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Learning from Apple’s trade mark issues in China

Apple's trademark issues with 'iPhone' in China

Apple Inc, the tech giant, recently lost a court battle over the use of the word ‘iPhone’ on leather goods in China. A local company called Xintong Tiandi will continue to have the legal right to use ‘iPhone’ on leather goods. As expected, Apple wasn’t happy with the decision and will be requesting a retrial in the Supreme People’s Court. As this trade mark battle continues, what lessons can be learned from this episode?

The trade mark system in China

The Chinese trade mark system is considered to be complex and murky. Trade marks can be filed on a ‘first to file’ basis instead of ‘first to use’ basis. What this means is that any company that files a trade mark first has an opportunity to obtain the registration. A trade mark search in the Chinese Trade Mark Office website shows 247 different results for ‘iPhone’ under different trade mark classes. Most of these are from local companies.

‘iPhone’ trade mark history in China

Apple filed a trade mark application for the word ‘iPhone’ in 2002, but only for computer hardware and software. The registration was granted in 2013. Xintong Tiandi had filed for its ‘iPhone’ trade mark in 2007 when the iPhone went on sale globally. The court decided that trade mark wasn’t popular and synonymous with Apple in China until 2009 when it was introduced in the country. Based on this, they lost the case.

Learning from Apple’s trade mark issues

Apple previously had an issue with their trade mark ‘iPad’, which they bought from the wrong company. It is common to find ‘trade mark trolls’ in China. Companies looking to expand into China might find that their trade mark is already registered. The most effective method of overcoming this issues is to file your trade mark as soon as possible. Had Apple filed ‘iPhone’ under multiple classes it would not have been in the situation it is in today.

Apple will continue to pursue this case because of its financial strength and a strong case, but most small to medium sized businesses would not be in the position to do so. As stated, the best advice is to protect your brand as soon as you create it.

Unregistered and registered design rights

What rights does your registered and unregistered designs have?

Good design lies at the heart of any good business. An excellent design transforms a product into a brand- think Coca-Cola’s distinctively curvaceous bottle or the iPhone’s iconic product design- so it’s important to protect the appearance of your product. The most common methods of protecting the design of your product here in the UK are through registered and unregistered design rights.

What is a design?

It’s not just fashion brands that need design protection. Your ‘design’ is anything related to the visual aspects of your product. It could be a distinctive logo, a pattern you decorate your goods with, symbols, product shape or packaging.

In simple words, a registered design is protection for the appearance of the whole or part of your product.To register your design, it needs to be original and unique. A similar design cannot already exist in the marketplace.

UK Unregistered Design Rights

Here in the UK, we have a two-fold system of protecting design rights; unregistered and registered design rights. Unregistered design rights are automatically given with no formal application. You acquire the rights by creating a product to the design, or producing a design document. If a third party copies your design, they will have infringed upon your design rights.

Unregistered design rights don’t last forever. They expire 15 years from the year the design was first recorded, whether in manufacture or a design document. However, if your product containing the design is made available for sale or hire anywhere in the world  within the first 5 years then the date shifts to 10 years from the first sale. This mean that for most commercially useful designs, the unregistered design rights last for 10 years from first marketing. In the last 5 years of protection, any party is entitled to obtain  a Licence to make or sell the design.

Unregistered design rights exist throughout the European Union as Community Unregistered Design Rights, giving roughly the same amount of protection but lasting for only 3 years.

UK Registered Design Rights

Registered design rights are received through a formal application to the UK Intellectual Property Office. In order to qualify for protection from UKIPO, the design has to be ‘new’ and show ‘individual character’. It can’t be a generic mark or a design that produces no overall different impression from other designs. Registered design rights grant you monopoly rights, that is, only the holder of the rights has the exclusive right to use all or part of the design.

A UK Registered design can last for 25 years of protection, but has to be renewed every 5 years.  Registered design rights exist throughout the European Union under the name of Registered Community Designs. Like UK Registered designs, the protection lasts for 25 years but must be renewed every 5 years.

