intellectual property

A world without Intellectual Property – a rather sad place

Is it possible, that something non-material is in fact of the most value? Well, it is far too often, intangibles, such as rights or entitlements, are either not considered, because they can’t be seen or touched or underestimated. What comes to mind is the insurance cover. One often only realises its value in times of emergency and crisis.

Intellectual Property (IP), is the property of the mind or proprietary knowledge. Basically, it is the productive new ideas created. Intellectual Property comprises inventions in the form of patents, badges of origin in the form of trade marks, the overall appearance of industrial products, covered by registered designs, plant breeders rights, circuit layouts on microchips, or simply trade secrets.

IP is a remarkable asset, as it protects from attacks of business competitors, enables one to actively preventing any third party from exploiting one’s idea commercially, and creates an ongoing revenue stream from license fees, payable in exchange for the consent to commercialise an idea.

It is suggested from time to time that ideas should not be monopolised and no one should be able to monopolise words, slogans, logos, inventions the like. But would this really lead to growth or at least sustainable progress for all to enjoy? Surely, it sounds like a great idea, if we all share ideas freely. But then again, humans are competitive by nature competition has always been the driver of innovation.

On the contrary socialist society ideas or even the idea of communism, based on deliberate equal sharing of wealth had not been far too successful in recent times.

But let’s put it to the test and think of a society, where Intellectual Property rights do not exist and where in fact every innovation created immediately forms public domain. Wouldn’t it be nice, if we can all just use other people’s ideas and use them for ourselves and our own good and that of our family? The answer is evident the moment one is putting oneself in the creator’s shoes. Without monopoly rights, able to be owned by a creator, there is little reward and thus incentive to the creator. In other words: Without trade marks, copyright, design rights, or patents, there is no monetary motivation to create new things. The desire to strive is killed, causing innovation to slow to pause.

Where no innovation is possible, because no one feels the desire to innovate for the lack of an incentive, it is hard to imagine, that operating systems of computers would continue to exist, pharmaceuticals, all based on years of research and development, that is to be funded, as the researchers and developers need to make a living, would disappear, because all investment needed to produce a vaccine or drug would be ultimately lost and could not be recuperated.

A world without science and technology

Apart from not having any effective medication to fight the world’s most dangerous diseases, such as the current COVID-19 disease, similarly, technological innovation in the most advanced fields would stagnate due to a lack of monetary incentive in a world that lacked the protections afforded by copyrights, patents and trade marks.

Where there is no research and development, there are no progress and no advances in science and technology, as the developers lose, when the market is flooded with cheap copies. Product quality would be gone immediately, as companies would from then on focus on mass production to somehow achieve a profit.

Art and literature would barely exist in this world

All of a sudden, any art and literature would disappear as soon as copyright would be non-existent. Without a way to monetise creative work or even art to create an income for themselves, many artists would turn their backs on building, drawing, painting, and composing and would rather be looking for a day job and bring bread to the table.

After all, the ability to make a living fully depends on the ability to create an income from one’s work. With no IP even existing, books, paintings, music, and any other form of art would also slowly vanish. And even though a few artists and authors would be all too enthusiastic and would continue to craft, build, create, compose, and text, publishers would all go bankrupt and with them disappearing, the income stream of all these remaining creative enthusiasts would be gone as well.

Business, in general, would come to a standstill

Copyrights, patents, and trade marks provide businesses, regardless of size, with tools to fight infringement by competing businesses. Without IP existing, the already ultra-competitive business world would become even more ruthless. Businesses would have to move incredibly fast to leverage the advantage gained by inventing or innovating something new. If you don’t capitalize on your edge fast enough, competition can and will simply copy and overtake you, by saving on investments in innovation.

When all commodities and natural resources are gone we would have to flee the planet but would not have created a spaceship that could take us to a new world.

So, although patents, copyrights, and other key aspects of IP law may seem abstract and even unnecessary to those who don’t fully understand their purpose, they inevitable elements of our society. The guarantee of certain monopolies through the protection of IP rights enables a healthy market competition that is the driver for creative, scientific, and business innovations while protecting those who innovate. It follows naturally that Intellectual Property must remain existent. This is well illustrated by the now famous quote by Mark Getty, the chairman of Getty Images: “Intellectual Property is the oil of the 21st century.”

Let’s make sure, we innovate enough to be able to find a new place to live when this Earth comes to an end.

If you would like to find out more about your company’s intangible assets or require a valuation of an existing Intellectual Property Portfolio, contact us:

PHONE: (02) 8277 4114

EMAIL: office@one-ip.com.au

WAR OF GOOGLE REVIEWS BETWEEN COMPETITORS AND HOW TO NOT BE A VICTIM!

• Written by Hajra Abdul Ghafoor

Legend has it that many eons ago, there lived a well-known monk, who was praised by everyone in town due to his truthfulness, honesty, hard work and kindness.

So, one day a fake monk came into town and within no time, he was introduced with the notion of fame as monks already had a good rep in town but with time people started realizing that he was not the real deal, so they switched back to their original monk for spiritual guidance. This infuriated him and so, he brewed an evil scheme against the innocent monk!

He hid his silver ring inside the real monk’s house and claimed that he stole the ring. Well, that created a divide between people as some would favour the real monk while others would be in doubt. And, so they asked for an evidence, both the monks agreed but what the real monk did not expect was, finding a silver ring in his house! He kept denying but nobody believed as the evidence suggested otherwise, and so, he was dismissed from his duties and the fake monk lived happily ever after!

Yep! That’s what happens for putting too much faith in humanity!

As you might have already guessed, I made that story up. But fam trust me, that hits close to home for many people, especially if you have an online forum for your company.

Yes, I am talking about fake reviews, the bad ones, never encountered the good ones though (of course, it would not hurt if they were good, pfft!).

As a pro in receiving fake reviews and still thriving, let me go straight to the steps you have to take to deal with such vain attempts from competitors.

1.      DO NOT PANIC!

In this time of cutthroat competition and most of the people relying on online reviews before purchasing your product or service, getting a bad review, either fake or not, can be a real blow to the productivity of the firm.

Before you start panicking or creating havoc by replying in haste letting it consume your potential, just a pro tip, BREATHE!

It’s just a comment, not the end of the world or your business in any way and there are many ways to tackle and solve this mini problem.

2.      RESPOND TO EVERY REVIEW:

A very good strategy that successful businesses are adopting is, responding to all reviews. This does not only give a positive, considerate image of the firm but also engages customers and gives them a reliability that you are approachable. You can also add some marketing of your services or your products and that attracts more customers!

3.      GOOGLE HELP:

Okay, if this works, congrats!

I have seen many cases where one of the top contributors of Google were able to get their point across and so the review was removed. How they did it?

1.      Flag the review.

2.      Try to compile all the “evidence” against the review.

3.      Request Google, call them if necessary.

Sometimes, you only get a one star review without any comment and that’s the hardest to be taken down because there is no way to prove. What to do in such cases? The next two steps can be very effective in such scenarios.

