Looking after your trade mark

Congratulations – you’ve registered your trade mark!

Protect your IP when you trade overseas

Your trade mark

  • Protects your company’s name or logo
  • Gives you exclusive legal ownership of your brand name
  • Stops others using your registered trade mark
  • Gives you a valuable asset
  • Protects your domain name from those acting in bad faith
  • Ensures you are not infringing the registered rights of anyone else.
  • Allows you to protect the growing reputation and goodwill of your business
  • Stops others holding you to ransom.

Now what?

Depending on which territory you have registered your trade mark in, you will have a number of years during which your trade mark will continue to protect your brand.   Its protection should continue for as long as you continue to pay the maintenance fees.

But… you need to make sure you are using it correctly to prevent it being challenged and potentially revoked.

Use it or lose it

You can’t just register your trade mark and then do nothing with it.  It must be used within a 5 year period, and use may not stop for any continuous 5 year period, or it will be vulnerable to revocation.

For example, Lacoste have recently lost their crocodile trade mark in New Zealand after it was challenged by Crocodile International for lack of use.   http://www.nzherald.co.nz/business/news/article.cfm?c_id=3&objectid=11804566

Use your trade mark correctly

You should always use the trade mark in the form in which it is registered and for the goods or services for which it is registered.  Incorrect use can leave a trade mark vulnerable to cancellation by a third party.

Make sure it stands out

It is important that you make it clear that that it is a trade mark.  Failure to notify the public that your sign is a registered trade mark may affect your ability to claim full damages in an infringement action.

To make is stand out you can use…

  • Quotation Marks: “Sanderson & Co” trade mark attorneys.
  • Capital Letters: SANDERSON & CO trade mark attorneys.
  • Different Typeface: SANDERSON & CO trade mark attorneys.
  • Bold Print: SANDERSON & CO trade mark attorneys.
  • Colour: SANDERSON & CO trade mark attorneys.
  • Footnote: Place an asterisk next to the mark and then place at the end of the publication *trade mark.
  • Symbols: ® (if registered) or ™ (if not registered).

Generally, it is not necessary to mark every occurrence of a trademark or service mark in an article, press release, advertisement or on a website, etc;  but identification of the mark should occur at least once in each piece, either the first time the mark is used or with the most prominent use of the mark.   When in doubt it’s better to over mark it!

™ or ® – what’s the difference?

  • ™ can be used if you are claiming something is a trade mark
  • ® should only be used if you have REGISTERED it as a trade mark
  • It is an offence to use ® if it is not registered

Avoid Genericide

The term genericide refers to the way in which careless and incorrect use of a trade mark can lead to it becoming a generic term for the product that it describes.  This causes it to lose distinctiveness and therefore no longer be registerable.  eg ASPIRIN, ESCALATOR, KLEENEX, BAND-AID, YO-YO, THERMOS and WINDSURFER

To avoid genericide always use your trade mark as an adjective rather than a noun or verb.

E.g.  LEGO toy blocks or OREO cookies

Top tips for using your trade mark correctly…

Use it or lose it

Make sure the trade mark stands out in any materials

Use as an adjective NOT a noun

Use it as it is registered and for the goods or services for which it is registered

Monitor and act immediately on any misuse of the mark

Regularly review the protection you have to ensure it remains relevant for your evolving business

Is it OK to hyperlink to copyright protected material?

copyright_symbolA recent court case before the European Courts of Justice (CJEU), has added clarification to the question of when you are allowed to hyperlink from your website to copyright protected material.

Posting hyperlinks to legally published copyright protected material is allowed, even without the copyright owners permission.   You are not, however, allowed to link to material that you know has been illegally posted.

GS Media BV v. Sanoma Media a.o. case (C-160-15)  is a dispute between Dutch shockblog GeenStijl and Sanoma, publisher of Playboy.   GeenStijl posted hyperlinks on its website to a website showing copyright protected photographs which had not previously been published, and had been posted on the website without permission from the copyright holder.

The court has ruled that parties with a profit motive would be expected to research whether or not the materials that it is linking to have been published legitimately.

If one of the parties does not have a profit motive, they would not be expected to have the resources to carry out the necessary research to find out if the material is posted legitimately, then it is acceptable to link to the material.

Click to view and download the Flow Chart below

copyright-flow-chart

Even if there is a profit motive, if it can be proved that there was enough evidence to believe that the material was legally posted, you are able to link to the material.