So why register for Registered Design Rights when Unregistered Design Rights exist?

The difference between registered and unregistered design rights is all about the level of protection. Registered design rights have much better protection than unregistered designs.

Say, for example, you think another company is infringing on the design of your product. If the mark is unregistered, you have to prove that the third party has copied your design in order to win against them. You have to prove that they took the idea directly from you to make their product. If your product is a registered design, then you only have to prove that their product is too similar to yours- regardless of whether the alleged infringing design was created entirely independently or with knowledge of the design.

There are other reasons as to why registered design rights; registered designs last much longer than unregistered designs (25 years for the former or 3 to 10 years for the latter);  Unregistered design rights are limited, they do not give you monopoly over a design. On the other hand registered designs can provide extra protection on top of registered trade mark rights if your logo has graphic elements; and finally having a registered design helps your market competitiveness by adding business value. After all, shows your commitment to the product and is a registered design is an asset like any other- it can be sold, licensed out or transferred as the owner sees fit.

A comparison table of unregistered and registered design rights in the UK and EU

Why you should use a lawyer to file your trade mark registration

Trade mark lawyer filing a trade mark

Filing a trade mark registration can be an expensive process, so it is unsurprising that many people question whether they should try to reduce costs by filing the application themselves, rather than employing a trade mark attorney. However, it is important to weigh up the potential savings against the risk of problems and higher costs later on that can come from not having professional help. Any errors made in your trade mark application can end up being very costly, both in time and money.

Correctly Filed Trade Mark Application

If your trade mark application is improperly filled in, or incorrectly filed, then it is very likely to be rejected and you will lose the filing fees. If you want to try again to register your trade mark, you will have to pay the full fees again, making the filing process a lot more costly than necessary. Using a trade mark lawyer to help you file your application means that it will be filled in correctly the first time, leading to a much lower risk that it will get rejected, saving you the cost of subsequent re-applications.

Using a trade mark attorney can also speed up the process of obtaining your trade mark. The application process can take 5-8 months depending on the type of trade mark. If you fill in the application yourself and it is rejected due to mistakes, you will have to re-apply and potentially wait another 8 months for your trade mark protection. A professional trade mark lawyer will know how to file your application correctly, greatly reducing the chance that your application will be rejected and the process will have to be repeated.

Once you file an application, your trade mark is provisionally protected, but you cannot enforce this protection by filing a trade mark infringement or damages claim until the trade mark registration is complete. If your application is rejected because you have filled it out incorrectly, this leaves you without protection and your competitors could use your mark without any legal consequences.

Trade Mark Classes & Descriptions

The trade mark application process is a lengthy and relatively complicated one, particularly when it comes to classifications. There are 45 classes of goods and services that you have to choose from, and often registrations fail because the incorrect class or classes were indicated on the application. In addition to this, if you select a class on your trade mark application, then don’t use your mark for those specific goods or services within 5 years or registration, your trade mark could be challenged and possibly revoked. A trade mark lawyer will be familiar with all of the classes and their definitions, and will be able to advise you on which ones you should select to protect your trade mark, removing the confusion and considerably decreasing the risk of your application being rejected.

Third parties, i.e. your competitors, have an opportunity to oppose your trade mark application as part of the registration process. If this happens, you will have to defend your application.  In the UK, if you fail to defend your application, it is deemed to be abandoned and the you may be liable to pay third party costs.  A trade mark attorney is best placed to advise on the necessary steps to take in case of an opposition. They will find the arguments to put forward for a case and can allow you to overcome that opposition.

UK or EU Registration

When registering a trade mark in the UK, you have a choice of applying for a UK trade mark, or an EU trade mark. The UK trade mark and EU trade mark provide different protections for your brand, and your trade mark attorney will be able to advise on which is best for your business and specific trade mark. Although the EU trade mark filing fees are more expensive than for a UK trade mark, your trade mark attorney will be able to let you know whether it is advisable to apply for EU protection to avoid potential greater costs and barriers to international trading in the future.