HOW TO FLAG THE REVIEW:

Suspected fake Google reviews can be reported to Google by anybody. Suspect reviews can be flagged to Google by choosing ‘Flag as inappropriate’ from the options next to the review. In Google Maps, this will appear when you click the three dots on the right-hand side of each review.

For Google searches, this will appear as a small flag icon next to the star rating.

From here, you will be taken to a page where you can report a policy violation. Here you will be asked to provide your email address, and to specify a violation type.

Once submitted, Google will review your complaint and will contact you if they require further information or have feedback to share. This does not happen often, though.

USEFUL TIP

Google is more likely to take action against a review that has been flagged more than once. If you are able to, you should request a number of colleagues to take the same action. There is no guarantee your complaint will be reviewed, but those with greater numbers will take priority.

HOW TO REPORT FAKE REVIEWS TO GOOGLE SMALL BUSINESS SUPPORT:

Reporting suspect reviews to Google Small Business support should be your next port of call if your initial flagging did not work. The response you get from flagging a review shouldn’t take more than a week. If, after this time, the review is still there, it’s time to contact Google My Business. You can do this by following these steps.

  1. Log into your Google My Business page here: https://www.google.com/business/
  2. Navigate to the Reviews section
  3. Click the home menu, and then select Support
  4. You can then select a preferred method of contact, either Phone or Email
  5. You will be asked to fill in a few pieces of information. Attach a screenshot example of the suspect review and offer any further information you feel may be helpful.
  6. Submit your complaint. You should hear back within 2 working days.

4.      HOW TO RESPOND:

The way you respond is the core to your customer service and consequently your business. Your response should be efficient, pertinent and relevant to the problem, precise and clear.

It should not be some gibberish for customers to do their thesis work on. Also, it should not be too long for other customers to lose interest before you make a point, it should be short and relevant.

If the comment is fake, you can directly say, “ Sorry [insert_name], I believe you left this review for a different company, we never worked together. Have a great day!”

Or, if you want to make it a bit more pleasant, you can respond, “Thank you for leaving a review. We take feedback very seriously; however, I’m afraid we can find no record any customers matching your name or details. We would greatly appreciate the opportunity to help you wherever we can – if you have had a bad experience with our service, please contact us on [insert customer service email]”.

For one star reviews, request a concrete reason, “Thank you for leaving a rating. We’re sorry to hear you had a bad experience; however, we cannot offer any assistance or resolution without details about what you did not like. If you wish, please contact us on [insert customer service email] to discuss your issue and we will try our best to help resolve it for you.”

You can also offer a 100 percent refund as it will not cost you anything as the comment is fake and 100% of 0 is 0.

A cool way would be adding a marketing line like, “By the way, if you want to check out our new service, you can join here (add the page link) and become a real customer….”

5.      ENDING UP AS THE MONK? BURY THE COMMENT:

The best defence is a good offense regarding negative reviews. If you consistently get “review farming” from your happy customers, the 2-3 negative reviews will not ding your rating as much if you “pillow” them with the positive reviews.

Consider bolstering your existing reviews. You can do this by directing website users to the Google reviews platform, whether as part of your website customer journey, or as part of your email marketing strategy.

Generating more positive reviews will increase your aggregated score, in addition to pushing negative reviews further down the list where fewer users are likely to see them.

To be honest, getting a five star seems too good to be true, so a rating between 4 and 5 is ideal. Have you had an experience with fake negative reviews on Google? If so, I’d love to hear about it and how you dealt with it, so please leave a comment.

Hope this article helped you decide your next steps. If you have any queries, we at ONE IP INTERNATIONAL are always there for your help. Contact our team for any kind of assistance. We would be glad to be of any service!

IS IPHONE 12 WORTH THE KIDNEY JOKES?

• Written by Hajra Abdul Ghafoor 

Everyone is excited because it’s the new iPhone time, but the real question is, is it worth the hype?

Well, it has been a long time since Apple has made this aggressive of a pitch, and I am going to support that claim by firstly inspecting the features and then comparing them with the previous versions!

So, the core question is, what’s new this year? Well, a lot!!

New design, MagSafe, OLED screen, processor, camera capabilities and of course 5G!

Okay, first things first:

COST COMPARISON: 

It costs a bit more this year, (hence the kidney puns!), it starts from $699 but according to the official site, it was $829 for the base 64-gig model and extra 50 bucks for the 128-gig model.

Discounts?

There is a wide range of discounts from US carriers from special instalment plans to $30 discounts right of the bat.

DESIGN: 

Size-wise, it is smaller than iPhone 11 and it has flat sides and a perfectly flat screen and not the rounded sides that previous versions of iPhone had since the iPhone 6! That actually gives it a modern look and despite those hard corners, it’s quite easy to use.

But if you want any smaller phone, you will have to wait for the iPhone 12 Mini and if you want a bigger phone, then spring for the iPhone 12 Pro Max!

(iPhone 12 Pro Max and iPhone 12 Mini will be available for pre-order on November 6 and the shipping will begin on November 13!)

Colours: There is addition of new colours as well! It comes in blue, white, black, red and light green. 

The rails on the side are aluminium with a matte finish and the back is still regular glass with a glossy finish.

The front is something Apple calls, “Ceramic Shield”, where they put a ceramic crystalline structure in the material to make it more drop resistant and according to them it is four times more drop resistant than iPhone 11!

As for scratch resistance, there is no change from before.

But if you are really looking for something to not like in the design, there might be two things to complain about:

1. There are a bunch of antenna lines and cut-outs on the rail to make it look a bit asymmetrical.

2. There is still a big old notch for the Face ID camera. (People with trypophobia might get where I am coming from!)

But again, neither one of those are a big deal to most people!

Face ID still works great as long as you are not wearing a mask, it would have been better with a fingerprint sensor though (just a minor suggestion!).

SCREEN:

A new thing in the iPhone 12 is the screen. Apple has switched to OLED, which most people think is better, black is blacker and Apple’s dedication to keeping colors accurate is of course profound as always. OLED is what allowed Apple to reduce the size of the bezels and make the phone smaller overall.

Another nice thing about the screen is more pixels. It is a proper 1080p panel now! In HDR, the regular 12 can still hit 1200 nits of peak brightness

MAGSAFE CHARGER:

Magnetic: The new MagSafe wireless is a $39 charging puck and it simply charges as magnet attached to the back of the phone. It means that you can use the phone while it is wirelessly charging, and the magnets are strong enough to hold the phone up.

Charging Power: A MagSafe charger for iPhone 12 can charge up to 15 watts instead of capping out at 7.5 watts like other wireless chargers.

Note: You are going to need a strong USB-C adaptor to charge it as it does not come with the box!

Speed: It is not faster than the cable charger, but overall wireless charging times are definitely faster than other wireless chargers.

Testing: Almost 40% charge in an hour of testing though overall battery life is quite good.

Wallet: There is also a shielded wallet that is supposed to keep your cards from demagnetizing, though it can only fit up to 2-3 cards.

