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Why conduct a trademark search?

A trademark being searched on a computer

Conducting trade mark searches is an essential part of the process of choosing and protecting new brands. It is fair to say that it is also frequently the most frustrating part of the brand protection process for clients given the possibility that a proposed brand name is unavailable with the consequent need to go back to the drawing broad and start again. But why is searching so important anyway and what does it achieve?

Why should I search?

Before you choose a new brand name, it’s vital to know whether it is safely available both for use and registration. There is little point in spending large sums of money on brand creation or brand development only to discover that your new name is not available because it would infringe an existing registered mark. The purpose of clearance searches is to find out whether your proposed name might infringe a third-party registration. We also want to find out whether an application to register your proposed name is likely to succeed or to be blocked, either by the registry or by an existing brand owner.

How do I know if I’m infringing?

A registered trade mark gives the owner the exclusive right to use that mark in trade for the protected products or services covered by the registration. However, those exclusive rights extend also to cover similar trade marks and similar goods or services. Depending on how distinctive the registered mark is, that means that the owner could enjoy a broad scope of protection, extending far beyond preventing use of the same mark for the owner’s products to preventing a merely similar mark for merely similar products or services. Moreover, in most countries, such as the UK, there is no obligation to use a registered mark for the first five years of registration. This means that the registered owner can prevent the use of its mark based on its protected products or services even if it is not using its registered mark for any of them. Furthermore, the owner of a mark with a reputation can even prevent the use of a similar mark for dissimilar products or services in certain conditions. All of this makes it extremely important to carry out clearance searches before launching a new brand name.

What kinds of searches are available?

The key point here is that there are many kinds of searches available, depending mainly on how much you are prepared to pay. At one end are free online trade mark searches such as the online search facilities provided by the UKIPO or the EUIPO. These are free and easy-to-use search databases which aim to give brand owners at least an initial idea of the situation. Their main limitation is that they are essentially identical or near-identical searches only which means that they will not necessarily identify relevant marks which could pose a serious infringement risk. At the other end of the scale are full clearance searches where the search data is reviewed and prepared by professional search companies. These are far more comprehensive and reliable, and they aim to identify all potentially relevant prior trade mark filings and registrations.

What are so-called common law searches?

It is important to remember that an existing brand owner may be able to object to use or registration of your new mark based on unregistered trade mark rights, even if it does not have any registered mark. In the UK, these are called common law rights because they rely on unregistered legal rights such as passing-off rights. However, given that such rights are not registered, they will not be identified in any search of the trade mark registers, no matter how comprehensive or expensive the register search. They can only be identified, if at all, by conducting searches of actual trading activity such as online web checks, telephone directories, company name and domain name searches or trade directories. Although common law searches can never be 100% definitive, they can reduce the risk level to a manageable level.

What are the possible consequences of not searching?

The possible consequences of launching a new brand without first conducting any searches are potentially disastrous. You could, for example, be sued for infringement by an existing registered trade mark owner or by an unregistered owner who claims passing-off. A successful legal claim usually leads to an injunction- stopping all trading use of the offending mark – along with damages or delivery up of all infringing products and materials. When viewed in this light, spending a few hundred pounds on a full pre-launch clearance search is money well-spent. Even if not sued for infringement, without a search you may well find your trade mark application blocked by the Trade Marks registry or opposed by an existing trade mark owner.

So, what should I do before I settle on a new brand name or before product launch?

Our strong recommendation is that before you spend any significant sum of money in relation to a new brand name, you carry out clearance searches to make sure that it is available for use and registration, here in the UK and internationally too if necessary. While identical searches using free online registry tools are a good start, they do not provide any guarantee that your new brand name is available for use or registration. The safe option is to instruct us (or your trade mark expert) for advice on searching.

Here at the Trademark Hub, we have a wealth of experience in helping the full spectrum of brand owners – from sole traders and SMEs through to multinationals – to search, protect, and enforce their brands and designs both in the UK, in Europe, and around the world. We are always happy to answer your questions, including working with you to search and clear your brands for use and protection in the UK, the EU, and internationally.

