9 key steps to protect your trademark when selling on Amazon

Elizabeth Ward (Virtuoso Legal) published an interesting article for Lexology which discusses the basic steps every trademark owner selling on Amazon has to bear in mind in order to protect it. In brief, the steps are as follow:

1. Get a Robust Trademark;

2. Protect Yourself Where You’re Selling;

3. Logo or Word?

4. Don’t be too Descriptive!

5. Clear the way;

6. Don’t be afraid to spend money;

7. Nip Trouble in the Bud;

8. Stay Vigilant;

9. Don’t Rely on The Police to Sort it Out;

The full article can be found here.

 

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Why searching for earlier trademarks is so important for every business?

Building of a trademark name is a long process which requires a plan for its execution. Part of such a plan is searching for earlier already registered trademarks in Patent Offices databases.

Why this is so important?

Even in the case that you create a distinctive brand name, this doesn’t mean that you will receive successful registration. The reason for this can be the fact that someone else already registered the same or similar name for the same or similar goods as yours. If that’s the case against your application an opposition can be filed and you can be sued as a trademark infringer.

To prevent such negative consequences, it is highly advisable for trademark searches to be done throughout the brand building process.

Having said that, however, it has to be bear in mind that non-specialists in the field of intellectual property can compare and assess mainly trademark identity. When it comes to similarity between the marks and their goods and services things can be much more complicated which requires deep knowledge of the legislation and court practices in the relevant country.

Image: Wokandapix, Pixabay.

 

A brief guide how you can manage your intellectual property

Albert Ferraloro (Wrays) published in Lexology an interesing and helpful brief guide what steps you can take to start managing your intellectual proerty.

The article covers some essential points in that regard such as:

– Who may create IP?

– When might IP be created?

– What steps can be taken to help identify and capture IP?

– Good business practices.

– Know the ‘IP Landscape’.

– Promoting an ‘IP culture’ in the workplace.

– What are the risks of poor IP management?

– Action items – Trade Marks Considerations.

The full article can be found here.

Brief IP news

1. Celebrating Twenty Years of the WIPO Academy. for more information here.

2. A guide to managing intellectual property. For more information here.

3. Hey, DJ! Are you licensed to play that music? For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here

Breaking news – Youtube is liable for copyright infringement in Austria

The Commercial Court of Vienna has issued a decision according to which YouTube is liable for copyright infringement of works uploaded by its users in Austria.

The case concerns allegations by the Austrian broadcaster Puls4 that its content was been uploaded without permission on Youtube.

The defensive position of Youtube was that the company operates in compliance with the requirement of the E-Commerce Directive according to which:

Article 14: Where an information society service is provided that consists of the storage of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that:

(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or

(b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.

This option is possible only in the case of a “host provider”. The Vienna Court, however, based its decision on the European Court’s practice, which determines that there is no “host provider” when:

“. . . the service provider, instead of confining itself to providing that service neutrally by a merely technical and automatic processing of the data provided by its customers, plays an active role of such a kind as to give it knowledge of, or control over, those data.” (ECJ in L’Oreal ./.eBay)

The Court concluded that Youtube is not only a service provider but manage the uploaded data, promote it, measure the user’s activity etc. So in light of this, the company is not a neutral mediator.

It’s highly likely that this decision will be appealed but nevertheless, it shows the current more restrictive approach among different European courts toward the internet providers.

Source: Morrison & Foerster LLP – John F. Delaney, Christiane Stuetzle and Christoph Wagner, for Lexology.

Image: freephotocc, Pyxaby.

What decision took the General Court of the EU in case of short trademarks?

The General Court of the European Union has ruled in case T‑241/16, El Corte Inglés, SA, e v European Union Intellectual Property Office (EUIPO).

The case concerns an attempt for registration of a Eu trademark EW for the following goods:

– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;

–  Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery’;

–  Class 25: ‘Clothing, footwear, headgear’.

Against this mark an opposition was been filed based on an earlier European trademark WE for the following goods:

–  Class 3: ‘Soaps, perfumery, essential oils, cosmetics, hair lotions’;

–  Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; umbrellas and parasols; trunks and travelling bags; bags not included in other classes’;

–  Class 25: ‘Clothing, footwear, headgear’.

The EUIPO upheld the opposition concluding that both signs are confusingly similar. The Board of Appeal confirmed this decision too.

The General Court, however, annulled the EUIPO’s decision reminding that in the case at hand both marks are very short signs consisting only of two letters in different order. According to the court in such cases, consumers can make easily a distinction between the marks. What’s more, the signs are dissimilar from a phonetical point of view, and for English speaking consumers they are different from a conceptual perspective too.