The Montana iP Trademark Blog

The Importance of Language Checks for your new brand name

2009-09-23T18:17:00.002+01:00

The wonderful world of brand naming has brought us such overseas brand delights as KRAPP Swedish toilet paper, BUM potato crisps from Spain, TENDER NUTS chocolate bars from Slovakia, BONKA coffee (also from Spain), and POO tofu from Indonesia. The internet is packed with similar examples.

The issue is quite clearly a common one and entirely understandable given the wide language and cultural differences that exist around the world which are reflected in all kinds of products, in spite of the apparent globalisation of consumerism.

The lessons are clear. If you envisage that your new brand will be launched internationally, or has the potential to do so you will no doubt be carrying out trade mark screening checks to ensure the name is legally available for use in each of those markets. But in many cases it would also be strongly advisable to conduct language checks to test for any negative connotations with the use of the name in the native language(s) of your intended markets. This should include not only a translation of the name but also checking for slang terms or idiomatic usages which might not always be picked up by your standard dictionary or business document translator, but almost certainly will be by your target consumers.

Even if your target market is English speaking, you still need to be aware of the potential for a “hidden” meaning which, whilst entirely benign in the UK, would be a definite no-no in, say, the US or Australia. And sometimes, your name might just be evocative of the alternative meaning rather than being the name itself. Either way, the result is the same. Your brand becomes a joke, or simply something to avoid.

Its not just alternative meanings you should look out for. Some names in one market just sound ridiculous in other markets simply because of the differences in accepted naming conventions prevalent in different cultures. Take the names of some Japanese cars for instance: the Toyota “Deliboy”; the Nissan “Big Thumb”; Isuzu’s “Mysterious Utility Wizard” and, my personal favourite, the “Giga 20 Light Dump”. All entirely acceptable as names in Japan, but bizarre and incongruous to UK and US car buyers.

Finally, its important to check for pronounciation issues, as some names will sound entirely different in certain languages (such as the letter “j” in Spanish and French), or may be more difficult to pronounce in some countries. Then again, if you don’t mind the sound of the brand name being different in certain markets, or if the pronounication gives the brand a greater, and desirable, affinity to its home market, then such issues can become positives rather than negatives. However, I suspect that such examples are in the minority and should be used with care.

OK, so many of the examples I’ve quoted here were probably for brands intended only for local distribution and were entirely ‘fit for purpose’. But did the brand owners know that their brands were always going to be local? What if they subsequently found that they had a great product on their hands with massive growth potential. How would they be able to leverage the value generated by the brand name into other markets; even if for only modest cross-border usage? And can the ridicule aimed at a ‘local’ brand name leak back into the home market and undermine the integrity of the brand?

Think about it next time you dunk a chocolate FILIPINO into your coffee, and ignore at your peril.

Clip-on OFF! is a Hit!

2009-07-24T18:55:00.004+01:00

Hot on the tails of the OW! range of portable sticking plasters (see 19 May post), another new product and more gratuitous trademarked exclamation marks hit the Montana iP Trademark blog. This time from SC Johnson, makers of the OFF! range of insect repellents. This one is a “New!”, personal repellent which just clips onto your belt and gives 12 hour mozzie free protection. The makers are even using the ™ symbol with Clip-On (but, surprisingly, not Clip-On!). Either way, the idea has massively exceeded the maker's expectations and sold around $4.2m worth in its first month.

Surely only a matter of time before there’s an iPhone app that does the same thing.

Brand Creation: why you should use a trademark attorney - Part 3

2009-07-20T20:38:00.004+01:00

The Attorney’s Role

In part 2 we looked at the main factors to take into account when looking at protecting your new brand name as a trademark. We now look at the main issues your trademark attorney should be involved with to assist you on your journey to creating a new brand name ready for launch.

(i) An attorney should advise on the distinctiveness of each of the names on your short-list, particularly in terms of whether such words would be registrable in the countries where you plan to use the name.