Jaguar pounces on unsuspecting luxury watch maker

The recent news reports that Jaguar Cars has filed a trade mark infringement claim against luxury watch maker Christopher Ward is yet another warning to brand owners of the dangers of launching a new brand name without first carrying out the necessary trade mark clearance searches.

According to reports, between 2014 and 2016 Christopher Ward sold a number of luxury watches under the brand name D-TYPE, each retailing for between £449 and £2995. Car lovers will know that, despite the fact that only 75 cars were made, D-TYPE was a famous marque of Jaguar Cars, having won Le Mans for three years running, between 1955 and 1957.

Jaguar Cars now argues that use of the trade mark D-TYPE by Christopher Ward infringed its trade marks including its brand reputation. Quite apart from having registered trade mark protection of D-TYPE for cars, Jaguar Cars also is the owner of a number of EUTM registrations for or featuring D-TYPE for a range of merchandise, including “watches” in trade mark class 14. This is not surprising when you consider that Jaguar Cars is selling a broad range of branded merchandise on its website including clothes, fashion accessories, luggage, stationery, toys, and – of course – watches.

The take-home point here is that it is vital to ensure that your trade mark is available for use and registration in the UK and in any other international markets in which you actively trade (or plan to trade) so that you don’t find yourself on the wrong-end of an infringement action. The best way to do this is to instruct a trade mark legal expert to carry out clearance searches, ideally before you have already incurred substantial sums of money in launching a new product or service.

Here at the Trademark Hub, we have a wealth of experience in helping the full spectrum of brand owners – from sole traders and SMEs through to multinationals – to search, protect, and enforce their brands and designs both in the UK, in Europe, and around the world.

By conducting trade mark searches, you can make sure that when you launch your new product or service, another trade owner is not going to leap out of the long grass and pounce!

NOTORIOUS trade mark suffers knock-out blow

The news that the new whiskey-brand EU trademark application of former Ultimate Fighting Champion, Conor McGregor, called “PROPER NO. TWELVE” has been published by the EU Trademarks Office following the withdrawal of his original brand name NOTORIOUS, is a reminder to all brand owners of the importance of carrying out trade mark searches before using or applying to register a new brand name.

McGregor’s company filed an EU trade mark application for NOTORIOUS in July last year, intending it to be his new whiskey brand. However, following a trade mark dispute with Carlow Brewing Company, which already had a registration of the trade mark NOTORIOUS for the same classes of alcohol products as those sought by McGregor, the fighting champion was forced to abandon the name. Not only did the EU trademarks office refuse his EU application but it ordered him to pay some legal costs to Carlow Brewing Company.

As a result, McGregor has had to drop the name NOTORIOUS and file a fresh EU trademark application for “PROPER NO. TWELVE” in Class 33, covering whiskey, alcoholic beverages and spirits. Unless this application is opposed before the end of September 2018, his new brand name should mature to registration in the EU. However, this is after spending probably thousands of pounds in legal fees for a failed new brand name.

The take home lesson here is always to carry out at least some trade mark searches before you adopt for use or apply to register a new brand name. Failing to do so could mean not only that your trade mark application may be refused but you may end up having to drop the name altogether and lose all the money invested in that failed brand. It’s important to remember too that trade marks are territorial so if you trade beyond the UK, you need to search internationally as well.

Here at the Trademark Hub, we have a wealth of experience in helping the full spectrum of brand owners – from sole traders and SMEs through to multinationals – to search, protect, and enforce their brands and designs both in the UK, in Europe, and around the world. We will be delighted to work with you to ensure your brand doesn’t get “knocked out”.

Mac to Basics: McDonalds Trade Mark & Supermacs

Should MacDonald’s fast food restaurants be entitled to object to any brand featuring “Mac” or even “Mc “by other food traders? MacDonald’s certainly thinks so which is why it has opposed a European Trade Mark (EUTM ) of the word SUPERMAC’S by Irish fast food chain Supermacs Ltd.

Supermac’s brand has coexisted in Ireland for over 30 years with the famous MACDONALDS name. However, when the Irish chain decided to expand internationally and filed an EUTM for SUPERMAC’S, MacDonald’s objected. Apart from claiming consumer confusion, MacDonald’s argues that “SUPERMAC’S” takes unfair advantage of its famous reputation in the food sector. It also dismisses as irrelevant the fact that both of these two fast food brands have coexisted for decades in Ireland.