5G:

Well, we have seen the hype associated with 5G everywhere but still in the developing countries and even in Australia and America, mobile networks are providing limited access to certain places and so there is not much of a difference or it can be even slower in specific areas, though we are hoping for a better future to 5G.

But to keep battery life good and checking network strength, iPhone 12 has a default mode called Smart Data Mode which drops to the 4G or respective LTE speed once detected, unless the phone decided you really need 5G for something that you are doing!

But if that irritates you for some reason, you can always turn it off and use 5G all the time if it is available to you.

Limitations: If you have both physical and an eSIM active on the phone at the same time, you cannot use 5G because of the limitations of the dual-sim, dual-standby in that spec, but you can turn one of them off and get 5G back.

Bottom Line: Just, don’t buy the phone solely because it has 5G!

CAMERA:

Software: Some new updates have been made to the camera this year and Apple has updated and improved its software for processing photos.

Aperture: The main camera has now a slightly faster aperture. It is 1.6 instead of 1.8 that lets more light in which helps with low light photos.

It is still the same wide-angle camera, the same ultra-wide camera and the single selfie camera.

The new software and the A14 bionic processor let the phone extend the night mode to every single camera lens and let it do portrait mode in low light and it also applies better semantic processing to things that phone can recognize like faces or the sky etc. So, compared to iPhone 11, it has less noise and sometimes better colour in photos.

Though Apple is trying to work on the quality of its ultra-wide camera, but it is a step down from the main camera.

Though, these are just some of the edge cases but mostly iPhone 12 camera quality won, and it is the major improvement that we think leads!

Video Quality: Apple is also making big claims about its video quality with HDR and saying that this is a Dolby Vision camera, and of course, it is also the newer version of Dolby Vision and it works great on the iPhone but it will seem weird on other Apple devices like the Apple TV.

 PROCESSOR: 

There is a new A14 bionic processor in iPhone 12 which is very fast and of course way better than android but also, the main impact it has this year, is on the photo improvements.

Overall, this iPhone is having several features, but when we single out each of them, then they come with their own limitations. So, this phone can act as a basis for further improvements but if you already have an iPhone, then It is not a must-have but just a minor upgrade!

Hope this article helped you decide your next steps. If you have any queries, we at ONE IP INTERNATIONAL are always there for your help. Contact our team for any kind of assistance. We would be glad to be of any service!

REFERENCES:

https://www.apple.com/au/

HOW EFFECTIVE IS COPYRIGHT LAW ON MEMES IN AUSTRALIA? A STRAIGHTFORWARD ANALOGY

  • Written by Hajra Abdul Ghafoor

 

All this confusion to share or not to share when popularity of social media platforms makes it much easier for people to upload, stream and distribute what they like and sharing is only a click away.

In such times, we cannot rely on the answer given by some lawyers, “Well, it depends”. Well, anybody can answer that vaguely!

So, let us just make this simple, not over complicate the matter and dive exactly into what is allowed and what is not.

 

SO, WHAT DOES AUSTRALIAN LAW SAY?

According to Australian Copyright Council:

BASIC PERMISSIONS:

Permission or No Permission?

  • Need permission to use copyright-protected material unless there is an exception.
  • No permission if you can rely on fair dealing exception.
  • No permission if copyright has expired.

 

So, does it end here? Of course not! Legal framework provides a protective zone for all issues with freedom but flexible confinement.

AMENDED WORK PERMISSIONS AND FAIR USE – YOUR STATUTORY RIGHT:

But what is fair use?

When you transform some work into something new, that can be deemed as fair use.

Why? Because it is giving a new meaning to that Drake or Willy Wonka photo.

So, what are the ways of transforming?

Some common ways of creativity in different informatics are:

Audio: vocal line of one song added to instrumental track of another song to create new music, such as remixes or mashups.

Video: different scenes from different movies cut together to make a new scene with a different meaning.

Text: A zombie story combined with a text of a famous novel.

Images: Adding your own text as a part of someone else’s photograph as a part of a “meme’.

 

Keep in mind: Copyright plays a role because you may need the copyright owner’s permission if you are incorporating any copyright protected material into your new creations.

 

But wait, what does Terms of Use at the end of meme apps like mematic mean when it says “Use it only for personal use”?

Well, in apps like mematic or websites, there is a takedown or copyright infringement policy too, so, even if somebody does not like the meme or the caption on your photo (the person might find it offending or perceive as hate speech), he/she can file a report on copyright infringement or may issue a takedown notice.

TOO LAZY TO ADD THE CAPTION OR TRANSFORM AN IMAGE?

Well, here is the easiest solution!

  • Where to get image template for fair use?

– Google Advanced Image Search for fair use images , here.

– Using sites like Pexels, Pixabay and Unsplash.

2) Where can I edit the image or add captions free?

– You can use editing softwares like GIMP, Photoscape X and Fotor for personal amendments and avoiding copyright infringement.

– If you want to add caption on the images, you can use Canva (free), Sticker Maker (free) and Font Candy (cheap).

In any case, if you are going through any issues, it is better to seek advice from a legal representative.

For more details on copyrights, personal branding and detailed consultation on Intellectual Property, contact our team at ONE IP INTERNATIONAL PTY LTD.

References:

https://www.copyright.org.au/ACC_Prod/ACC/Information_Sheets/Mashups__Memes__Remixes___Copyright.aspx

Testarossa, And How Ferrari Lost Its Most Famous Car Through Non-Use

Use Your Trade Mark/ There’s nothing more iconic than a red 1984 Testarossa Ferrari roaring on a winding Italian county road. However, a German court ruled last week that Ferrari no longer has any right to use the Testarossa brand due to non-use of the trade mark.

Testarossa, meaning “red head” in Italian, began production in 1984. The model was named after the car used by Ferrari to win the World Sportscar Championship in 1957.

Autec AG, a toy company, challenged Ferrari to prove it had still been using the Testarossa brand since the model ceased production in 1996. After a lengthy trial, it was determined that, aside from providing spare parts and repairs for old Testarossa models, there had been no cars, no merchandise or any products sold by Ferrari using the Testarossa name for over a decade and therefore non-use of the mark was determined.

Despite the historical significance of the car and its strong links to Ferrari, a spokesperson of the court stated:

“A brand needs to be used to protect it, which the company has not done here.”

Autec AG now has exclusive rights to use the Testarossa brand. They plan to use it for the sale of electric shavers and bicycles. They also have the right to licence use of the Testarossa name to other companies and seek compensation for any breaches of their exclusive rights to its use.

This decision is not restricted to Germany in which courts the legal battle was fought. It effects all member countries of the European Union and will likely affect the brand internationally. While it is unknown whether an Italian court may have had a different approach to a case concerning such an iconic Italian car brand, the only recourse for Ferrari now is to appeal the decision.

The loss of such a significant and long-standing trade mark demonstrates that it does not matter how old or how successful a company or brand is. It is not enough that a brand is well known or was used frequently at one time. With 135,000 new EU trade mark applications each year, the need to actively maintain existing trade marks has never been more important.