In essence, if you knowingly link to material that is published without the copyright owners permission, you are breaching their copyright, and you are expected to take reasonable efforts to establish whether or not the material has been legally published.

If you have any questions about this or any other intellectual property issue please contact us.

 

ITMA becomes CITMA after royal recognition

citma_logotypedescriptor1On 24th November 2016 The Institute of Trade Mark Attorneys (ITMA) became the Chartered Institute of Trade Mark Attorneys (CITMA), following the unveiling of its Royal Charter. 

The Royal Charter was awarded to CITMA by The Queen at a meeting of The Privy Council in recognition of its important role in representing the specialist work of trade mark attorneys in the UK.

The Charter recognises the role of trade mark attorneys as specialist legal experts in the field of trade mark and design law.

Chartered Trade Mark Attorneys provide advice and risk assessments regarding company names and all aspects of branding protection.  Their specialist knowledge can provide a commercial view and strategic advice to make sure that a company’s trade marks are registered correctly, and appropriately for maximum benefit.

If you have any questions about trade mark protection please contact Jerry Walder,
BSc, CPA, EPA, CTMA, ETMA
.

For more information about the role of CITMA visit www.citma.org.uk.

BREXIT – what happens to UK and EU Intellectual Property Rights…?

IP rights and BREXITWell in reality, it will be business as usual for at least the next 2 years.  During that period the Chartered Institute of Patent Attorneys (CIPA) and the Institute of Trade Mark Attorneys (ITMA) will work with the UK Government to negotiate for the best outcome for intellectual property rights holders.

Patents

  • NO CHANGE
  • The European patent system is independent of the EU, and so Brexit will have no effect on European patents or applications. The UK’s membership of the World International Property Organisation (WIPO) will also be unaffected.
  • UK patent attorneys will still be able to prosecute European patent applications for all UK and overseas clients.
  • European patent applicants will not lose any rights and patents already obtained via the European patent office are unaffected.
  • UK patent attorneys can still prosecute Patent Cooperation Treaty (PCT) patent applications – which provide protection in the applicant’s chosen countries – for all UK and overseas clients.
  • PCT patent applicants will not lose any rights.

 

Trade Marks & Registered EU Designs

  • NO IMMEDIATE CHANGES… There will be a negotiation period of at least two years before the UK leaves the EU – and that period will only start once the UK officially notifies the EU of its intention to leave, which may not happen straight away.
  • European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) will therefore still give protection in the UK until at least June 2018.
  • The Institute of Trade Mark Attorneys (ITMA), the UK’s Intellectual Property Office and the Minister for Intellectual Property will work to ensure the best possible outcome for owners of intellectual property rights and for practitioners in the UK.
  • They will also work to ensure the transition of all EU-based trade mark and design rights to UK-based protection to be simple and cost effective.

For further information, or to discuss the implications of Brexit on your UK and European Intellectual Property Rights, please contact James Sanderson or Jerry Walder on 01206 571187.

We’ve moved!

Change of Address

Sanderson & Co - Patent & Trademark Attorneys

Please be advised that as of 4th March 2016 Sanderson & Co has moved from 34 East Stockwell Street, Colchester, CO1 1ST.

New address:

D2, Knowledge Gateway, Nesfield Road, Colchester, CO4 3ZL.

View location on Google Maps

Our telephone and email contacts remain the same.

Please update your records accordingly.

If you have any questions or problems, please contact us.

Fast-track your patent application with a quick(er) trip through the Green Channel

With a UK patent application typically taking 4 – 5 years to reach grant, the patent process can seem like a very slow beast indeed.

If your invention has green credentials there is an option that may allow you to speed the process along a little.

UK IPO Green Channel

Use the UK IPO Green Channel for faster processing of your patent application

If your invention has some environmental benefit, applicants can make a written submission to the IPO requesting accelerated processing of their application.

The Green Channel option is not only available to the more obvious green inventions, such as solar panels or wind turbines – any invention that can reasonably be claimed to have an environmental benefit may be eligible.

What does it cost?

Nothing! There is no fee for using the Green Channel.

How do I it do it?

Requests must be made in writing by the applicant with details of:

  1. How their application is environmentally-friendly.
  2. Which actions they wish to accelerate:-search, examination, combined search and examination, and/or publication.

If you think your invention might qualify and would like advice on how to write the application letter please contact us at sandco@sandersons.co.uk.

For more information go to https://www.gov.uk/patents-accelerated-processing.