Branding Review - October 2007
In this issue of the Branding Review, find out about the major changes in the way trade mark applications are examined as from 1 October 2007; also find out why you should be bothered about protecting your slogans . . . . and meet the branding team.
All change for trade mark application examination
History repeating…
Should you be bothered about protecting your slogans?
Meet the branding team
All change for trade mark application examination
There are major changes in the way trade mark applications are examined as from 1 October 2007. After this date the UK Intellectual Property Office will no longer refuse to register a new trade mark because of an earlier conflicting trade mark, unless the owner of that earlier mark successfully opposes the new mark.
The Registry will still search against prior marks as part of the examination process, and will bring the existence of elevant prior marks to the attention of the applicant. It is then up to the applicant to decide if he/she wishes to continue with the application.
If the application is to progress the Registry will then automatically contact the UK owners of all potentially conflicting marks (EU owners will have to opt in to the system). On publication of the application in the Trade Marks Journal, the owners of any earlier marks or rights can oppose the application if they believe it infringes their pre-existing rights. If that application is successful, the applicant risks being found liable for the opposition costs and their application may fail.
What do these changes mean for trade mark owners?
It is now very important for owners of trade marks to monitor trade mark applications to make sure that there are no new marks being registered that could infringe or weaken their own marks. This is all very well in practice but very few trade mark owners have either the time or the resources to undertake frequent searches against new trade mark applications.
The answer?
The branding team at Freeth Cartwright have a number of searching packages designed to meet the differing needs of our clients. These packages include world wide, EU and UK searches. We have the apability to complete domain name searching and are also now able to offer Companies House searches so that brand owners are able to take advantage of the new Companies House appeals service that allows you to object to a company name that is the same or confusingly similar to an existing company name.
If you have chosen a brand that has been used previously in the market place but you think may be unused now, we can also arrange to have an ‘in-use’ search completed. This involves discrete research to see if the target mark is being used.
“The real injury in [cases of dilution] can only be gauged in the light of what has been said concerning the function of a trade mark. It is the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use on non-competing goods”.
Frank Schechter, Rational basis of trade mark protection. 40 Harv. L.Rev.813(1927),825.
Once you have secured your trade mark it is very important that you use it properly and police your brand. Ann Critchell-Ward leads the Anti-Counterfeiting team and can advise on strategies to safely exploit and ultimately protect your brands.
Should you be bothered about protecting your slogans?
Most businesses are aware that logos and brand names are capable of protection as registered trade marks and even if not protected by registration can be protected in law if there is sufficient goodwill in the brand and it meets other specific criteria (the laws of passing off). However the protection of a registered trade mark and/or the laws of passing off can also extend to slogans and catch phrases as highlighted by a recently publicised incident.
The infamous “Am I Bovvered?” catchphrase is at the centre of a dispute between Catherine Tate and others and Christian Publishing and Outreach (CPO). The BBC reported that CPO has been using the phrase and Little Britain’s “Yeah, I know!” in a poster campaign aimed at young people without permission. Each poster features quotes from the Bible and the posters were according to the BBC being supplied to churches at £25 each by the organisation.
These phrases are synonymous with the characters created by Catherine Tate, Matt Lucas and David Walliams. Neither of the phrases is registered as a trade mark, yet, but they could be protected by the laws of passing off. It is more difficult to establish rights in passing off than it is to sue someone for infringing a registered trade mark.
To establish passing off Tate and Co need to show they have (i) a reputation in the phrases; (ii) that the adverts would confuse anyone seeing them into thinking Tate and Co are endorsing what CPO is doing; and (iii) that Tate and Co have suffered damage (quantified financially) to their reputation as a result. Whereas, if Tate and Co had registered the slogans as trade marks they need only demonstrate that the slogan used by CPO was the same as or similar to their own and used in a way that is covered by that registration to establish that it was being infringed.
CPO could have avoided this embarrassing problem if they had asked Tate and Co’s permission. It has been a costly mistake as it has had to recall all the posters. So this is a salutary lesson:
1. If you are going to use phrases coined by someone else in an ad campaign it’s best to get permission first.
2. To save the hassle (and inevitable increased cost) of enforcing unregistered rights protect your slogans as registered trade marks - that way when there is a problem it is quicker and easier to fix.
We are unique in the region in being able to offer an established in-house trade mark and designs filing and advisory practice, dealing with applications, both within the UK and other territories. When appropriate, we are able to use our links with law firms across the world to assist you with your branding strategy. We can monitor the use of particular brands and report to you on any new activity that might concern you. As part of our branding expertise we provide a range of domain name services including searching, registration and policing.
We regularly act for the creators and procurers of intellectual property and advise on the licensing and buying or selling of intellectual property rights including trade mark and design licences and assignments. We are specialists in enforcing trade mark rights (including rights in domain names) and defending businesses that are accused of infringing other people’s rights. We have a dedicated and experienced anti-counterfeiting team who are used to dealing with problems such as copycat goods.
We have a very commercial attitude to dispute resolution, and when appropriate, we can act as mediators in disputes. We can also provide training tailored to your business on branding issues from the selection of brand names to the creation of a practical policing strategy. Training can be delivered on site, through video casts or in our dedicated training suite. We provide a number of guides on this area free of charge, which are available from our IMPACT blog http://impact.freethcartwright.com.
Contact Us:
Ann Critchell-Ward - branding disputes, trade mark prosecution, oppositions and IP contracts.
Senior Associate
Leads the Anti-Counterfeiting Team
Direct line: +44(0)845 058 0753
ann.critchell-ward@freethcartwright.co.uk
ann.critchell-ward.fc
Fiona Boswell - branding contracts including licenses and assignments.
Senior Associate
Direct line: +44(0)845 070 3812
fiona.boswell@freethcartwright.co.uk
fiona.boswell.fc
Katy Spurrier - trade mark prosecution work including oppositions.
Senior Solicitor
Direct line: +44(0)845 058 0755
katy.spurrier@freethcartwright.co.uk
katy.spurrier.fc
Alex Newson - trade mark prosecution work and branding contracts.
Senior Solicitor
Direct line: +44 (0)845 058 0759
alex.newson@freethcartwright.co.uk
alex.newson.fc
Kara L. McDonald - branding and anti-piracy disputes.
Solicitor
Direct Line : +44 (0)845 070 3811
kara.l.mcdonald@freethcartwright.co.uk
kara.l.mcdonald.fc
Dawn Anderson - trade marks administrator.
Direct Line: +44 (0)845 070 3813
dawn.anderson@freethcartwright.co.uk
dawn.anderson.fc
If you want to know more…
Speak to us today and find out what we can do for you. Please contact Ann Critchell-Ward on 0845 058 0753
or at ann.critchell-ward@freethcartwright.co.uk
www.freethcartwright.co.uk