In this context, a knowledge of trademark laws and procedures in a wide range of countries would be advantageous or at least some experience of dealing with trademark protection programmes in multiple territories. If your attorney has been involved from an early stage (see Part 1 of this article) you may already have been briefed on the distinctiveness issue and will have steered your naming process away from words that are descriptive of your goods or services.

An attorney’s advice also needs to take account of your marketing objectives - there may be circumstances where you may intentionally be seeking a name which is descriptive. Or you may be looking to coin a new term for your industry which you can take “ownership” of, rather than trying to establish a specific brand name as such. A good example of this would be IBM’s “e-business” name. Whatever your reasons for selecting a more descriptive name, the attorney should nevertheless brief you on the potential difficulties (and higher costs) of policing the use of such a name or being able to enforce your rights against others. It is also particularly important that all relevant stakeholders in your organisation are aware of these additional issues and potential risks, not least your legal department whose budget may end up being the one used during any ensuing litigation!

(ii) An attorney will conduct searches to be able to advise on which names are available for use and registration.

To keep costs down, initial searches should be limited to checking whether there are any existing identical marks. This will knock-out any obvious problematic names at any early stage. Consideration will also need to be given to the proposed, or likely future markets for the goods and services to be sold under the new name as it will be necessary to conduct searches in all countries involved. Initial identical searches may be limited to key markets but these will need to be extended at a later stage when considering your short list of names.

Once the initial identical search phase has been completed, a more detailed search and analysis of both identical and confusingly similar names will then be conducted on your short list of possible names. This risk analysis is a critical part of the attorney’s work. A good attorney needs to be able to take a realistic and commercial approach when advising clients on the extent to which a mark is available for use. Clients are usually not particularly interested in a purely legal analysis of risk and there will invariably be many situations where a similar mark is already in existence and the clients needs to know whether the mark poses a legal threat to the use of his own name. There are not usually any black and white solutions to such situations but a good attorney should be prepared to commit to an opinion on the issue and to be able to make similar comparative assessments of other marks in the list which face similar issues. The attorney should also provide details of the options available for overcoming any obstacles and, where relevant, advice on strategies for mitigating such risks.

(iii) Trade mark filing strategies.

A trademark attorney will be able to advise you on the most cost-effective filing programme for registering your selected brand name in the countries of interest. And based on the expected life-cycle of your product or service and your brand protection budget, the attorney should also advise on the level of trademark or other protection that is required, or whether or not a trademark registration is necessary at all.

Aside from individual national registrations, other forms of trademark registration are available. For example, the European Community Trademark offers a single registration which covers the entire European Union at substantially lower cost than individual national registrations. Similarly, under the International trademark system governed by the “Madrid Protocol”, trademark applications can be filed in participating countries based on a “home” application or registration, again at lower cost than individual national applications. There are additional benefits and some disadvantages to all these filing systems but your attorney should be able to advise you on which method, or combination of methods, is best suited to your individual circumstances.

(iv) Other considerations.

Even before your final brand name has been selected, it may be prudent to file trademark applications for some, or all, of the names in your final shortlist, especially if the finalisation process is likely to be a protracted affair. This will help ensure that someone else does not file an application for one of the names in the interim - either coincidentally, or otherwise. Once you have filed such trademark applications in one country, it is then possible to file subsequent applications for one or more of the the same marks in an extensive list of other countries within a period of 6 months, whilst retaining the priority filing date of your initial application - as if they had all been filed on the same day. This not only buys you some time in reaching a decision on your final brand name but also means your filing costs can be spread out over a 6 month period.

For new product names, you should also discuss with your attorney whether the geographical scope of your trademark protection needs to be extended beyond the countries where the product may be sold. For example, in countries which have a reputation for counterfeiting of products in your particular industry, or in the countries where the product may be manufactured, but not sold. The latter is especially important not just as protection against an errant manufacturer registering the mark himself, but also to ensure continuity of manufacturing in that country - in many countries, the manufacture of a product under a trademark solely for export is considered as “use” of the trademark in that country and the ability to secure the rights of use in that country through trademark registration is therefore equally as important to those countries where the product is actually sold.

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If you would like more information about the issues raised in this article. Please call +44 1932 827334 or send an email to the author at info@montana-ip.com. A copy of all three parts of this article is also available to download in pdf format.