GLOBAL PROTECTION OF INTELLECTUAL PROPERTY It is all about the right IP Strategy!

As the leader in your industry, you need to ensure that you are unstoppable in any way. On the one hand, this requires certainty, that your approach to market your company or business is unique and no third party, having obtained monopoly rights in relation to a brand name, a logo, a product design or product functionality, is able to stop you from selling, either in your home country or in any other of your markets globally. This confidence can be obtained immediately by undertaking identity and similarity searches for existing intellectual property rights in all relevant countries. The search result also gives you a good indication about the International markets in your trade and reveals the players in the game. Now that you know the status, where no respective IP right is registered for a competitor, it means you are free to go ahead and a decision is to be made, whether to enter the competition or to remain on the sideline observing. Ideally, the decision to entering the respective markets in your International destinations was made long before the search had been carried out.

On the other hand, you would you like your customers to continue asking for your goods and services and spread the word about your excellent products, whereas you at the same time are in control of competitors’ attempts to copy your success and prevent them from doing so by exploiting your ideas and hard work. This is achieved by registering intellectual property rights that protect your goodwill in form of your brand or logo, namely a trade mark, or by registering intellectual property rights that product your unique product shape or appearance, such as registered designs or the way, your product solves a particular technical problem, so it can be protected by a patent. One has to bear in mind, that time is of the essence, once IP searches have been conducted, as the “first come first served” principle applies in intellectual property matters.

Now that it is clear what your markets are and what can be monopolised for you (name, logo, product design, invention) the question arises, how do you achieve the most solid protection in the majority of countries with the least effort, both financially and in relation to actions required in the quickest way possible. As always in life, there is no free lunch as much as a unified range of IP rights would be convenient, the reality is, that every country has its own intellectual property laws in place. However, there are various International Treaties for the respective IP rights, that make International protection more affordable and can contribute to an effect to streamline decisions and achieve effectiveness. Knowing the systems well and knowing how to use them within the right protection strategy is key. This is where expert advice is of most value. By not knowing the right filing strategy it will eventually get you there, but most likely with three to five times more financial efforts in double or triple the amount of time, which may cost the company a fortune, that could have been saved and invested in the company’s productivity. Doing it right from the beginning is important.

When your company operates in a global market, you need to consider intellectual property protection for each country the company operates in. Should the business be in its beginnings, you would want to consider, if there is a chance that your business may operate or expand overseas.

It all starts with answers to a few simple questions. Questions and the respective answers should be put down in writing. It is important that a coherent strategy developed, is adhered to all the way through.

Do we expand Internationally and if so how quickly?

By asking if the company would generate the best returns by establishing its product in its home market Australia first or if the global markets should be approached simultaneously the fundamentals of the IP strategy will be laid. How quickly your company expands can depend on various factors. One of them is clearly if the business has the resources to successfully commercialise outside Australia? If funds are an issue, the strategy of choice is to file an IP right in Australia. This gives the applicant six months to expand this IP right to any other country be filing an application, claiming priority, based on the Australian trade mark, design or patent application. This way you literally “jump the queue” and kill to birds with one stone. You save funds for the time being and have the opportunity to obtain access to funding that allows the company to expand and your Australian filing date, that is the date when IP protection commences, is preserved for all other countries that you are going to file into within the next six months. So, wherever you go in the next half a year, you are always ahead of any other competitor.

You can use the six months time frame wisely for establishing:

·       a reputation and financial support

·       manufacturing and distribution networks to supply to countries abroad

·       where to manufacture your products

·       marketing and promotion networks to successfully exploit your products abroad

What are our key markets?

By identifying the key markets for the company’s products and services, the most cost-effective filing strategy, that achieves registrations in the fastest way possible, can be determined. Two things are important to understand. Firstly, if an IP right is available for registration, do not hesitate to file immediately. It might be unavailable tomorrow or even in a few hours. You compete against six billion other potential applicants! Secondly, at least filing an application in Australia, would give you six months time to work out a global strategy. So a national filing is of the essence to cover your company.

National IP Filings or Filings into International Treaties, such as the Madrid System of World Intellectual Property Organisation (WIPO) 

You can benefit from International Treaties, such as the Madrid Union, which consists of the Madrid Agreement and the Madrid Protocol for trade marks when all or designated countries for an IP filing are members of this Treaty. This streamlines the registration process, saves processing time and make the registration process more cost-effective. It has currently 100 members, covering 116 countries.

Part of your filing strategies might be countries in the Middle East or South East Asia, that are not a member to this Treaty, which means, your company will have to select a combined filing strategy, where the majority of designated countries can be covered by the Madrid Union and its International Treaty and the remaining countries are to be lodged individually with the respective Intellectual Property Office in each of the remaining countries.

If you run a successfully established company, it can improve performance, if the performance of your IP portfolio and the disbursements accompanied by the registrations in the various countries are carefully examined.

There is no such a thing as ONE “world trade mark” or any other intellectual property right , that covers you globally with simply ONE application. However, our team from ONE IP INTERNATIONAL can make it feel like that for you. Rather than dealing with various law firms around the globe, we are your first and only address for all global intellectual property matters.

Expert advice saves you time and money and will give you peace of mind that your Intellectual Property (trade mark, registered design, copyright, trade secrets etc.) is well protected, globally. You let us know, what is to achieve. ONE IP International a global provider of Intellectual Property services that:

• protects any IP right in any country worldwide

• breaks down any IP matter, so you understand it within minutes

• gives you immediate and 24/7 access to all your IP assets

• provides all useful tools to properly plan, create and administrate your IP portfolio

• in any language

• with all relevant information, required to make informed global business decisions.

Speak to one of our IP experts in Australia to obtain your company’s global intellectual property strategy and accomplish global protection by local access.

IP PORTFOLIO – CHINA

China is an enormous market. It is currently the second largest economy in the world and grows at an annual rate of more than 6%. China is also Australia’s biggest importing and exporting partner, with an annual increase of 6.3% over the past 5 years.

Whilst expanding into the Chinese market may have been a remote thought for small and medium-sized Australian enterprises in the past, the advent of Internet commerce has lowered the barrier of entry significantly. The uptake of online shopping has been particularly robust in China. As of 2017, online retailing constitutes 17% of total retail sales, and this is set to grow to a quarter by 2020.[1] In 2017, online sales experienced a staggering growth of 32%.

Additionally, China has long been a destination for manufacturing jobs. Good infrastructure, affordable labour and relative stability have prompted many companies to move their manufacturing base to China.

Why Register Your Trade Mark in China?

Like all other countries, the courts in China would not enforce an overseas Trade Mark. Hence, for your Trade Mark to be protected in China, it must be registered there.

There are good reasons to apply for a Trade Mark in China as soon as you intend to use your Trade Mark there, however minor the initial uses may be. Unlike Australia and other common law countries, China has a first-to-file Trade Mark rule, as opposed to a first-to-use system. This means that in most cases, any person can become the owner of a Trade Mark, even if another person has already been using that Trade Mark.

