Jamaica joins the Madrid Protocol for international registration of trademarks

WIPO reports about the accession of Jamaica to the Madrid Protocol for international registration of trademarks.

The Protocol will come into force for the country on 27.03.2022, a date after which Jamaica can be designated on the international application of trademarks.

This is the 110th Member State of the Protocol which facilitates significantly registration of trademarks around the world because applicants have to file only a single application designating as many countries Member States as they wish.

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A Danish hit against the football Super League

As it is already well-known the so-called Super League failed to emerge in the football world after serious critics from fens, football authorities and even politicians. And although the league is now only a dream for some of the involved clubs, problems regarding it continue. This blog mentioned some time ago that the organizers of this new project filed the following European trademark for classes 3, 4, 5, 6, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 45:

We predicted that this trademark application could have oppositions based on earlier marks for Super League. However, our search missed catching some of the variations of this mark. And one of these earlier variations emerged on the scene with full force.

The Danish Football Federation filed an opposition against the above mentioned Super League mark on the ground of the following two marks:

–   – № VR 2009 01457, Filing date: 02/04/2009

– SUPERLIGA – № VR 2001 00163, Filing date: 10/08/2000

Both of the marks are registered in class 41: creating and organizing sports activities, including sports events, all related to football.

A list of evidence was added to the opposition showing how these marks are used in the market. In other words SUPERLIGA is the name of the Danish national football championship which was founded under this name in 1991.

The Danish Federation has one European trademark for SUPERLIGA too which, however, was not mentioned in the opposition.

It is interesting what the result of this dispute will be. At first glance, the mark applied for and the earlier signs are similar enough at least from phonetic and conceptual point of view. What’s more they cover similar and identical services.

The key moment here can be to what extent Super League is a distinctive sign. Our research shows that this name is used for other championships too, for instance the Serbian one is called Superliga. In addition the Polish handball championship has the same name, registered as a combined Polish trademark for sport competitions.

Having said all of that, the question is why such a name should be selected for a trademark as a whole. Yes, on one hand it is logical for sport tournaments, but from another, if the organizers want to license this mark, to sell merchandising etc., it should be distinctive enough, otherwise its protection and enforcement could be difficult at least at the start without secondary acquired reputation.

What are European trademarks and how to protect them?

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Many people know that European Union is a political and economic Union between 27 Member States. However not so many people are aware of what European trademarks are and why their protection is so important for every business operating in the EU.

In this article, I will try to give some clarification in that regard.

In general, European trademark protection has two layers. The first one covers the national trademarks in every Member State, for example, a German trademark, a French trademark etc. Many companies own such trademarks but they are suitable for situations where these companies operate only in the relevant country.

However the European Union is a Common market, that is to say, you can trade freely in every country part of it without any customs.

Because of this, the EU legislation created a second layer of trademark protection – the European trademarks that cover the territory of all EU Member States.

The reason why these marks are important for every company is that there is no need for separate trademark applications in every country. You can file only one application paying only one Patent Office fee and you will have a trademark valid in all 27 States.

This is crucial because it will allow you to enter the EU with your own registered brand while saving time and money.

But why entering the EU is so essential from a business point of view?

In a nutshell, this is the biggest and most lucrative trade and political union in the world with a population of almost 500 million people and annual GDP of 15 trillion dollars in 2020, representing around 1/6 of the global economy.

If you do business in the EU or you consider doing that in the future, entering this market with a brand requires good preparation. The reason on one hand is that without a registered trademark, your brand can be copied from other competitors and your options for legal defense will be more limited.

On other hand, as a general rule of thumb, every trademark is valid only for the territory where it is registered. This means that if you have a registration for your brand name only in your country when you enter the EU without preparation, you may face legal conflicts with owners of earlier already registered identical or similar marks in Europe. Bear in mind that there are millions of registered marks in the EU.

To escape such negative consequences you need to know how and to what extent your trademark can be protected in the EU in advance.

I will give you one simple example. Let’s say we have a US company entering the EU market for sports shoes with a brand that is registered in the US only.

The fact that this company has a US mark doesn’t mean that this protection will cover European Union automatically. The company needs to file trademark applications for every single country where it wants to operate. For the EU this can happen based on one application that will cover the entire Union instead of filing 27 separate applications for every country

What are the risks if the company skips this step and starts using its brand without initial checking what is the situation and without filing a trademark application?

Well, there are two main possibilities that can occur:

1. The First one is to start using the relevant brand without any issues, that is to say, no one else has a similar mark for shoes in the EU. You would think that this solves all problems. Not at all. Even without initial conflicts if you miss registering a trademark for your brand it is possible for someone else to copy your brand and to register it for the same products. Bear in mind that in the EU trademark protection arises based on a registration in contrast with the US where it arises based on the real market use. If this scenario happens, you will need to go through complex legal procedures in order to protect your brand name if this is possible at all because sometimes the conflicting mark can be registered in good faith.
2. The second option is for the company to face legal conflicts with owners of already registered similar marks immediately. This will mean that not only the company won’t be able to register its trademark but it can be treated as a trademark infringer and its business in the EU can be jeopardised.

Because of all of this, it is quite important in case you want to operate in the EU to do your homework in advance, which means to conduct a preliminary trademark search whether there are earlier similar marks and to file a trademark application in time.