Computertan Hoax fools thousands

2009-07-16T15:39:00.006+01:00

Bronze while you blog. Tan while you type. Its tanfastic.

This spoof was launched by skin cancer charity Sckin (sic) to raise awareness of the dangers of ultraviolet radiation. With over 2m hits worldwide, it seems to have worked.

Brand Creation: why you should use a trademark attorney - Part 2

2009-07-15T16:12:00.003+01:00

Brand names as trademarks: essential information.

The thing is with brand naming is that whether you have taken six months, six weeks or just six hours to come up with a list of possible names for your new product or service, the amount of time invested in the exercise does not always directly correlate with the quality or strengths of the output. For sure, with the right planning and a well thought-out and implemented brand strategy, you are more likely than not to find a name which is the right fit for your business objectives. But there is no guarantee your name will “work”. Nor that it will avoid ridicule from the media or the public once it has been launched, as several brands have witnessed before. And that first name, on the first flip chart, in the first naming group session, may well turn out to be the name which finally launches your brand into the stratosphere.

But maybe that’s the attraction. It’s the unpredictability that makes the whole process interesting and enjoyable. Contrast this with the somewhat dryer and more prescriptive process of legally approving and cutting down that precious list of names and you can understand why the trademark attorney’s role is greeted with far less enthusiasm, and occasional scepticism.

But remember: trademark attorneys have read the trademark textbooks and case files so that you don’t have to. What you do need to know are the “what fors” and “whys” of an attorney’s role so that you’re in a better position to ask the demanding questions. And so that you can ensure your attorney is doing his or her job right and can add value to your naming process. Hopefully some of what follows might assist you in achieving this.

From a trademark attorney’s perspective, whilst there are several issues to consider when advising on the selection of a brand name, there are two overriding elements which must be taken into account: Distinctiveness and Availability for Use. Let’s look at each of them in turn.

Distinctiveness

For a name to function as a trademark it has to be capable of uniquely identifying your goods or services and distinguishing them from those of your competitors. It has to be distinctive rather than merely descriptive.

For a brand name, this usually means one of two things. It can either be a made-up name (like KODAK) which carries no meaning to the consumer other than when used in the context of your goods and services. Or the brand name can be an existing word, but where the ordinary meaning or contextual use of the word bears no relationship to your goods or services (like APPLE for computers). There is also a third category of trademark, that may be bordering on the purely descriptive but which has acquired its distinctiveness through extensive use, so that consumers have come to identify that word with the products or services in question. However, this category of trademark does not of course arise in the case of entirely new brand names.

Availability for Use

This is a fundamental issue. Has your new name already been used or registered by another party for the same or similar goods or services as yours? If so, your use of the same mark is most likely to be infringing that other party’s legal rights which could end you up in court and having to pay damages. At best, you are very likely to have to entirely re-brand your product and service, with all the costs, potential loss of business and dents in your reputation that may ensue.

A trademark attorney will conduct searches of the relevant trademark registers to find out whether your new trademark is available for use. Also, in the case of common law countries such as the US and UK where unregistered rights to trademarks can arise through use, additional searches will be conducted to establish whether there has been any use of the trademark. All such searches will not only look at identical marks but will also review any similar marks - using a trademark which is confusingly similar to an existing trademark could also be infringing that earlier brand owner’s rights.

Given this background, what should you be expecting your trademark attorney to be doing to assist with the naming process? This will be examined in more detail in Part 3.

Brand Creation: why you should use a trademark attorney - Part 1

2009-07-13T12:51:00.010+01:00

Establishing the Field of Play

To the uninitiated, the task of finding a suitable name for a new product of service, or the name for a new company, is largely perceived as a creative process. In practice, it is vital that the process starts with establishing a strategy for how the name will be used to communicate the brand values to consumers and deciding how it will sit within any existing brand architecture. Only when this has been defined and understood can some form of creative or brainstorming exercise be undertaken to generate a word bank of possible names. This list of names is then evaluated against the strategy and gradually narrowed down until a final candidate has been selected.

