trademark

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

BLOGS / By

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!

BLOGS / By

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.

Opportunities in the United Kingdom

BLOGS / By

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

BLOGS / By

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

BLOGS / By

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.

IP Insurance – A New Safety Net In Australia

BLOGS / By

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!

©2018 ONE-IP INTERNATIONAL PTY LTD

ONE IP Cheat Sheet: What is a Trade Mark?

IP At A Glance / By

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

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

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)

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