simple, a trade mark attorney will add value and can save you money. Here’s how:

  • I’ll help you choose what application to file. It might be better for you to file a trade mark application for your logo minus a few bits. Or maybe in black and white. Perhaps the word on its own would be better. A trade mark attorney will discuss your business plans, will look at the registrability of your trade mark, and make suggestions based on those considerations. This reduces the risk of the trade mark being refused.
  • I’ll help get the admin right. I’m currently working with three separate clients who have had issues over ownership of their trade mark rights. A trade mark attorney can help spot those issues and help get it right in the first place. To record a transfer of ownership of a UK trade mark there’s a £50 official fee and you may also need an assignment document which will need to be prepared professionally.
  • I’ll help choose the classes and goods/services to cover with your application. With input from you, and decent questions from me, I will help work out which classes to cover with your application. For example, you might sell jewellery, but what about toy jewellery, or teething jewellery, they all fall into different classes. A trade mark attorney will work with you to make sure that you’re covering the right things and using the right language. This will save you money as it is not possible to add extra items once an application has been filed so you’d need to file a new application to cover the things you’ve missed. That’s a couple of hundred £s saved there.
  • I’ll find a cost-effective solution for protecting your trade mark. You might offer worldwide shipping, or export your goods, we’ll look at your countries of interest and put together a filing strategy to make sure you cover all of the countries relevant to you in the cheapest way possible. I’m well connected to trade mark attorneys in other countries and can usually get information and input to help you make decisions in those countries. I can also help you find an advisor if you have an issue overseas and don’t know where to start.
  • I’ll take away the hassle and the admin. You’re busy, we all are. Once we’ve got the information right for you and the application has been filed, there’s nothing else for you to do. I’ll keep on top of the progress of it, I’ll spot when things have taken longer than they should and will follow up with the relevant trade mark office.
  • I’ll look after the trade mark for you. Trade mark attorneys have record systems, your trade mark details will be added to those records and you’ll be reminded when things need to be done. Usually if you have a trade mark attorney recorded as your representative any correspondence about that trade mark will come to us first – that means that you’ll get more than just a random letter, you’ll get some initial advice about what the letter means and what, if anything, you need to do about it. If you’ve changed address or contact details, you might have forgotten to update the trade mark register, but we won’t change address without updating it, it’s part of our role. So you’ll always know that someone is able to be contacted about your trade mark.
  • I’m here for the extra “can I just ask…?” questions. I won’t charge you for asking me anything I can answer about your trade mark, it’s all part of the service. You can ask as many questions as you like, and if you’re local I might even buy you a coffee while you ask!

So there you go, a couple (wow, seven!) of good reasons why a trade mark attorney is a useful person to have around.

Please feel free to get in touch if I can help you with your trade mark matters.

 

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