Many people are aware of the importance of legally clearing a name for use and taking steps to establish legal ownership of that name. But it is also disappointingly common, particularly amongst those who are less familiar with the naming process (and occasionally amongst those who should know better) that the legal process is introduced far too late into the process. A company may have invested time, money and resources into researching names, and fallen in love with a particular name which ticks all the boxes from a branding perspective, only to find that the name is owned by someone else. Or that it is unregistrable as a trademark and potentially difficult or costly to enforce.

So when should a trademark attorney get involved? Obviously, as a trademark attorney myself, I would say as early as possible. However, to those who are suspicious of involving an attorney in what is perceived as a “creative” process, this might be seen as self-serving. Indeed, some seem to believe that attorneys actually stifle the creative process: “Once an attorney has sifted through your list of names, all you’ll be left with are the dull, boring, lifeless names that just don’t fit our branding model….” Etc etc. In certain circumstances, such a scenario may be unavoidable - all the “good” names are already taken. But with the right approach, an understanding of the brand strategy by all participants, and close collaboration between the branding and legal elements, you can use your trademark attorney to enhance, rather than stifle, the naming process and help you achieve your branding goals.

At the initial, strategic stage of the naming process, attorneys can help brief the branding team of the potential legal pitfalls. In so doing, the naming team will have a sufficient understanding of the relevant aspects of trademark law so that they understand the relative legal and commercial benefits and downsides associated with certain types or categories of names. To do this properly, the trademark attorney does need to fully understand the client’s strategy for the new name so that he or she can anticipate legal issues from the off, and tailor the advice specifically for the brief. For example, your attorney needs to properly understand the life-cycle and proposed uses of the product or service which is to be named and the budget available for the brand roll-out so that any legal input can be appropriately balanced between advising on a client’s “freedom to operate” under a name, and the ability to enforce the rights and protect against misuse by competitors and infringers down the line.

Of course, I would certainly not suggest that such legal knowledge or information is used as a "filter" in a free-form brainstorming workshop. But it would definitely be applicable where a more formalised approach is taken or when sorting and sifting the names that have been generated as part of a brainstorming exercise. In either case, a structured approach to the evaluation of names generated during the creative process will ensure that any shortlist of names fits with the brief and the strategic objectives for the brand. Including appropriate legal criteria as part of this evaluative process and allocating the right weighting to such criteria will also help avoid disappointment later on in the process - a good trademark attorney should be able to assist you with generating these criteria.

In part 2, we will take a look at the specific elements which make up a good trademark, as well as the key trademark-related issues which are (or should be) an essential part of any brand naming exercise.

Advantages of a European Community Trademark

2009-06-16T10:57:00.013+01:00

What is a Community Trademark?

The European Union introduced the Community Trademark (or “CTM”) on 1 April 1996 to allow trademark owners to obtain protection for their marks as a single registration covering all EU Member States. A CTM is registered in accordance with the CTM Regulations with the Office for Harmonization in the Internal Market (“OHIM”) based in Alicante, Spain.

There are several advantages to registering a CTM for your mark as opposed to individual national registrations. These can be summarised as follows:

(i) 27 Countries, one registration

A single CTM registration gives protection for all 27 Member States of the European Union - an area which covers more than 350 million consumers.

(ii) One fee, lower cost, one language

The official registration fees of a CTM cost no more than the fees for around 3 national registrations. So broadly speaking, you get coverage in 27 countries for the price of 3. The application process is also easier: you simply file one application, pay a single fee and have the convenience of having to deal in only one of the official EU languages of your choice.

(iii) Automatic expansion

Upon future enlargement and expansion of the EU to other countries, any pending CTM application or valid registration will automatically be extended to include the new Member State(s) - without further payment or additional formalities.

(iv) Exclusivity

A valid CTM registration gives the registered owner the exclusive right to use that mark in respect of the goods and services for which it is registered, across the entire EU territory, for a period of 10 years.