The owner of Supermacs is reported to have said that his company should win the dispute if logic and common sense prevail. Without expert advice from a trade mark lawyer, you may well agree with the owner of Supermacs that logic and common sense say that consumers would not confuse “SUPERMAC’S” and “MACDONALDS”. But the law is not always a matter of logic or common sense!

In fact, in 2016 the EU General Court decided that the mark MCCOFFEE infringed McDonald’s trade marks.

We await the decision of the EUIPO in the SUPERMACS dispute which is likely to issue within the next few months. In the meantime, before you launch a new product brand or expand into a new market, you should get professional help from a trade mark expert who will work with you to ensure your brand is safely available for use and registration both in the UK and elsewhere. That way, you can avoid finding yourself on the wrong end of a trade mark dispute, having to go “mac to basics” for a new brand identity.

At the Trademark Hub, we have a wealth of experience in helping the full spectrum of brand owners – from sole traders and SMEs through to multinationals – to protect and enforce their brands and designs both in the UK, in Europe, and around the world. We will be delighted to help you.

Cease And Desist Letters For Trademark Infringement

Cease & desist letter for trade mark infringement

Trade mark infringement can be a serious matter which needs to be addressed as soon as it is discovered. Companies, or individuals, who infringe a trade mark do not often understand the legal implications of copying or using a mark without permission. On the other side, trade mark owners are also unaware of the process of stopping trade mark infringement. In this post, we will look at the first step taken to stop trade mark infringement. A Cease and Desist letter.

What is a Cease and Desist letter?

A Cease and Desist letter is a document which is served to an individual or business to request they cease from continuing a specific act. It also requires the offending party to correct and/or compensate the damage that has been done from an offensive act.

Cease and Desist doesn’t just apply to trade mark infringement. It is also used in cases of defamation, harassment and other forms of IP.

The letter serves to point out wrongdoing on the part of another person or entity with a legal justification. The letter is often used to end the wrongdoing which in the case of a trademark infringement would be copying or using a trademark unlawfully.

Is a Cease and Desist letter legally binding?

A Cease and Desist letter is not legally binding. It represents an opinion of a person, usually a trade mark attorney or intellectual property (IP) solicitor hired by the aggrieved person or party.

The letter isn’t an indication of court action being pursued, but is likely to be the next course of action if the letter doesn’t achieve its intended purpose.

Using a Cease and Desist letter in a trade mark infringement matter

If your trade mark is copied or used by someone else without permission, the matter needs to be investigated first to see if it is a case of trade mark infringement. Once established, the very first step is to send the letter to the alleged trade mark infrniger to stop the trade mark infringement. In many cases, this is often enough to stop the offending party.

The letter should include details of the trade mark. The name, logo or slogan. When the trade mark was filed, what class or classes it covers and the date you found the trade mark being unfairly used or copied. You should include all proof that you have found of the infringement to strengthen your case. Finally, the letter should include a section on what the offending party can do to rectify the situation.

Although a Cease and Desist letter can be written by anyone. It is more appropriate for a trade mark attorney or intellectual property (IP) solicitor to draft it because they have the knowledge and understanding of the area to make a more compelling case for infringement.

Trade Mark Infringement Process

Paypal infringement matter

Trade mark infringement is far more common than most business owners would expect. Brands that start developing a good reputation in the marketplace are often copied or imitated by other companies trying to capitalise on their growing goodwill. In this post, we will discuss what the trade mark infringement process involves and how a company can enforce their trade mark rights.

What is trade mark infringement?

If a company uses an identical or similar trade mark for the same set of goods or services to a registered trade mark, they are committing trade mark infringement. Due to the similarity, the trade mark can cause confusion in the public. Consumers might believe that the product or service being offered by the company bares a relation to the registered trade mark.