Narrow protections are provided for certain unregistered Trade Marks. Firstly, prior rights could be established for unregistered Trade Marks that are well-known or has acquired “a certain influence”. Secondly, a registered Trade Mark would be invalidated if its registration was obtained by “fraudulent or other illegitimate means”. Finally, a pre-existing business relationship between the foreign Trade Mark holder and the applicant could also prevent the new Trade Mark from being registered.

These narrow grounds, however, has not provided foreign companies with much comfort. Britney Spears, for example, could not establish that her Trade Mark was well-known, and hence lost her case against a Chinese clothing company. Apple also found itself in the same situation when it tried to take legal actions against a Chinese company with the Trade Mark “iPhone”.

This Trade Mark regime has led to many Trade Mark squatters, which have troubled many foreign companies greatly. Apple, for example, was forced to pay a Chinese company US$60 million to use the name “iPad”. Likewise, Michael Jordan could not prevent a Chinese sports equipment manufacturer from using the name “Qiaodan”, which is the transliteration of Jordan’s name in Chinese, since the Chinese company has registered the Trade Mark first.

To prevent any risks of that happening, our advice is that you should register your Trade Mark in China as soon as you intend to use the Trade Mark there. Moreover, to turn these Trade Mark squatters on their heads, it may be wise to apply the Trade Mark in relation to more classes of goods and services than is otherwise needed at the initial stages. Nevertheless, if you do not start using your registered Trade Mark in China within the first three years, it risks being cancelled.

Doing Business with Original Equipment Manufacturers (OEMs) in China

The cost of labour, coupled with adequate infrastructure and relative political stability, has long attracted many foreign companies to outsource their manufacturing jobs to China. Many of these businesses choose to engage with local OEMs, which are able to manufacture goods at a fraction of the cost compared with developed countries.

Recent judgments from the highest court in China have cleared up the legal position on whether manufacturing goods in China solely for export could constitute infringement if a similar Trade Mark has been registered in China. The Court held that there would be no infringement, provided that the goods do not enter into the Chinese market, and that the foreign company commissioning the job holds a valid Trade Mark in the destination country of the products.

For businesses seeking to stop these OEMs from manufacturing counterfeit goods, this means that they can only enforce their rights in China if they have registered their Trade Mark in the countries where the goods are to be exported to. As an upshot, however, foreign businesses that find themselves locked out of the Chinese Trade Mark Office because of Trade Mark squatters may nonetheless welcome the fact that they can still engage with local OEMs to produce their goods for export.

In light of this, if your business is only using China as a manufacturing base, there may be no legal reasons to apply for a Trade Mark in China. Nevertheless, there are strong reasons to register your Trade Mark if you ever intend to enter into the enormous Chinese market. Your business’ presence in China would likely alert potential Trade Mark squatters, who may decide to pre-empt your rights and cause you a lot of trouble if you later decide to sell your products in China. As the experience of Muji shows, OEM activities in China are insufficient to elevate your Trade Mark to one that has “a certain influence”, meaning that third-parties are free to register your Trade Mark with the Chinese authorities.

Whilst in the past, there had been instances where foreign businesses had their Trade Marks cancelled for non-use on the basis that their manufactured goods were for export only, recent cases show that this is no longer the case. Even though it may seem irreconcilable with the legal position that there is no infringement in manufacturing goods solely for export, the courts in China have maintained a distinction, however arbitrary it may seem. In short, a Trade Mark holder conducting the same activity would be taken to have established sufficient use to resist the Trade Mark from being cancelled.

Given the law on Trade Marks in China, we strongly advise businesses who intend to contract with local OEMs to manufacture goods to apply for a Trade Mark in China. Whilst you may not have any plans to sell your goods in the Chinese market yet, it is much better to have the option left open for you. The alternative scenario may be that you would either be locked out of the Chinese market by Trade Mark squatters or have to pay an exorbitant amount to have your Trade Mark back. The good news is, as long as you continue to manufacture your goods through the local OEM, your Trade Mark would not be at risk of being cancelled for non-use.

How to Apply for a Trade Mark in China?

There are two avenues to apply for Trade Mark protection in China.

Firstly, you may file for protection in China through the World Intellectual Property Organisation (WIPO), if you already have a registered Trade Mark in any of the countries party to the organisation. WIPO covers 191 countries and the only notable exception is Taiwan (Republic of China).

This method is relatively straight-forward and allows for applications in English, French and Spanish. Registration, however, is expensive. The basic fee is 653 Swiss Francs, in addition to the individual fee for China, which is CHF 249.

Alternatively, you may apply directly to the Chinese Trade Mark Office. Compared with WIPO, the fee is substantially lower, at only RMB 300. However, individual applicants often face difficulties in filing the application in Chinese, as well as navigating through the Trade Mark laws of China.

Enforcing Your Trade Mark Rights in China

It is true that China does not have the best reputation when it comes to enforcing Trade Mark rights. Nevertheless, in recent years, China has made significant changes to improve the level of protection offered to Trade Mark holders.

The most significant step took place in 2014 when the Chinese government established three Intellectual Property Courts in Beijing, Shanghai and Guangzhou. Its rationale was to enhance IP protections as well as address concerns that intermediate courts tend to favour companies from the area.

At the same time, several issues that are endemic in Trade Mark protections in China have also been addressed in recent years. Historically, damages awarded in Trade Mark infringement cases tended to be very low by international standards. Prior to 2014, damages awarded in the majority of cases tended to be below $75,000. However, damages have steadily increased since with the introduction of a new legislation. The average amount of damages awarded for Trade Mark infringement cases is now RMB 1.7 million. In a high-profile case last year, New Balance was awarded the US $1.5 million in damages and legal costs.

This direction was also echoed in the opinion issued by the State Council earlier this year, which called for stronger protections for IP rights. It opined that damages awarded in IP infringement lawsuits should be guided by the primary principle of compensating the plaintiff and the auxiliary principle of punishing the infringer. Additionally, in cases of repeated, malicious or serious infringement, the infringer should be liable for the plaintiff’s cost in enforcing its rights.

Another common complaint is that, unlike other common law jurisdictions, China does not have a formal process of discovery. Instead, parties seeking to enforce their Trade Mark rights often had to resort to more informal measures, such as private investigators. In 2015, however, the Supreme People’s Court released an Interpretation, which provides that a party may request the Court to order the other party to provide documentary evidence that is under their control.

The aforementioned opinion by the State Council also touched on the need to alleviate this problem. It opined that the government should explore the possibility of establishing rules for discovery and exclusion of evidence obstruction. At the same time, in rather vague terms, the opinion also mentioned the possibility of shifting the burden of proof as well as giving the courts more power to investigate and collect evidence.

On the whole, Trade Mark protections in China are set to become much stronger in the future. Whilst protectionism may have contributed to weak Trade Mark protections in the past, the opinion by the State Council seems to acknowledge the importance of protecting such rights as the Chinese economy matures.

Talk to one of our IP experts in relation to Intellectual Property protection in China!

