trade marks

IP Insurance – A New Safety Net In Australia

ONE-IP INTERNATIONAL – John Aclis and Stephen Chow

If everything goes right, registering a trade mark can be a cheap and straight-forward process. On other occasions, however, registering a trade mark may lead to a series of litigation, which would see your expenses balloon exponentially. Even when a trade mark has been registered, third parties may still commence proceedings to revoke or remove that trade mark. The good news is, businesses now have the option of insuring themselves against such risks after Australia’s first trade mark defence insurance became available earlier this year.

Once accepted, the particulars of a trade mark application are published in the online Trade Marks Journal by IP Australia. From this point onward, third parties have two months to file a Notice of Opposition on the basis that the trade mark does not comply with the relevant provisions.

Oppositions may allege that the trade mark is descriptive, not distinctive, or is likely to deceive or cause confusion. Unfortunately, your trade mark can be original, unique and highly distinctive, but other traders always have this right to oppose your mark’s registration. The ensuing litigation may end up unexpectedly costing registrants many times the initial registration fee in legal costs.

Even when a trade mark has been registered, a third party may still bring an action against the trade mark owner. They may allege that the trade mark should be removed from the register for non-use. Alternatively, they may argue that the trade mark should be revoked since it should not have been registered in the first place.

Earlier this year, however, Australia’s first trade mark defence insurance was launched. Called Trade Mark Protect, this new product from BMS Risk Solutions offers two insurance policies. The first one covers oppositions by third parties up until the point of registration, charging upwards of $215. The second policy insures trade mark owners against proceedings for revocation and removal for non-use, starting from $215 per annum.

For small business owners, trade mark defence insurance can guard them against the risk of incurring thousands of dollars in legal fees if a third party chooses to oppose their trade mark applications or bring an action against their registered trade marks. It is hoped that when more insurance companies enter into this market, the policies on offer would become more competitive.

Ask us about your options to make the registration and the use of your trade mark a risk free experience for you!

ONE IP Cheat Sheet: What is a Trade Mark?

IP At A Glance / By Olaf Kretzschmar

The term ‘trade mark’ is often thrown around in casual conversation and is a part of the business vernacular, however, not everyone who uses it is aware of its true and real meaning. A trade mark is not just a colloquial term – in fact, it’s very important business owners and creatives understand what a Trade Mark truly is, so they can arm themselves with complete protection across their IP and business activities.

So What IS a Trade Mark?

A trade mark is defined as a brand name or service mark that includes any word, name, symbol, device or particular combination that is intended to be used to identify and distinguish the goods/services of one seller or provider from those of another. Simply put, the Australian Government’s IP Australia defines a trade mark as a ‘way of identifying a unique product or service.’

What is the Difference Between a Trade Mark and a Logo?

One of the common misconceptions people have is that a trade mark and a logo are the same things, but in reality, trade marks can be much broader. A trade mark is NOT is a business name, company name or domain name. Trade marks are defined by their uniqueness in product or service, not in the umbrella organisation or business that provides these trade marks for use or for sale.

Trade marks can take the form of:

Letters
Numbers
Words
Phrases
Shapes
Logos
Pictures
Sounds
Smells
Movements
…and more.

By registering a trade mark, you reserve the exclusive right to use, license and sell that mark. This is an important tool to understand particularly in looking at maximising your business’s growth over time – the value of your trade mark can increase in correlation to the success of your business, and it’s crucial that you’ve got this protected from the beginning to prevent from copying or stealing by others later on.

What is the Difference Between a Trade Mark and a Design?

Trade marks are also different when it comes to designs (find out more in our Design Cheat Sheet). One of the key differences between trade marks and designs is that a design must be new or unique in order to be registered, whilst a trade mark does not. Designs refer more specifically to elements such as shape, configuration, pattern or ornamentation of products, compared to trade marks which can be identifiers of one particular business, service or product over another.

Is a registered trademark mine forever?

Once you’ve identified your trade mark and had it registered, you must actively use your trade mark in order to keep it from being removed on the grounds of non-use. If this law was not in place, too many traders could register multiple trade marks just to keep competitors from using them, rather than using trade mark registration in the way it was intended – to define and separate their business, service or product out from the general market and from the sea of competitors.

Do you have a trade mark that needs registering? Talk to our team at ONE IP INTERNATIONAL about how we can service your complete IP needs.

Is Sudden Death Of Your Trade Mark Possible?…. Absolutely!