So how much does it actually cost to use a trade mark attorney to register a trade mark? Take a look at our trade mark calculator to get an idea of how much your application will cost with our team of experienced lawyers. We offer three different packages – Bronze, Silver and Gold – depending on the level of support you require, and our Gold package even comes with a money-back guarantee!* Plus, you can complete the entire process online with us – no need to come to our offices or spend hours on the phone.

Got more questions? Contact us with your query and we can phone or email you back, or you can talk to us using our live chat feature, we’re here to make the trade mark application process as easy and straightforward as possible for our clients.

*T&Cs apply

What is a trade mark class?

A trade mark class, or classification, is a category which describes the type of goods or services your trade mark represents.

E.g. Class 25 – clothing, footwear, headgear. Class 35 – advertising, business management, business administration

Find out more about trade mark classes

What is the difference between a UK trade mark and an EU trade mark?

A UK trade mark protects your brand in the UK, and is less expensive to file than an EU trade mark.

An EU trade mark, or Community Trade Mark, protects your brand in all 28 countries that are part of the EU.

Find out more about UK and CTM trade marks

Trade mark infringement on Google Adwords

Trademark infringement on Google Adwords

Does the use of a trade mark in Google Adwords considered to be an infringement? What about the use of trade marks as keywords to trigger an ad on Adwords?

Early last year, Samsung gained some positive coverage within the marketing industry for running the ad shown below.

Samsung ad on iPhone trademark in Adwords

Terminology

Keyword – A keyword in online advertising is a word or phrase which can be used by an advertiser to target their products or services to an audience. When a search engine user types in a keyword, they will see ads from advertisers who have selected the keyword to display their ads.

The ad was shown to users searching for the then new ‘iPhone 6s’. The ad cleverly omitted the use of the word ‘iPhone 6s’ while being creative enough to mention their own new phone model. The use of registered trade mark as keywords for advertising is one issue which has been taken to court by Interflora against M&S.

Use of registered trade marks as keywords for ads

Google Adwords and other similar tools allow users to select keywords, which they can bid upon to display their adverts. This is a common and popular method of advertising on search engines like Google. The Samsung example above displays an Adwords ad.

In the case brought to the court by Interflora, the company claimed that M&S was using its trade mark to advertise their flower service. They sued M&S for trade mark infringement. The High Court found that the advertisements led users to believe that the M&S flower service was part of Interflora. M&S took the case to the Court of Appeal on various grounds, one of them being wrongful burden of proof on the defendant to prove their ad made a clear distinction between  M&S and Interflora.

Read more about the Interflora v M&S case.

The Court of Appeal overturned the judgement of the High Court. They came to the conclusion that the there was nothing objectionably wrong with keyword based advertising. The argument put forward was that in such scenarios, trade mark rights should not prevent fair competition.

This case sets a good precedent for the use of keywords to advertise on. Based on this case, the onus is upon on the claimant to prove that their trade mark was infringed.

The use of registered trade marks as keywords for advertising is commonly practised today. The European Court of Justice (ECJ) had set the following principle after the Interflora v M&S case:

Offering a keyword which is similar or identical to a registered trade mark is not ‘use’ of the trade mark in the course of trade (arts 5(1) and (2) of the TM Directive 1989 (repealed and superseded by TM Directive 2008) (Google France)

However, one the preceding principles also state that:

The owner of a trade mark with a reputation (TM Directive 1989, art 5(2) repealed and superseded by the TM Directive 2008) can prevent a competitor from advertising using a keyword which corresponds to the trade mark where without ‘due cause’ it takes unfair advantage of, or is detrimental to, the mark’s distinctive character or repute.

Google Adwords has an updated policy which reflects the rules by the ECJ. They do provide a complaint form for matters where the trade mark owner is unhappy with the use of their trade mark in Adwords.