[1] Goldman Sachs, China E+Commerce, shopping re-Imagined (2017)

Opportunities in the United Kingdom

by Stephen Chow

Opportunities in the UK

Even though the relative importance of the United Kingdom to Australian businesses might have declined over the years, it nevertheless remains a favoured destination. A similar culture and legal system, as well as the lack of a language barrier make entry into the UK relatively straightforward for Australian businesses. The impending Brexit might also present Australian businesses with new opportunities

The UK is currently the 5th biggest trading partner with Australia, being Australia’s most important trading partner in Europe by far. Even with the uncertainty surrounding Brexit, the UK would likely remain an important gateway into the European market.

Whilst export to the UK is dominated by precious metals and coal, Australia also exports a substantial amount of agricultural products to the UK. In 2016, the UK was the number one destination for Australian wine by volume. Growth in premium wines is also robust. On the other hand, the UK is also an important consumer of high-quality Australian meat.[1]

Trade Mark Protection in the UK

Trade mark laws in the UK are substantially similar to those in Australia. The most significant difference is that the laws in the UK offer substantially more protection to trade marks with a reputation in the UK, in line with EU Law.

Trade mark laws in Australia are governed by the principle that trade marks predominantly serve as an indication of origin. As such, an infringement action can only be brought when the defendant has used a mark is substantially identical with or deceptively similar to a proprietor’s registered mark. The same is true for opposing of accepted new trade mark applications.

In the UK, however, the law recognises that, in addition to being an indication of origin, trade marks are also the result of substantial investment by trade mark owners, and serve an important advertising function. As such, reputable trade marks are protected from the use of similar marks, which even though do not cause confusion, would nevertheless take unfair advantage of a registered trade mark, tarnish its reputation, or erode its distinctive character.

For instance, Thomas Pink, a well-known shirt maker in the UK, brought a successful action against Victoria’s Secret when it launched a new line “PINK” in the UK. In addition to a likelihood of confusion, the court also found that Victoria’s Secret’s “sexy, mass market” image would adversely affect Thomas Pink’s luxurious reputation. Moreover, if Victoria’s Secret continues to increase its use of the word “PINK” in relation to its products, the word “PINK” would no longer designate the brand Thomas Pink exclusively, thus eroding its distinctive character.

In short, there is a possibility that your trade mark registration, despite being accepted by the Australian authority, may be rejected in the UK for similarity with a reputable mark.

How to Protect Your Trade Mark in the UK

Courts in the UK will not enforce an Australian trademark. There are, however, three ways to obtain trade mark protection in the UK.

Firstly, you may register your trade mark directly with the UK Intellectual Property Office. This is the most inexpensive option, with fees starting from £170.

If your intention is to eventually expand into the European market, you may choose to register a European Union trade mark (EUTM) instead. A EUTM will give you rights and protections across all 28 member states of the EU, including the United Kingdom. Fees are substantially higher, however, costing upwards of €850. The choice between registering with the UK office and the EU office would likely depend on how many European countries your business intends to operate in.

With the date of Brexit drawing closer, the UK and the EU has agreed to granting holders of EUTMs trade mark rights in the UK without re-examination.[2] As such, at this point in time, there does not seem to be any need to double file.

Finally, if you already have a registered trademark in another country, you may apply for trade mark protection in the UK through the World Intellectual Property Organisation (WIPO). The advantage of this is, in addition to the UK, you may also apply for protection in countries outside Europe in the same application. The basic fee is 653 Swiss Francs, in addition to the individual fees for the countries you designate. For the EU, this is CHF 897, whereas for UK only, it is CHF 227. Even with Brexit, the UK has agreed to ensure that trade marks that have been granted protections in the EU through WIPO would continue to enjoy protections in the UK after the UK leaves the EU.[3]

Keyword Advertising

Businesses are increasingly utilising keyword advertising on search engines. In recent years, European and British courts have started addressing the issues involved.

A good example is Interflora, which operates a flower delivery service. Marks & Spencer, which also offers this service, used Google AdWords such that when an Internet user searches for the term “Interflora”, the website of M&S would come up in the results.

In this case, the Court of Justice of the European Union (CJEU) held that trade mark rights would be infringed where the use of AdWords adversely affects any of the trade mark functions, that is, an indication of origin, investment, and advertising. In particular, where a reasonably well-informed and reasonably observant Internet user would not be able to ascertain without difficult whether the goods and services that came up in the search belonged to the trade mark holder or a third party, a case of infringement would be made out.

Parallel Importations

Once a trade mark owner has put the goods into the market, its trade mark rights are said to be “exhausted”. This means that any one can resell these products even though they are not the trade mark owner.

In other common law countries, exhaustion happens internationally. This means that, once the goods have been released into an Overseas market, a trader may resell these goods in Australia, even if the original manufacturer also holds a trade mark in Australia. This practice is otherwise known as “parallel importation”.

The reason behind parallel importations is that businesses often use price differentiations in different markets, depending on the local demand and supply, in order to maximise their profits. Third-party traders, on the other hand, try to exploit the price difference.

The doctrine of exhaustion, however, applies differently in the context of the EU. The CJEU has held that exhaustion only applies within the EU. This means that goods released in markets outside the EU cannot be resold in the EU without the permission of the trade mark holder.

For businesses operating in the UK as well as countries outside the EU, registering your trade mark would allow you to stop these parallel importations without compromising on your price differentiation.

Brexit

On 29th March 2017, the UK invoked Article 50. Unless the UK and the EU reach an agreement to delay the process, the UK would cease to be a member of the EU from 30th March 2019.

Even though there is much uncertainty surrounding the exit from the EU, it could also present Australian businesses with new opportunities. Historically, the UK was a major importer of Australian agricultural products. This only changed when the UK joined the then European Economic Community (EEC).

At present, the EU sets a common external tariff for all its Member States. As such, the UK is unable to negotiate trade deals with other countries. With Brexit, however, if the UK chooses not to join the European Economic Area (EEA) or European Union Customs Union (EUCU), the UK would be free to negotiate a more favourable deal with Australia, which happens to be a long-standing Commonwealth trading partner.

As for the law, negotiations between the EU and the UK seem to suggest that there would be a transition period until the end of 2020, where EU Laws would continue to apply. Following that, Brexit would have two main implications. Firstly, since EUTMs are only effective within the EU, Brexit would mean that EUTMs would cease to have any effect in the UK unless an arrangement is made where the UK would continue to be part of the EUTM system despite not being an EU member. Nevertheless, the UK and the EU have agreed that holders of EUTMs would have their trade marks registered in the UK without re-examination before Brexit happens. This would apply to all EUTMs registered before the end of the transition period. On a similar vein, trade marks filed with WIPO designating the EU would also continue to enjoy protection in the UK, provided that this is done before the transition period has expired.[4]

The second implication is that the CJEU would cease to bind the UK. This means that the UK is free to adopt rules that are more favourable to the UK. A notable example is the rule on parallel importations. The UK tried to circumvent the EU interpretation initially, but this attempt was struck down by the CJEU.