(v) Ease of maintenance

Registrations are renewable indefinitely for further 10 year periods upon payment of a single renewal fee. As is the case with most national trademarks, if you fail to make real commercial use of your CTM during any 5 year period after the registration date, your mark is potentially vulnerable to cancellation for non-use by a third party. However, in the case of a CTM, such use only needs to take place in ONE Member State in order to maintain the mark across the entire EU. Contrast this with individual national registrations, where a mark would need to be used in every single territory to avoid potential non-use cancellation in each of those territories.

(vi) No national registrations required

Unlike the International Trademark system, ownership of a ‘home’ application or registration is NOT a pre-requisite for filing and obtaining a CTM. Nor do you have to be domiciled in the EU in order to be able to file a CTM (although applicants who are not domiciled in the EU or who do not have their principal place of business or a real and effective industrial or commercial establishment in the EU do need to use an authorised legal practitioner or professional representative to act for them).

(vii) Seniority

If you are the owner of an existing national registration in an EU Member State, you may claim ‘seniority‘ for your CTM application based on the registration date of your national mark. In so doing, this establishes rights in your CTM for the Member State concerned dating back to the effective date of the national mark on which your seniority claim is based. It also removes the need for you to have to maintain both marks - the seniority gained for your CTM means your national registration may be allowed to lapse on next renewal, thereby saving costs in renewal fees.

(viii) Reduced fees

Since the 1st May 2009, the official fees for filing and registering a CTM online in up to 3 classes have been reduced by 40% to €900 (about UK£763 or US$1,245 at today’s exchange rate), making it cheaper than ever before to obtain a CTM.

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If you would like more information about the issues raised in this article, or are interested in pursuing a Community Trademark Registration, please call +44 1932 827334 or send an email to the author at info@montana-ip.com. A copy of this article is also available to download in pdf format.

Eight Reasons to Register Your Trademark

2009-06-08T19:22:00.033+01:00

A trademark is potentially one of the most valuable assets a business can own since it is the principal means by which a company identifies itself, or its products and services to its customers and differentiates itself from its competitors. A trademark is also the cornerstone in building the goodwill and reputation in a brand.

Most countries around the world provide a formal system of legal protection for trademarks by means of a registration process, which allows trademark owners to register their marks relatively inexpensively. It is therefore surprising how many businesses underestimate or overlook the importance of registering their trademarks in spite of the value of these assets to their businesses.

Here are eight reasons why brand owners should seriously consider registering their trademarks if they have not already done so:

1. Territorial Coverage
Registered trademarks usually provide coverage on a national or regional basis (e.g. UK, France, Australia, Benelux etc) or, in the case of a Community Trademark, a single registration gives trademark protection for the entire European Union. In contrast, rights to unregistered trademarks relate to the business goodwill arising from the use of a mark and, as a result, generally extend only to the particular locality where goods or services have been marketed or sold under the mark.

Trademark registration will therefore help to ensure that another trader does not open a competing business under the same, or a confusingly similar name elsewhere in the same territory before you have had the chance to expand the national or regional scope of your own operations.

2. Presumption of Ownership
By registering a trademark, there is a legal presumption that the registered owner is entitled to the exclusive use of that mark in respect of the goods and services for which it is registered, and that the trademark is valid. This exclusivity not only provides a solid base for the registered owner to confidently grow and maintain the position of its trademark and brand in the marketplace but also provides the legal means to help prevent competitors from using a conflicting mark in the same territory.

3. Brand Security
In most countries, rights to a trademark do not automatically arise merely by starting to use the mark, and rights are determined on a “first to file” rather than a “first to use” basis. Consequently, if you have started trading under an unregistered trademark and another party subsequently obtains a registration for it, that other party could try to use its registration to prevent your use of the mark. If successful, you would then be left with the considerable expense of having to undertake a rebranding exercise and would be obliged to replace all products, documents and inventory containing the original name. Apart from the expense, such an exercise might also lose you customers to your competitors.

4. Secure legal rights to a trademark before it is used
Provided there is a genuine intention to use a trademark, in most countries a registration for a mark can be obtained before it is used. This is useful where a business wishes to secure rights to a name during the preparation for a brand launch and helps manage the risk of any investment it makes in the launch and roll-out of its product or service under that new name. Conducting searches of existing trademarks will also help to ensure that there are no conflicting third party trademark rights.