IP At A Glance / By Olaf Kretzschmar

We’d like to think that the world plays fair, and that hard work does not go unrewarded. However, the unfair reality of the intellectual property world reflects the opposite: sometimes, a brand who’s successfully established and used a trade mark for years can find their IP threatened by a competitor. There’s a certain level of irony in the fact that a trade mark could stand to lose its protection through its own success, known in legal terms as a phenomenon called ‘Genericide’. Genericide is a form of abandonment: ‘when a mark becomes the generic name for the goods or services on or in connection with which it is used.’

If you’ve read our post on ‘What is a Trade Mark?’, you’ll know that a key requirement for the successful registration of a Trade Mark is that the mark is distinctive for the goods and services that it will be protecting. One of the areas within this ruling that can cause confusion is to do with the term ‘badge of origin’, when a trade mark can serve as an identifier of an exclusive source of a particular type of product or service. This ‘badge of origin’ can become an issue if the trade mark becomes such a common part of public vernacular over time that in fact, instead of being a distinct identifier of a particular product against its competitors, the public just use the term as an adjective – think ‘Blu-tack’ being used to refer to all forms of similar adhesive, rather than solely the product sold by Blu-tack themselves. If this happens on a great enough scale, judges can rule that terms have become too ingrained in common speech to remain trade marked, causing Genericide.

Velcro is one such company that has faced Genericide, using humour as a weapon in a video titled ‘Don’t Say Velcro’ (released in 2017) to gently enforce to the public that in fact, Velcro is their brand, not a generic term for that ‘sticky hairy stuff’ everybody knows as Velcro. Even within their humorous presentation, it was clear that Velcro’s lawyers are running into very real issues due to the risk of the Velcro trademark facing Genericide. Their website’s about page now paints their message loud and clear: ‘Never a Noun. Never a Verb. Always on Brand.’ Although most assume that it’s too late to take an educational approach to removing the term from the general public’s vernacular, unless it’s used correctly to refer to the brand, Velcro’s case proves the importance of educating the public – and other competitors – around the importance of trademark laws and the role they play in facilitating fair and competitive business practices.

If you believe your brand may face Genericide, here are some proactive strategies you can employ…

Protect your trade mark against other competitors that are using your trade mark to advertise similar products
Maintain your IP – watch out for misuse or for the filing of trade marks too similar to your own
Always use the trademark in its proper form and with the appropriate trade mark symbol
Don’t turn your trademark into a verb, noun, or possessive or plural form – keep it separate for its use to describe the brand, not the product
Use the trademark across a line of products, rather than a single product, so it remains brand-oriented

Understanding the nuances of IP ownership and management can be confusing, but the risk for not doing so is too great to ignore. Talk to ONE IP INTERNATIONAL today so we can do so for you!

No Brexit talk between IP offices, Scooby Doo infringement and Syria establishes trademark court

NEWS / By Olaf Kretzschmar

Market Radar:

UKIPO official says no Brexit talks yet with EUIPO – Addressing this week’s INTA Design Conference in London, the UK IP Office’s divisional director of trademarks, tribunals and designs, Steve Rowan, confirmed that there have yet to be any formal discussions between his office and its EU counterpart. This was because several crucial negotiating points, such as trade policy and Northern Ireland’s status, needed to be decided before a host of other issues – including IP – could be officially negotiated. On top of that, he said IP was difficult to discuss as a discrete area because it overlapped with so many other policy areas. This means that until IP negotiations in Brussels begin, talks between IP offices will not commence. Having said that, Rowan stressed that cooperation with the EUIPO is ongoing, and stated that he expected collaboration with European partners to continue regardless of the outcome of Brexit negotiations – just as UKIPO would continue to work with offices around the world. His office’s popular IP Attaché initiative, inspired by French colleagues, was an example of an idea borrowed from a foreign IP administration, he added. (AH)

UKIPO seeks input on trademark directive implementation – Also in the UK, a public consultation on proposed changes to UK law arising from the EU trademark directive of 2015 has been launched by the UKIPO. The changes are due to be implemented by 14 January 2019, and interested parties are invited to share their views on how the directive should be put into practice and what the costs and benefits could be. After the consultation closes on 16 April, UKIPO will propose amendments to its draft Trade Mark Regulations 2018, and an updated document will be put to parliament. (AH)

Driving the infringement toll higher – The EUIPO, through the European Observatory on Infringements of Intellectual Property Rights, has released the latest in its long-running infringement study series, this time revealing the economic cost of IP infringement in the tyres and batteries sectors. In terms of headline figures, it states that €2.4 billion is lost each year through counterfeiting in the sectors – with an equivalent of 7.5 % of all sales in tyres for cars, trucks and two-wheeled vehicles lost annually due to counterfeiting across the EU. Drilling down, the presence of counterfeit batteries costs legitimate industry $180 million each year, equivalent to 1.8 % of the sector’s sales. All told, the report estimates that total lost sales across the sectors translates to the loss of approximately 8,400 jobs across the sector. The full study can be found here. (TL)