In light of the above, a trade mark registration in the United Kingdom is strongly recommended, as part of a holistic Intellectual Property filing strategy.

[1]https://www.aph.gov.au/Parliamentary_Business/Committees/Joint/Foreign_Affairs_Defence_and_Trade/tradewithUK/Interim_Report/section?id=committees%2Freportjnt%2F024101%2F25066

[2] https://ec.europa.eu/commission/sites/beta-political/files/draft_agreement_coloured.pdf

[3] Ibid.

[4] Ibid.

YOUR BRAND IN AMERICA – From Aussie to USA

Opportunities in the US

The US is the largest economy in the world. At present, the US is Australia’s third largest trading partner, with an annual growth rate of 3.9% over the past 5 years.

For Australian businesses, the size of the US market, the use of English, a mature business environment, as well as the Australia-United States Free Trade Agreement (AUSFTA) all make the US a favourable market to enter into.

The Silicon Valley, in particular, provides enormous opportunities for start-ups in the innovation sector. For this reason, the Australian Trade and Investment Commission (‘Austrade’) has set up a landing pad in San Francisco, providing businesses with a ninety-day residency as well as after-program support.[1]

Why Register Your Trade Mark in the United States?

Compared with other countries, the US offers substantially more protection to unregistered trademarks. “Common law” rights are attainable based solely on use of the mark in commerce, without any form of registration. However, these rights exist only within the specified area of registration and use. On the other hand, registration provides significantly more protection than common law rights alone.

There are two tiers of trade mark registrations in the US: State and Federal. Put it simply, State registration provides rights within the borders of that State. Registration with the United States Patent and Trade Mark Office (USPTO), however, gives you the exclusive right to use the mark nationwide in conjunction with the registered goods or services.

Most important of all, registration of your mark generates public notice of your ownership. Your competitors will not be able to use your mark or anything remotely similar to it. The public nature of the notice means competitors cannot claim ignorance of your registered trade mark and the rights and protections associate with it.

Registration at the federal level also gives you the right to bring actions against infringing parties in the federal courts and/or defend your rights of use if another party claims you have infringed their mark. Furthermore, if you are looking to register your mark elsewhere in the world, registration in numerous jurisdictions is extremely helpful when claiming rights elsewhere.

Finally, if your trade mark relates to the provision of goods, registration affords you the right to record USPTO’s registration with the U.S. Customs and Border Protection, thus preventing the importation of any foreign goods that could infringe upon your Federal registration rights.

Given the wide protections given to trade marks registered at the federal level, our advice is that you should apply for one as soon as you intend to use your trade mark in the US. This will ensure your trade mark is protected nationwide and the chance of registration being opposed on the basis of first use will be significantly limited.

First-to-Use Principle

It is important to understand that trade mark rights in the US operate on a ‘first-to-use’ not ‘first-to-file’ basis. This means that it is not registration but actual use of a trade mark in commerce that generates rights and priority over others. As such, an application for a trade mark that resembles an unregistered trademark which had been used prior in time would be refused if it causes confusion, mistake, or deception.

Furthermore, unlike other countries, trade mark registration in the US depends on use; either existing use in commerce, or a bona fide (‘good faith’) intention to use the mark in commerce. Hence, it is not possible to pre-empt trade mark rights in the US.

Dilution by Blurring/ Tarnishment

In addition to confusion, some jurisdictions also confer reputable marks protection against dilution. This means that reputable marks are protecting from use of marks which would erode the distinctiveness or tarnish their reputation.

The law in Australia does not recognise dilution. The EU, on the other hand, recognises three types of dilution: blurring, tarnishment, and unfair advantage. In the US, there are two forms of dilution under Federal Law for “famous marks”: blurring and tarnishment. Some trade marks that have been held to be famous includes Starbucks, Nike and Audi.

As such, prospective applicants need to be aware that, even though your trade mark was accepted by the Australian authority, it may nevertheless be rejected in the US for similarity with a reputable mark.

How to Apply for a Trade Mark in the United States?

You can register your trade mark with the USPTO directly though their website: https://www.uspto.gov/trademarks-application-process/filing-online. The process is relatively straight-forward. There are THREE application forms to choose from ranging from $225-$400. The only difference in the applications is the amount of information that is required in addition to the online form. Simply put, the more you pay, the less you have to provide. The website is extremely user-friendly, offering ‘how to’ videos which makes the decision-making process simple and effective.

The application itself consists of an online form requiring information about you and your mark. The more evidence of use or prior registration in other jurisdictions you can provide the better.

You will be required to list the goods and/or services your trade mark refers to from the standard list of 45 Classes. Trade mark examiners in the United States require descriptions to be extremely specific unlike other countries. If an application does not provide sufficient description of the goods and services of which you are seeking to protect it is likely your application will be refused.

When filing a trade mark in with the USPTO you may represent yourself or chose to hire a trade mark attorney to conduct the legal proceeding for you. Choosing to file the mark yourself will not negatively impact your chances of successful registration.

Trade mark applications for the US can also be made through the World Intellectual Property Organization (WIPO) if the mark has already been registered in another country. This avenue allows you to seek registration for the mark in additional countries in the same application. This process is comparatively expensive to the single federal registration for the US, costing a basic fee of 653 Swiss Francs (US $655), plus the individual fees for each country designated on the application. For the US, this is CHF 388.

Our advice is that the WIPO option should only be used if you are looking to register your trade mark in many countries. For protection within the US only, it is undoubtedly more cost effective and time efficient to apply through the USPTO.

How to Maintain Registration of Your Mark

Once your mark has been registered through USPTO, your trade mark would be valid for 10 years. Trade mark holders are nevertheless required to file specific registration maintenance documents and pay regular fees between the 5th and 6th year from registration in order to keep the registration active. It is very important that these deadlines are met to ensure your registration does not expire or get cancelled. In the event that deadlines are not met, you can only regain trade mark protection by filing another complete application.

Before the end of the first 6-year period of your registration, you are required to file a “Declaration of Use” or “Excusable Non-Use”. Depending on the circumstances, you would either have to declare that your mark is being used in commerce, or provide reasons as to the special circumstances that excuse the mark from not being in use and that there is no intention to abandon your mark.

Renewal of your mark is required before the end of every 10-year period from the date of registration. Again, a “Declaration of Use” or “Excusable Non-Use” must be provided along with the Application for Renewal.

Statutory Filing Fee US$275.00 per class.

The US is a dynamic country offering extensive opportunities for businesses to develop and expand. It is imperative that your trademarks are secure in the US market as soon as you consider operating within it. Registering and maintaining your intellectual property is key to nationwide success.

DO IT YOURSELF v. EXPERT WORK

Should you need strategic advice or require assistance with drafting your list of goods and service, so its wording is accepted by the USPTO or require a similarity search before you submit an application to avoid refusal of your application, please visit our website

www.one-ip.com.au

or send us an email to

office@one-ip.com.au.

ONE IP INTERNATIONAL can help with trade mark applications in any country for an affordable fixed fee.