5. Visible Deterrent
The existence of a trademark registration on an official, public register and, where appropriate, the use of the registered trademark ® symbol in conjunction with the mark, acts as a ‘warning notice’ to other traders of your trademark rights and can help deter potential infringers. The ® symbol may only be used where a mark has been registered and in many countries it is a criminal offence to falsely represent that a trademark has been registered.

6. Sanctions against counterfeiters and illegal imports
Many countries have provisions in their intellectual property legislation which not only include criminal sanctions targeted at counterfeiters of goods bearing registered trademarks but also have provisions for registered trademark owners to notify customs authorities to seize imported goods or packaging bearing marks which infringe their registered trademark rights.

7. Transferability
The existence of a trademark registration provides a potential purchaser of your business or brand assets with greater certainty and security over the trademarks it wishes to buy. Since the goodwill of a business is often closely associated with, or directly linked to its principal trademarks, the registration of those marks will provide a degree of assurance to the purchaser that the rights are secure (see item 2 above) and that their future usage of such trademarks is not in jeopardy. Without a registration, the value of a mark, or the price a purchaser is willing to pay for it, may be reduced to take account of the potential uncertainty and risk surrounding the mark (for example: the fact that the validity or ownership of the mark may be challenged or that a third party may seek to register the mark itself).

8. Registration of a company name or domain name containing your brand name or trading name is NOT a substitute for trademark registration
Ownership of a company name registration or domain name registration does NOT of itself establish an exclusive right to use that name as a trademark for your goods and services. On the other hand, ownership of a trademark registration can be used to prevent other traders from registering a company name which contains your trademark if in so doing they are infringing your trademark rights. Similarly, when dealing with a cybersquatter who may have registered your trademark as a domain name, proof of ownership of a trademark is an essential requisite in dispute proceedings. A trademark registration is the simplest means for establishing such ownership.

Finally, a few words about 'passing-off'
In the UK, it is the common law right of passing off which is the principal means by which owners of unregistered trademarks enforce their rights against other traders. The law of passing off protects the goodwill associated with a mark, rather than the mark itself. However, in an action for passing off, the user of the mark has to provide evidence of its entitlement to, and ownership of, the mark and that it has acquired a reputation and goodwill in that mark. This evidentiary burden has to be satisfied each time an action is brought. No action for passing off exists where the mark has not been used, or where there has been insufficient use to establish sufficient goodwill in the mark. Furthermore, an action for passing off will only succeed if there is proof of actual or likely damage to the goodwill of the business concerned. Such requirements or conditions are not necessary in an infringement action involving a registered trademark.

Still not convinced?

If you would like more information about the issues raised in this article, or are interested in pursuing a trademark registration, please refer to the contact details on the Montana iP website or send an email to the author. A copy of this article is also available to download in pdf format.

Is this, like, a joke?

2009-05-22T18:24:00.007+01:00

I would take a guess that most of you possess, or have at least encountered one or more of the virtual explosion of products available in 'wipe' format that have appeared over the last few years. From the original baby wipe to the various antiseptic wipes, makeup removing wipes, floor cleaning wipes, dashboard wipes, leaf shine wipes etc etc that are now available. Even those ones aimed at the more paranoid end of the market designed, as shown in their accompanying advertising campaign, to clean-up after shaking someone's hand.

But chances are you haven't (yet?) encountered........"Wine Wipes".

Yep. That's right. Wipes for wine. But not for those awkward red wine spillages over your boss's carpet or a freshly laundered white shirt. These are specifically designed for avoiding those well-known afflictions of 'wine tattoo', 'tannin teeth' and 'grapey grin'. As the manufacturers state on their website, Wine Wipes contain "a proprietary blend of stain-removing and teeth protecting ingredients that cleans red wine off teeth and neutralizes palate. Just run Wine Wipes over your teeth and mouth, and order another round of red".

Now I know red wine, tobacco and certain foods can, over time, discolour and stain the teeth. But how much wine would need to be consumed in one evening to cause a build up so bad that would require instant attention? And at that point, would you really care?