This can lead to a number of issues for the company with the registered trade mark. It can cause a decline in their sales. Their reputation can be affected if the similar product or service is of sub-par category thus being detrimental to a mark’s distinctive character leading to dilution of their trade mark.
A good example of trade mark infringement by an identical logo can be seen below

UNIQLO trade mark copy MINISO

When a trade mark has significant reputation, any same or similar mark will also be counted as an infringement regardless of what products or services are being sold. A company cannot use a similar sounding name or logo to a reputable trade mark.

How do you address trade mark infringement?

Once a clear case of trade mark infringement has been established, the company with the registered trade mark has to enforce its protection. This can be done in a number of ways which have been outlined below.

Mediation

An often necessary step in most legal matters, mediation can be used to come to an agreeable settlement between two parties. It is a cheaper and quicker alternative to court action. The UK Intellectual Property Office (IPO) provides accredited mediation services covering a range of intellectual property rights.

Using Intellectual Property Enterprise Court (IPEC)

IPEC has been created to help small and medium-sized companies as well as individuals to resolve intellectual property (IP) issues in a more affordable manner. A trade mark infringement matter would be covered under the IPEC.

IPEC offers two procedures, which are listed below.

  • IPEC (Small Claims Track): Claims less than £10,000. No legal representation is required.
  • IPEC (Multi Track): Recoverable costs are cappeTraded at £50,000, while the value of damages claim is capped at a maximum of £500,000.

Any claim worth more than £500,000 in damages or lost profits will have to be taken to the High Court.

How would a trade mark infringement process be started?

If a company finds a clear case of trade mark infringement, it is recommended that they contact a trade mark attorney to discuss the matter. In doing so, they can learn what the steps will be in order to deal with the matter.

As a first step in stopping trade mark infringement, the infringer must be notified of the issue through a cease and desist letter. The purpose of this is to stop them from continuing the use of their trade mark and understand the consequences they can face as a result of this infringement.

Mediation services can be used at this point as well as an attempt made to amicable resolve the matter directly between the two parties. This is often requested before court action is taken and is seen as a positive step.

Once no resolution can be achieved either directly or through mediation. The next step is to escalate the matter in the court. This is time consuming and costly.
One of the most important aspects of trade mark infringement is gathering evidence of losses, damage to reputation or any other issues caused by it. This can be difficult, especially proving financial losses as a result of trade mark infringement. Some methods of quantifying losses are through researching website traffic, brand recognition online and obtaining company financial information, if possible.

The same applies for proving damages to reputation. If the infringer has received negative feedback and reviews publicly, it can be used to show damage to reputation.

If you were to come across a case of trade mark infringement, it would be best to start by contacting a trade mark attorney or intellectual property solicitor and then following the steps outlined above.

Trade Mark Infringement on Amazon

Amazon's website

One of the more common questions that we get asked is about trade mark registration and infringement on Amazon, the popular online marketplace. As one of the most visited websites in the world and the biggest e-commerce site, Amazon offers various methods of reporting and dealing with trade mark infringement which we will discuss in this post.

Sellers rights on Amazon

As a seller, Amazon doesn’t automatically give you exclusive rights over a name or logo which you use as your brand. If you want to protect your brand name or logo on Amazon, you have to register it as a trade mark in the country you sell your goods in through Amazon. If you were selling your goods on Amazon UK, you will need to register your trade mark in the UK to enforce its protection.

How would you deal with trade mark infringement on Amazon?

If you come across another seller who is using an identical or even similar brand on Amazon, you can report trade mark infringement on Amazon using their Report Infringementpage. However, you need to have a registered trade mark in order to be able to use this reporting tool.

Amazon would review the matter based on the information you provide and make a decision. If there is a clear case of trade mark infringement, Amazon would remove listings of the company infringing on your trade mark, and in some cases remove the entire account. It is up to you to provide the relevant information and we would recommend that you use a trade mark attorney as they would make a better case for you. For this reason, Amazon allows ‘agents’ to report an infringement on their website.

Can brands which do not have a trade mark, do anything against infringement on Amazon?

Without a trade mark, your options are limited to non-existent. You can try to enforce your brand protection using unregistered trade mark rights, but you will need to prove goodwill and reputation in the marketplace. This can be difficult to prove and costly.

Our recommendation is to start the trade mark registration process so that you are able to protect your brand on Amazon.