[1] Australian Government, Land in the Bay: The Australian Entrepreneur’s Guide to the San Francisco Bay Area

EUROPEAN UNION – A 12-STAR TRADING PARTNER FOR AUSSIES

Opportunities in the European Union

With 28 member States, including the UK, the European single market represents one of the largest consumer markets in the world. In terms of GDP, it is second only to the United States. At the same time, the EU is also Australia’s second largest trading partner after China, with an annual increase of 2.7% over the past five years. At present, Australia exports a considerable amount of vegetable oils and alcoholic beverages to the EU.

Free Trade Agreement (FTA) with Australia

An exciting prospect for Australian business is the ongoing negotiations for an FTA between Australia and the EU. This would mean the reduction in trade barriers, such as tariffs and quotas, between Australia and the EU.

Four Levels of Trade Mark Registrations

There are four ways to obtain trade mark protections within the EU: national, regional, European Union Trade Mark (EUTM), or through the World Intellectual Property Organisation (WIPO).

The first option is to register your trade mark at the national level. This would only grant you protection within that country. Nevertheless, it is the most inexpensive option. For instance, the application fee for trade mark registration in Germany costs as little as €290.

Secondly, Belgium, the Netherlands and Luxembourg have an integrated trade mark system. Registrations are administered centrally by the Benelux Office for Intellectual Property (BOIP). Once your trade mark has been registered, it would enjoy protection within these three countries. The application fee is relatively inexpensive, starting from €248.

Thirdly, you may apply for an EUTM instead, which grants you rights and protections across all 28 Member States of the EU. Fees are substantially higher, however, costing upwards of €850. The choice between registering your trade mark at the national level and at the EU level would likely depend on how many European countries your business intends to operate in.

Finally, if you already have a registered trade mark in another country, you may apply for trade mark protections in any of the Member States, or across the EU through WIPO. The advantage of this option is that, you may also apply for protection in countries outside Europe in the same application. The basic fee is CHF 653, in addition to the individual fees for the countries you designate. For the EU, this is CHF 897.

Trade mark holders and prospective ones would be glad to know that, despite Brexit, the UK has agreed to grant holders of EUTMs trade mark rights in the UK without re-examination before the end of the transition period, which is 31st December 2020. Likewise, trade marks filed with WIPO designating the EU would also continue to enjoy protection in the UK, provided that this is done before the transition period has expired. As such, at this point in time, there does not seem to be any need to double file.

Why Register?

The EU only confers very limited rights on unregistered trade marks. To prevent a similar trade mark from being registered, two requirements need to be met. Firstly, the unregistered trade mark needs to be “used in the course of trade of more than mere local significance”.

Secondly, the new trade mark can only be refused registration to the extent that it is prevented by the national law of Member States. In the case of the UK, for example, registration would only be refused if it would constitute passing off. In turn, to establish passing off, the user of the unregistered trade mark must have a goodwill. Protections for unregistered trade marks are even weaker amongst civil law countries, which constitutes the vast majority of jurisdictions within the EU, since they tend to adopt a first-to-file system.

At the same time, your unregistered trade mark may conflict with a registered trade mark, thus constituting infringement. The three defences available are very narrow. Firstly, you may rely on the fact that the trade mark consists of your (not your business’) name or address. Secondly, it may be that the mark is not distinctive or concern the characteristics of the goods or services. Thirdly, you may argue that your use of a registered trade mark is for the purpose of indicating that you are providing the accessories or spare parts for that product.

However, all three defences are subject to the condition that your use of the trade mark is in accordance with honest practice. This means that the use cannot give the impression that there is a commercial connection between your business and the trade mark owner. At the same time, your use cannot tarnish, dilute or take unfair advantage of a reputable trade mark.

Given the very limited rights afforded to unregistered trade marks, it is advisable to register your trade mark as soon as you intend to use the trade mark in Europe.

Reputable Trade Marks in the EU

Trade mark protections under EU Law differ from those in Australia in one major respect. In relation to trade marks with a reputation in the EU, the law offers substantially more protection.

Trade mark laws in Australia are governed by the principle that trade marks predominantly serve as an indication of origin. As such, an infringement action can only be brought when the defendant has used a mark is substantially identical with or deceptively similar to the plaintiff’s registered mark. The same goes for opposing applications for new trade marks.

In the EU, however, the law recognises that, in addition to being an indication of origin, trade marks are also the result of substantial investment by trade mark owners, and serve an important advertising function. As such, reputable trade marks are protected from the use of similar marks, which even though do not cause confusion, would nevertheless take unfair advantage of a registered trade mark, tarnish its reputation, or erode its distinctive character.

For instance, L’Oréal was able to bring a successful action against a company that produced an imitation of their perfume. The defendant, in this case, used packaging and bottles similar to the ones used by L’Oréal. Moreover, the defendant provided a comparison list to the retailers, showing expensive perfumes in one column, and giving their corresponding imitations in the other one. Even though there was no confusion, the Court of Justice of the European Union (CJEU) found that there was infringement, since the defendant took an unfair advantage of L’Oréal’s reputation.

Keyword Advertising

Businesses are increasingly utilising keyword advertising on search engines. In recent years, European and British courts have started addressing the issues involved.

A good example is Interflora, which operates a flower delivery service. Marks & Spencer, which also offers this service, used Google AdWords such that when an Internet user searches for the term “Interflora”, the website of M&S would come up in the results.

In this case, the CJEU held that trade mark rights would be infringed where the use of AdWords adversely affects any of the trade mark functions, that is, indication of origin, investment, and advertising. In particular, where a reasonably well-informed and reasonably observant Internet user would not be able to ascertain without difficult whether the goods and services that came up in the search belonged to the trade mark holder or a third party, a case of infringement would be made out.

Parallel Importations

Once a trade mark owner has put the goods into the market, its trade mark rights are said to be “exhausted”. This means that any one can resell these products even though they are not the trade mark owner.

In Australia, exhaustion happens internationally. This means that, once the goods have been released into an overseas market, a trader may resell these goods in Australia, even if the original manufacturer also holds a trade mark in Australia. This practice is otherwise known as “parallel importation”.

The reason behind parallel importations is that businesses often use price differentiations in different markets, depending on the local demand and supply, in order to maximise their profits. Third-party traders, on the other hand, try to exploit the price difference.

The doctrine of exhaustion, however, applies differently in the context of the EU. The CJEU has held that exhaustion only applies within the EU. This means that goods released in markets outside the EU cannot be resold in the EU without the permission of the trade mark holder.

For businesses operating in the EU as well as countries outside the EU, registering your trade mark would allow you to stop these parallel importations without compromising on your price differentiations.

DO IT YOURSELF v. EXPERT WORK

Should you need strategic advice or require assistance with drafting your list of goods and service, so its wording is accepted by EUIPO or require a similarity search before you submit an application to avoid refusal of your application, please visit our website

www.one-ip.com.au

or send us an email to

office@one-ip.com.au.

ONE IP INTERNATIONAL can help with trade mark applications in any country for an affordable fixed fee.