Use of registered trade marks as keywords in ads

In terms of using a trade mark within the ad text,  if they are used, Google can investigate and restrict the use of trade mark with in ad. However, there are exceptions for Australia, New Zealand, the United States, Canada, the United Kingdom or Ireland. In these countries, trade marks can be used in ad text in the following cases:

  • Reseller and information websites – A trade mark can be used by a reseller if the product or its component are the primary product or service being sold on the landing page. There has to be a method of purchasing the product or service or display commercial information about it. Information pages should also have a landing page focused on the trade marked goods or services with informative details about it.
  • Authorised use – A trade mark can be used in ads provided the trade mark owner has authorised its use. The process involves obtaining permission from the owner using Google’s own authorisation form,

We have had enquiries where a business owner has requested assistance on what to do if their company name or trade mark is being used on Adwords. This blog post should clear up a number of issues surrounding the use of trade marks on Adwords and other similar advertising tools. Be cautious if you are planning on using trade marked keywords, If you have an issue with a trade mark, then it would be best to consult a professional.  All cases are different so for further advice, please contact us and we will help you over this matter.

The International Trade Mark Registration Process – Infographic

If you are thinking about expanding your business to other countries, or run an online business that can be accessed by people all over the world, then you may want to think about protecting your brand with international trade marks. If your business isn’t protected, then someone else abroad could either leverage the status of your brand to help their business, or damage your brand’s reputation by using your name on a business with inferior product or poor business practices.

To register an international trade mark, you have to apply to each country individually, however this can be managed centrally through the Madrid System from the WIPO (World Intellectual Property Organisation.) The process is still lengthy, taking 12-18 months depending on the country, but considerable amounts of time and money are saved by using the centralised Madrid System compared to separate applications.

The international trade mark application process is quite complex, so we have created the following infographic to help explain it.

Infographic displaying the international trademark process

Protecting Your Business Abroad – What You Need To Know About International Trade Marks?

Searching for international trade marks

So you’ve registered your trade mark in the UK, and you’ve also applied for a Community Trade Mark to protect your business in the EU, but now you want to think about worldwide expansion. How do you go about getting a trade mark registered everywhere else?

What is an international trade mark?

The first thing to understand is that there is no such thing as a standalone ‘international trade mark’. If you want to register your trade mark outside of the EU, you have to apply to each country individually and your application will be processed by each respective country’s IP office.

Applying to individual countries sounds complicated, however the process isn’t quite as tricky and time consuming as you may think. The World Intellectual Property Organisation (WIPO) offers a solution called the Madrid System, which allows you to apply for a trade mark in multiple countries at once.

What is the Madrid System?

The Madrid Union is a 120 year-old agreement between countries to facilitate the registration of international trade marks. Today it has 97 members, including the UK, EU and OAPI (African Intellectual Property Organisation,) that represent 113 countries and 80% of world trade. Using the WIPO’s Madrid System, you can register a trade mark in any number and combination of these countries by filling in a single application and then the status of your trade mark in each country can be tracked and managed centrally through the WIPO site.

Without the Madrid System, international trade mark applications may have to be translated, incurring additional costs, and fees paid in multiple currencies, whereas WIPO requires a single payment in one currency (Swiss Francs.)

What can be registered as a trade mark internationally?

Anything that you can trade mark in the UK, you can apply for a trade mark for internationally, however you must have an existing UK or EU trade mark (or current application) before you can apply for that trade mark internationally. Your international application must be identical to your existing trade mark registration, and you cannot add any classes but you can subtract some. (For a refresher on trade mark classifications, see our understanding trade mark classes blog post)

The fate of your international trade mark is also tied to your UK registration. If within the first 5 years of your Madrid System application, your UK registration or application is withdrawn, refused, cancelled or restricted, the same will also apply to your international application.

Due to these strict rules and the complexity of trade mark applications, it’s a good idea to work with a trade mark attorney on your Madrid System application.

Have more questions about international trade marks? Give us a call on +44(0)20 7791 9050 or fill in our contact form and one of our experienced trade mark attorneys will get back to you ASAP for a free, no obligation chat and advice!

FAQs

How much does it cost?