What is Amazon Brand Registry?

Amazon considers trade mark infringement a serious matter and they have taken steps to help support sellers in protecting their brands. The Amazon Brand Registry is a utility offered by the company to help sellers manage and protect their trade marks on Amazon. To register for this, you will need a registered trade mark to be able to gain the benefits offered by this service.

To understand Amazon Brand Registry in more detail, you can read the in-depth post written by Jungle Scout discussing the registry.

How to use your trade mark after registration?

A common question that we get asked is how should a trade mark be used once you have obtained registration. Luckily, there are guidelines available for this, and I’ll summarise them in this post.

Imagine a customer looking to buy a new pair of sunglasses. She finds the section for her favourite brand only to notice that the font in their logo is different. This can cause confusion and might end up costing the company a sale. Incorrect use of a trade mark can also jeopardise its validity and protection against copycats.

Having and following guidelines for trade mark usage are essential in building a brand. After all, you’d want strong brand recognition. Most importantly, proper use of a trade mark will protect it from unlawful use. So how should you use a trade mark?

A logo trade mark and its consistent use

The colour, format, font and placement of a logo is very important for branding. If your logo was filed with a specific colour scheme, then it should always be used in those colours. When providing your trade mark to a third party, you should provide the colour specification (pantone). You should also create and provide brand guidelines on the way your trade mark should be used and printed to everyone using your branding.

The image from University of East Anglia below displays how their logo should be used.

university-east-anglia-logo-guidelines

Using the ® icon in advertising and labelling

The ® icon is used to alert the public that a sign is a protected mark and discourage others from using it. Although not compulsory, you should use it in advertisements and labels because of the wider visibility that these receive. Using it will deter copycats from taking advantage of a trade mark.

A trade mark is an adjective

A trade mark is an adjective so it cannot be expressed as a noun or or verb. An example of this is as follows:

Correct: I had a coffee from Starbucks in the morning.

Incorrect: I had a Starbucks in the morning.

I’ll use another brand to illustrate the point. Ray-Ban would need to be used as follows:

Correct: Buy the latest Ray-Ban sunglasses on sale now!

Incorrect: Latest Ray-Bans are on sale now!

Incorrect use of a trade mark combined with its common use can make it genericised. In this case, a trade mark become so common that they lose their value as a trade mark. This was the case with trade marks such as Hoover, Aspirin and Kleenex. A trade mark being genericised is more common for very well known brands than lesser known ones.

Further guidelines for trade mark use

For greater impact, the trade mark can be distinguished using italic, bold or capitalised letters. It’s also common to monitor the use of your trade marks by third parties. If you license or franchise your brand, it is necessary to keep an eye on how others are using it. Finally, there should be a regular review of your trade marks to see if they need to be registered, licensed or renewed.

If you would like further information about use of your trade mark, please contact us on 020 7791 9050 or email us at trademark@freemanharris.co.uk.

The difference between the trade mark symbols ® and ™

Difference between trade mark symbols

Brand owners are often not familiar with the meaning of symbols in relation to their trade marks. The two most commonly-used trade mark symbols, are the letters “TM” in superscript – ™- and the letter R in a circle – “®” – although there are other symbols too, such as ℠, which is common for service marks in the United States, or the abbreviation RTM (which stands for “registered trade mark”).

What do these trade mark symbols mean?

The TM symbol – ™ – is usually used for unregistered marks simply to inform the public that the brand owner is asserting trade mark rights in that word, logo or slogan. With the possible exception of Germany, you do not need a trade mark registration to use this symbol in relation to your branding. Use of this symbol is not a guarantee that the mark will be protected by trade mark laws of the country in which the brand owner is trading. It is quite normal to use the TM symbol while the relevant trade mark application is being processed and this undoubtedly contributes to the general perception that ™ denotes an unregistered mark.

On the other hand, the ® symbol is used to indicate that a mark is registered and provides a formal legal notice of ownership of the brand, whether that be a name, logo or slogan. The use of this symbol warns competitors, for example, that the trade mark is registered, and so it frequently has a strong and effective deterrent effect. Any infringement will be considered a breach of trade mark laws.

