Food industry branding bulletin - October 2007
A fresh approach to the food industry
All change for trademark application examination
Should you be bothered about protecting your slogans?
Meet the branding team
All change for trademark application examination
There are major changes in the way trademark applications are examined as from 1 October 2007. After this date the UK Intellectual Property Office will no longer refuse to register a new trademark because of an earlier conflicting trademark, unless the owner of that earlier mark successfully opposes the new mark. We highlight how this affects food businesses that own trademarks.
How has the procedure changed?
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 Trademarks 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 businesses that own trademarks?
It is now very important for owners of trademarks to monitor trademark 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 trademark owners have either the time or the resources to undertake frequent searches against new trademark applications.
The answer?
The branding team at Freeth Cartwright has a number of searching packages designed to meet the differing needs of its clients. These packages include world wide, EU and UK searches. We have the capability to complete domain name searching. 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.
If you would like to benefit from our searching packages please contact a member of our branding team whose details are listed in this review.
Should you be bothered about protecting your slogans?
Most businesses are aware that logos and brand names are capable of protection as registered trademarks 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 trademark 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 Williams. Neither of the phrases is registered as a trademark, 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 trademark. To establish passing off Tate and Co need to show they have (1) 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 trademarks 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 its best to get permission first; and
2. To save the hassle (and inevitable increased cost) of enforcing unregistered rights protect your slogans as registered trademarks - that way when there is a problem it is quicker and easier to fix.
If you would like advice on ways to protect your slogans please contact a member of our branding team.
What we do
• Trademark and designs filing and advisory practice - We are unique in the region in being able to offer an established in house trademark 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.
• Watching Services - We can monitor the use of particular brands and report to you on any new activity that might concern you.
• Domain Name Services - As part of our branding expertise we provide a range of domain name services including searching, registration and policing.
• IP Exploitation advisory practice - 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 trademark and design licences and assignments.
• Disputes and Anti-Counterfeiting - We are specialists in enforcing trademark 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.
• Seminars, Training and Guides - 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
Senior Associate
Leads the Anti-Counterfeiting Team
Direct line: +44(0)845 058 0753
E-mail: ann.critchell-ward@freethcartwright.co.uk
Skype: ann.critchell-ward.fc
Fiona Boswell
Senior Associate
FC Food Group Specialist
Direct line: +44(0)845 070 3812
E-mail: fiona.boswell@freethcartwright.co.uk
Skype: fiona.boswell.fc
Katy Spurrier
Senior Solicitor
Direct line: +44(0)845 058 0755
E-mail: katy.spurrier@freethcartwright.co.uk
Skype: katy.spurrier.fc
Alex Newson
Senior Solicitor
Direct line: +44 (0)845 058 0759
E-mail: alex.newson@freethcartwright.co.uk
Skype: alex.newson.fc
Kara L. McDonald
Solicitor
Direct Line : +44 (0)845 070 3811
E-mail: kara.l.mcdonald@freethcartwright.co.uk
Skype: kara.l.mcdonald.fc
Dawn Anderson
Trademarks Administrator
Direct Line: +44 (0)845 070 3813
E-mail: dawn.anderson@freethcartwright.co.uk
Skype: dawn.anderson.fc