The cost of an international trade mark application depends on which countries you have chosen and how many countries. The WIPO has a fee calculator you can use to work out the cost of your application.

Regardless of which countries you apply to, the fee is charged in Swiss Francs (CHF).

How long does it take?

International trade mark applications take on average 12-18 months. Each country has its own time limit for processing applications.

How long does an international trade mark last?

Trade mark registrations abroad last the same length of time as in the UK – 10 years – and can be renewed the same as UK trade marks.

Am I guaranteed to get my trade mark?

There are no guarantees that your application will succeed in every country you apply to. As with UK and EU trade marks, your application can be contested.

In some countries, if your application is contested and you withdraw it, or lose your challenge to the opposition, you may have to pay towards their costs, therefore it is advisable to seek advice from a trade mark attorney in this case.

The good news is that if your trade mark application is contested or refused in any particular country, it won’t affect your applications in other countries in any way.

I need to register my trade mark in the UK first. How do I do that?

Find out more by reading our UK trade mark application process blog post.

US Trade Mark Categories – Infographic

A person searching for US trade mark categories

The process of registering a trade mark is different across the pond in the United States. Trade marks in the US are divided by categories, which are ranked by distinctiveness. This system allows the United States Patents and Trademarks Office (USPTO) to evaluate trade mark applications. The 5 categories are listed as follows:

  • Fanciful trade marks: Fanciful trade marks are made-up words which are invented to be used as a trade mark name. They don’t have a meaning or are associated with anything. Good examples of fanciful trade marks include Polaroid and Exxon. From a legal point of view, once fanciful trade marks have become reputable, they would be easier to protect due to their uniqueness. It would be easy to find and prevent competitors from using a similar or identical mark.
  • Arbitrary trade marks: Arbitrary trade marks are words that have a real, common meaning. However, the meaning of the mark is unrelated to the goods or services offered under the mark. Good examples of arbitrary trade marks include Apple and Dove. Apple is a fruit, but it doesn’t have any relation to computer hardware produced by Apple.
  • Suggestive trade marks:  A suggestive trade mark is named after a characteristic of the product or service. There has to be an imaginative element to the trade mark so that the consumers can make a connection with the goods or service. Good examples of suggestive trade marks include Netflix and Microsoft. Netflix suggests online films in a suggestive and unique manner. A potential problem with suggestive trade marks is that some of them can be seen as descriptive by others.
  • Descriptive trade marks: Descriptive trade marks are descriptive of the goods or service. They can partly or wholly describe the goods or services being sold under the mark.  Good examples of descriptive trademarks include British Airways and Best Buy. For a descriptive mark to acquire substantial protection by the USPTO, the brand has to develop a “secondary meaning”, which is developed through “significant advertising budget” and over a 5 year period.
  • Generic trade marks: Generic trademarks cannot be protected as they are simply a generic description of the product or service. The USPTO has decided that categorical terms should be freely available for public use. Good examples of generic trademarks include Band Aid and Thermos. Certain marks, like the examples provided, were once protected trade marks, but they have been afflicted with “genericide”. This is when a word becomes so generic it loses its legal power as a trade mark.

Our infographic below summarises the five categories with examples of famous trade marks in each category.

Infographic displaying trade mark categories used in USA

It should be noted that the generic trade marks shown in the image above have all been afflicted with ‘genericide’.

Now, which category of trade marks should you choose in the US. It is unanimously agreed that fanciful and arbitrary trade marks are the way to go. They are easier to register, and make it easy for you to enforce your protection in the future. However, most companies would prefer to register a suggestive or descriptive trade mark so that consumers can make an instant connection with the goods and service sold under the mark. From a marketing perspective, it would take considerable time and effort to build a brand reputation with a fanciful or arbitrary mark. Hence the preference for the other two categories.

When looking to register a trade mark in the US, you should speak to a trade mark attorney in order to get professional advice. They will help you choose the right mark, which is sound from a legal perspective and is also marketable.