So when should I be using these trade mark symbols?

The TM symbol can be used anytime in countries such as the UK or the US (although there are some legal doubts about the ability to use it in Germany for non-registered marks). As mentioned above, it simply gives notice to the public and competitors that you are claiming trade mark rights to the brand next to which it is placed. Even though it may not be registered, mere use of the ™ symbol can be enough to deter competitors from using the same or confusingly-similar mark for your products or services.

In contrast, the ® symbol should only be used in the UK or the United States where you have successfully registered your trade mark with the relevant trade mark office. In the UK, for example, it is a criminal offence to falsely represent that a mark is registered when that is not true, and a representation covers both words such as “registered” as well as the symbol “®” and even other words or symbols which imply that the mark is already registered.

In other countries, such as Mexico and the Philippines, use of “registered mark”/® symbol is compulsory to maintain the registration. Furthermore, failure to use the ® symbol in the United States could mean the loss of important remedies if you should sue for infringement. If in doubt, please contact us (or your trade mark expert) for advice and guidance.

Where should these trade mark symbols be placed?

The most common practice is to place symbols such as ™ and ® on the upper right corner of a trade mark in superscript. It is also quite acceptable to place it in the lower right-hand corner if, for example, it would not be aesthetically pleasing to place it on the top of the mark.

Here at the Trademark Hub, we have a wealth of experience in helping the full spectrum of brand owners – from sole traders and SMEs through to multinationals – to search, protect, and enforce their brands and designs both in the UK, in Europe, and around the world. We are always happy to answer your questions, including working with you to register your trade marks and designs in the UK and beyond. If you have any questions about the usage of these trade mark symbols or abbreviations, let us know and we will be happy to help you.

So, what happens to the EU trade mark if Brexit happens?

EU and UK flag, what happens to trade marks in case of Brexit

The upcoming European Union (EU) referendum is, as expected, dominating the news. The financial markets have been reacted badly to a strong possibility of a British exit, or Brexit, from the EU. There are a lot of questions that have been raised over various matters relating to this ‘Brexit’. What will happen to trade, travel and in our specific case trade marks if Britain decides to leave the EU.

As many others have stated, there is great uncertainty in regards to what will happen post Brexit. We are also not clear of the exact changes that will occur, but we can speculate like all others have or are doing so.

One thing is for certain, a vote for Brexit will have significant implications for trade marks. In this post, we’ll try to answer the questions which you might have albeit speculatively.

Would EU trade marks still apply to the UK?

In simple words, no.

However, post Brexit, there will a long period of negotiation in which the British government would negotiate all matters with the EU. Either party might provide new legislations to continue the protection of existing EU trade marks in the UK, but that all depends on the negotiations that will be undertaken. If there are no new legislations provided, then all companies trading in the UK would be required to file a national application. That is if they only had a EU trade mark.

It is understood that the provisions and regulations provided by the EU Intellectual Property Office (IPO) will no longer be in effect so any new EU trade mark applications will not cover UK.

Can UK trade mark attorneys represent clients before the EU IPO?

Again, that would be a no.

The Institute of Trade Mark Attorney (ITMA) has suggested that a large amount the EU trade mark and design registration work will be moved to mainland Europe from the UK. The following effects have been listed:

  • UK-based trade mark practitioners would be unlikely to file EU Trade Marks/EU designs because they would be unable to represent clients before the EU Intellectual Property Office, unless the UK was to join the European Economic Area.
  • Over time UK trade mark and design law would diverge from EU law

A change in the law and removal of EU trade mark courts from the UK would most likely be the end of EU IPO work for UK based trade mark law firms and attorneys.

Will there be any changes to the cost?

Apart from the increase in costs of filing a UK and an EU trade mark separately, the costs ought to remain the same for the UK and EU trade mark.

The same rules would apply to design registration in the EU.

As stated above, we are speculating the changes that might occur as a result of a Brexit. There is a great deal of uncertainty, which is making everyone jittery. ITMA has stated that this will have a negative effect on trade mark attorneys in the UK and the process would become more complex. However, there might be an increase in UK trade mark filings post a brexit, which could help ease the long term negative impact.