IP advisor and campaigner highlights design rights difficulties – The CEO of Anti Copying in Design (ACID) and vice chair of the Alliance for Intellectual Property, Dids MacDonald, yesterday drew attention to the many IP challenges facing UK designers. Addressing INTA’s Design Conference, she pointed out that the vast majority of innovative design companies have fewer than 10 employees; many struggle with the costs of prosecution and enforcement, and depend on unregistered rights for protection, with only 8,000 design registrations made in the UK in 2017 (although, following recent fee reductions, over 1,000 design applications were filed last week). The controversial outcome to the Trunki case, had, she argued, undermined confidence in the UK design rights system. Given the devastating effects of copying on designers, MacDonald urged companies to take a more proactive approach to IP rights and welcomed the role of social media in helping to name and shame flagrant infringers. She also drew attention to the ACID Copyright and Design databank which stores evidence of unregistered design innovations. (AH)

Brand protection professional certification goes live – The Center for Anti-Counterfeiting and Product Protection (A-CAPP) has unveiled its Brand Protection Professional Certificate, an online self-guided training program designed to “teach the skills and knowledge professionals need to be efficient, proactive, and strategic in brand protection”. The certificate comprises 17 courses, and the organisation says it will provide practitioners with the “core concepts and competencies needed to become a brand protection professional better prepared to face the legal, business, strategic, and security challenges of your industry”. It’s certainly one to consider when looking for educational opportunities in the future. (TL)

Legal Radar:

Syria establishes trademark court – This week the Syrian Security Council established the Fifth Civil Court of First Instance, which will primarily handle trademark-related matters. On its most recent bulleting, NJQ & Associates reports: “This court will be used to hold hearings related to appeals against final refusal decisions by the registrar, litigation proceedings with respect to infringement cases and oppositions by third parties, and cancellation proceedings. This step is meant to accelerate the decision making process for the above mentioned legal cases.” (TL)

IP case data released in Saudi Arabia – According to Al-Watan, there has been a total of 173 IP-related cases in Saudi Arabia over the past two years. Regarding the punishment for IP theft, lawyer Omar Al-Khouli explained: “The penalties for such actions depend on the harm done. There is no charter for protecting intellectual property under Saudi law. We have dispersed laws in different branches in our judicial system which is a big negative in our legal system.” Expanding on this, lawyer Abdullah Al-Ghamdi said: “The penalty for stealing intellectual property can be a fine up to SR250,000 (approximately $67,000), six months of imprisonment and the shutdown of the establishment in question. The Ministry of Commerce and Investment is very strict about protecting commercial trademarks.” (TA)

Media Watch:

Zoinks: Scooby Doo reacts to infringement – TheJournal.ie has spoken to the owners of start-up company ScoobyBox, which was hit with a cease-and-desist demand from Warner Bros over the similarity of its name to popular cartoon character Scooby Doo. While the headline of the piece states that the entertainment giant came down “like a ton of bricks” on the Dublin-based company (who operate a subscription service offering toys and treats for dogs), the text of the cease-and-desist letter cited by the media outlet does not appear to be over-heavy and one of the business owners acknowledged that “we didn’t mean to infringe, but we did”. The company has now rebranded as BusterBox and the business is looking forward positively, even eying international expansion. Two things make the story worth noting. The first is that, while the headline suggests that this is a ‘trademark bully’ story, the actual reporting is fairer than it first appears. And importantly, the reader comments are similarly understanding of Warner Bros’ concerns – one noting that “a couple of letters hardly counts as coming down like a ton of bricks” and others arguing that the conflict was one that advisers should have seen coming. Hopefully it is an indication that the oft-relied upon ‘trademark bullying’ narrative is no longer the default angle when reporting on legal disputes. (TL)

Harris lauds trademark protection in China – Writing on the China Law Blog, academic Dan Harris wrote about the advantages of trademark protection over, in some cases, patent protection. “I cannot tell you how many times I’ve had companies swoon over the idea of spending big money to secure a patent and pooh-pooh my suggestion to spend small money to secure a trademark,” he writes. “Honestly, most of these companies don’t really get it.” He went on to list the “simpler and much cheaper” reasons he advises companies to seek trademark protection, concluding: “To grossly generalize, patent protection in China courts tends not to be as strong as in either the United States or Europe. Whereas China trademark protection tends to be surprisingly strong.” It’s an interesting piece from someone clearly frustrated that trademarks are often overlooked ahead of patent protection, both in China and beyond. (TJL)