Trade Mark Search On The OHIM Database

The OHIM headquarters and searching for a trade mark

You can search the OHIM trade mark database on our website to find out if your trade mark is available. There are over 7 million registered trade marks in the OHIM database, which is the European registry of trade marks. Save time and money by searching our fast and easy database to see if your trade mark is available to register.

Our OHIM trade mark search is free and we do not ask for your details. We recommend that you conduct a search to find out if your trade mark is available. Your application can face an objection if you file without checking.

How do you search the trade mark database?

To search our database, type in your trade mark into the search bar shown below and press submit.


The search results

The search results (shown below) will show similar trade marks that can be found on the OHIM trade mark database. The results will only show trade marks registered in the OHIM database which is the European registry of trade marks.

Search results of a trade mark search on the OHIM database

If the trade mark you want to register does not show any similar results, you can proceed to apply for your trade mark.

Things to note

  • When similar results are found, you should put yourself in the position of a consumer and consider if your trade mark can be mistaken for any of the similar marks. If the similarity would be confusing, then you will have a problem.
  • When searching for similar trade marks, your search should include identical marks that can potentially be confused with your trade mark. This will help make sure that objections are not raised when your trade mark is filed.
  • If a similar trade mark is found, you should check the class of that trade mark. There is a good chance that you can file your trade mark if the class of the similar mark is different to yours.

Differences between an EU trade mark and a UK trade mark

Difference between an EU and UK trade mark in an infographic
From the 23rd of March, there have been changes to the EU trade mark registration process. This post has been updated to reflect those changes.

Trade mark protection is regional. A trade mark registered in the UK will only protect the brand in the UK. Companies that trade in different countries have to file a trade mark in each country separately, unless all the countries are part of the European Union (EU). The EU offers a single trade mark registration for all member countries called the EU Trade Mark.

Deciding between a EU trade mark and a UK trade mark

If you trade in countries, which are part of the EU and you wish to protect your brand in these countries, then you should file an EU trade mark. An EU trade mark registration will also protect your brand in the UK and it is a cheaper alternative to filing in each country individually.The brand protection is valid in all 28 countries which are part of the EU.

If you trade only in the UK and wish to protect your brand in the UK, then a UK trade mark is the way to go. Financially, it is cheaper than filing an EU trade mark application and it allows you prevent others from filing a confusingly similar mark in the UK and the EU.

The downside of a EU trade mark and a UK trade mark

An EU trade mark registration protects your brand throughout the EU so no specific country can be selected or excluded.The trade mark application is also at a higher risk of facing an objection from the European trade mark office or an opposition from the owner of an earlier right. As for a UK trade mark registration, it does not give you rights outside of the UK territory.

Please note that if your application is refused, you will not be able to recover the filing fees paid.

Difference between an EU and UK trade mark in an infographic

The Fees

EU trade mark – £700 (€850) for 1 class | £45 (€50) for 2nd class | £135 (€150) per extra class

UK trade mark – £170 for 1 class | £50 per extra class

You can calculate the fees for your trade mark by using our trade mark calculator.

Deciding between filing your application in the UK or the EU is not always as straightforward as you might think. In doubts, it is highly advisable to consult with a specialist in trade mark law who will be able to give you the best trade mark filing strategy adapted to your needs. Click here to complete our form and one of our trade mark lawyer will contact you to discuss your options.

The Trade Mark Registration Process In The UK – Infographic

A flow chart of the trade mark process in the UK

Trade marks registration can be a complicated process. This is why the entire process can take between 4 to 5 months. There is no guarantee that the trade mark will be registered, but if clear guide lines are followed and a trade mark attorney is involved, your trade mark has a good chance of being filed. A trade mark is in essence your brand. It has to be unique for it to be registered. A registered trade mark gives the owner legal rights to take action against others who use the brand name without permission. Trade mark protection is limited to the country where the trade mark has been registered.

If you trade in the UK only, then you should register a trade mark in the UK. The infographic below shows the trade mark registration process in the UK.

A flow chart of the trade mark process in the UK