Maybe I'm missing something. A pearly white smile probably.

Link: Wine Wipes website

Marty Neumeier: Bridging the Distance Between Business Strategy and Design

2009-05-20T18:06:00.018+01:00

Here's a great presentation about brands and branding written by Neutron LLC's Marty Neumeier. It's a big slide deck but can be clicked through and read in only a few minutes.

From a trademark perspective, it was refreshing to see, on slide 92, Marty's views on what elements make up a good name:

Item 1: Distinctiveness

.... Item 7: Protectability

When talking about distinctiveness, he was no doubt referring to how the brand is perceived by consumers, but the issue is equally applicable to (and inextricably linked with) item 7. I also liked his comments about the interplay between trademarks and other brand cues for communicating with consumers.

My only other comment, regarding his list of 5 disciplines of brand building, viz:

- Differentiate

- Collaborate

- Innovate

- Validate

- Cultivate

... is to add a sixth discipline: er, "Registrate" (sic). Your trademark, that is.

The Brand Gap

That's Torn It!

2009-05-19T13:07:00.009+01:00

Ever on the look out for interesting new products, I stumbled upon this new brand of portable first aid kits being marketed by UK business Canister under the excellently evocative brand name "OW!" Naturally, the logo is registered as a trade mark in the UK, but I was mildy intrigued by the representation of the logo design on the trade mark record (see above pic). Are the owners claiming the torn edge of paper as part of their mark, or was there a hasty rush to get the logo onto the scanner and filed at the trademark office before their competitors filed for "Doh!" or "£@*k!"?

Links:

See Canister UK's OW! website for more product information.

Community Trademark or Chocolate Biscuit?

2009-05-18T10:24:00.011+01:00

Wubbo de Boer, president of the Office for Harmonisation in the Internal Market (OHIM) which administers the registration system for Community Trademarks and Designs, says Britain has been hardest hit by the recession in terms of the number of Community Trademarks filed this year.

In a recent interview in the Daily Telegraph newspaper, he said that whilst there had been an overall decline in applications of 6 per cent for the first quarter of 2009, British applications are down by 25 per cent. In response, it is perhaps encouraging to see that, as of 1st May, OHIM reduced its official fees for filing and registering a trade mark online from 1600Euros to 900Euros.

Whilst the filing volumes of Community Trademarks are based on a wide range of economic factors and (one would hope) not driven solely by registration costs, it will be interesting to see if this reduction has any impact on filing rates in the coming months. The UK Intellectual Property Office certainly seem to think so, as can be seen from their 9 March press release when they announced their plans to begin a review of their fees and services with a public consultation. The overall thrust of the announcement is to seek reductions in the costs and ease of registration whilst ensuring the quality of services provided by the Office continue to be improved. Potential savings to UK businesses are estimated at £700,000 per annum which the Office hope will help reverse the 12 per cent downturn in 2008 UK filing rates.

With the apparent increase in the number of businesses out there who have not sought registration of their trademarks, can this all be about fee levels? Since trademark registration fees provide a 10 year period of protection for what is, for many businesses, one of their most valuable business assets, even when you add on trade mark attorney fees this probably equates to an annual equivalent of less than they spend on biscuits or having the executive car fleet washed. Aside from an expected decrease in the more "speculative" type of applications filed by the larger corporations in less lean times, are smaller businesses really making decisions about registering their brand names as trademarks solely based on fees?

Links:

Interview with Wubbo de Boer

UKIPO Press Release

Welcome to the Montana iP Trademark Blog

2009-05-15T18:24:00.005+01:00

This is the first post for this blog, which is directed primarily at brand owners to generate a wider knowledge and awareness of trademark and design protection, but is also open to trademark practitioners or anyone else with an interest in IP. The intention is to post articles about the steps brand owners should be taking to protect their intellectual property rights, highlight interesting news items from around the world featuring brand protection issues and to invite discussion around branding, brand naming and related IP issues. I also welcome contributions from anyone who wants to include an article or item of interest.

I look forward to hearing from you in the coming weeks.