Warning over counterfeit security certificates on the darknet – Researchers at security threat intelligence firm Recorded Future are warning companies about the sale of counterfeit digital security certificates by criminal groups on the darknet. In research released last week, the company’s director of advanced collection, Andrei Barysevich, said the finding is an attack on one of the fundamentals of internet security. “It’s been generally accepted that security certificates circulating in the criminal underground were stolen from legitimate owners prior being used in nefarious campaigns. However, our most recent analysis indicates this is not the case. We have confirmed – with a high degree of certainty – that counterfeit certificates are created for specific buyers, per request only, and registered using stolen corporate identities. While we don’t anticipate the widespread use of counterfeit credentials, we do believe that sophisticated actors with specific targets will continue to rely on fake code signing and SSL certificates as a part of their operations,” he told tech site SiliconAngle, which further warns that legitimate brands could be targeted by illicit activities by those buying such fake certificates. For rights holders, it’s one to be aware of when tracking online threats. (TJL)

And finally…

Mark your diaries for World Intellectual Property Day – WIPO has revealed that the theme for this year’s World Intellectual Property Day – on April 26 – is to be ‘Powering change: Women in innovation and creativity’. The organisation notes that the day will celebrate “the brilliance, ingenuity, curiosity and courage of the women who are driving change in our world and shaping our common future”. For those keen to participate in this celebration, the office has made available a range of publicity materials. Discussion on Twitter will once again utilise the hashtag #worldipday. We look forward to seeing how IP Offices, associations, and the rest of the trademark community find new and unique ways to mark the day. (TL)

Aussie brewer trademarks the colour of beer

NEWS / By Olaf Kretzschmar

Melbourne craft brewer East 9th Brewing has filed an application to trademark the colour of beer.

The brewery is following in the footsteps of Cadbury, which attempted to trademark the colour purple and BP which attempted to trademark the shade of green it uses.

“We hope this will revolutionise the way we think about beer,” says co-founder Benjamin Cairns. “We have lodged all the paperwork and trademarked the actual Pantone colour”.

Cairns says the application, which was filed about a month ago, is an “ironic wink” at the stupidity of ownership by corporations.

East 9th Brewing’s latest brew is Doss Blockos The Colour of Beer and Cairns claims it is the first beer that is actually the colour of beer, thanks to the trademark application.

Cairns says the beer is “generous on the tropical notes” without being too heavy on bitterness.

Identifying the colour of beer

The brewery worked with Australian street art company Ironlak to identify the colour of beer.

The Colour of Beer can imitates Ironlak’s iconic spray can design and Ironlak has simultaneously relased a spray paint with the same name and matched as closely as possible to the colour of East 9th Brewing’s beer.

“The Ironlak spray paint can is like the Bic pen for street artists,” Cairns says. “So we worked with them to come up with a colour which best represented our beer.”

Cairns, who previously worked in the brewing and alcohol industry, started East 9th Brewing with marketers Josh Lefers and Stephen Wools eight years ago.

“We are one of the elder statesmen in the independent brewers world,” says Cairns.

East 9th Brewing began with the Doss Blockos beer brand and its other brands include Lick Pier, Fog City, Future Memoirs of A Root Beer and last year launched a hemp beer, Doss Blockos Hempire Hemp Beer.

The brewery turns over under $10 million a year and uses different manufacturers to create its beers.

It uses Craft Revolution for the sales and distribution of its beers, which are sold nationally with around 5000 distribution points around Australia including Metcash, Woolworths, Coles and Dan Murphy’s .

Marketing stunt?

East 9th Brewing is coy on whether its trademark application is just a marketing stunt.

“Well who knows what this might mean for the beer industry,” Wools says. “Maybe Heineken, VB or XXX Gold will have to tweak the colour of their liquid to avoid any trademark infringements. They might own the taps pouring the beer but we own the colour of beer.”

Chris McNamara, executive officer of the Independent Brewers Association, says he hopes East 9th Brewing’s trademark application is not serious.

“It would certainly cut down on what we would see as the sharing nature of our industry,” he says.

“Knowing what I do about East 9th Brewing they seem more a brand that might want to take the piss out of the larger guys. It does have implications for the rest of the industry if it was to get through.”

Source: https://www.smh.com.au/business/small-business/aussie-brewer-trademarks-the-colour-of-beer-20180302-p4z2l4.html