In case you want to learn more, including how to register a European trademark on your own, check this new Udemy course: The Complete Course on How to Protect European Trademarks.

In this course, you will learn the most essential moments related to European trademarks protection, including

• What can be registered as a European trademark?
• How does this protection arise?
• What is the difference between a European trademark and a national trademark in a single EU Member State?
• What are the requirements for protection?
• What is the procedure for registration?
• How can you register an EU trademark?
• For how long will this protection be valid?
• What will cost you to register such a trademark?
• And some rules on how to maintain this protection in the time.

One key moment for every brand-building process

Trademark search is one of the most important parts of the brand-building process, although sometimes it is underestimated.

Most people think about brand building only as a marketing process where different marketing specialists develop a new brand name based on a variety of marketing requirements. 

That’s true up to a point but it’s not the whole picture. Why?

Well, the brief answer is that a good brand name doesn’t mean automatically that you can use it without legal obstacles.

What do I mean?

Let’s say, for example, that we have a company that hires a brand-building agency to create a new brand name for its business. The agency does the job and delivers the required brand. From that point we have two possible scenarios:

1. The company applies for a trademark before the local Patent Office and the brand is registered as a trademark without problems. However, another option here is the brand to fail registration because there are identical and similar trademarks for the same name that are already registered by other companies.
2. The second scenario is if the company doesn’t care about the registration of a trademark in which case the company uses its brand seamlessly, relying on pure luck. In this case, however, it is possible for the company to be accused of a trademark infringement by an owner of a registered identical or similar trademark if such exist.

All of that can happen because there is no preliminary trademark search in the brand building stage which to show whether or not earlier registered trademark rights exist.

Although you can use your brand without registration as a trademark, sometimes this could be a risk because it can evoke potential legal conflicts. Even without such problems, the brand owner will be in a more difficult position to defend its brand against infringers in the future because of a lack of registration.

So taking into account these options, trademark search is a vital part of the brand-building process. If you implement such a search in every stage of the process, you will be able to avoid conflicts and reduce risk to your business. Such searches will “red flag” possible issues in the early stages of your business development, which will give you more time to react properly.

In case you are interested in learning how to do trademark searches on your own, check this new Udemy Complete course on trademark search, where you will learn how to implement it for the territories of the US, Canada, the UK, Ireland, Australia and New Zealand.

Glaxo Group lost a colorful dispute in the EU

The General Court of the European Union has ruled in case T‑ 187/19, Glaxo Group Ltd v EUIPO.

It concerns an attempt by Glaxo to register the following European color trademark for inhalers and pharmaceutical preparations for the treatment of asthma and/or chronic obstructive pulmonary disease in Classes 5 and 10:

The EUIPO refused the application based on absolute grounds – lack of a distinctive character. In the appeal the Board of Appeal upheld this decision.

The BoA found that, in view of the goods, the choice of colours referred to the main active ingredients, the use for which the medicinal product is intended and its characteristics. It also found that the relevant public had a specific interest in having colours kept available for competitors in the market of pharmaceuticals, since patients are inclined to take a generic pharmaceutical product more regularly, and even more so if the presentation of the medicinal product is similar to that of the original product. The Boarded concluded that the sign was not distinctive at all.

The General Court of the EU dismissed the followed new appeal. According to the Court registration of single color is possible in very limited cases and under specific circumstances., otherwise such a color cannot be perceived as a source of trade origin.

The evidence submitted by Glaxo for an acquired secondary distinctiveness was not enough to overcome this conclusion.

For example, it wasn’t clear whether the provided opinion surveys in only 10 Member States were representative or not. The Court considers small samples (100-200 people) as not reliable.

Apart from this, the interviewees, whether healthcare professionals or patients, were shown only one image representing a shade of the colour purple. They were therefore not asked to choose from several images or even shades which one could spontaneously be associated with a particular undertaking.

The originals of the colour samples annexed to the surveys carried out in certain Member States include a shade of purple different
to that of the other samples, or even represent a certain type of inhaler and not a colour.

The Court regarded the sales data and advertisement materials only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as that provided by the surveys.

Source: Alicante News.

5 key moments before to apply for trademark protection

Many people believe that the most important part when you want to register a trademark is the registration procedure before the Patent Office.

This is a wrong view for the most part. There are some crucial moments regarding every trademark protection that have to be taken into account even before filing an application. This can define to what extent you will be able to register and use your trademark successfully.

1. Define what type of trademark you want to register:
   • Word mark – in that case your mark will be registered only as a word. For example: NIKE.
   • Combined mark – this mark consists of both word and graphic parts. For example the Adidas’ mark:
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   • Figurative marks – they cover only graphics without text. For example:
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   • Three-dimensional marks. They consist of the product’s forms. One of the most well-known examples of such a trademark is that of Coca Cola’s bottle:
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   • Other trademark types such as sound marks, smell marks etc. Bear in mind that you can choose only one type of trademark in your application. If you want to register all of them you need to file separate applications.
2. Be sure that your sign is not excluded from trademark protection. Trademark law prohibits registration of signs that cannot serve as a source of trade origin. They can be:
   • clearly descriptive signs;
   • signs that are not distinctive;
   • deceptively misleading signs;
   • geographical places of origin of goods and services;
   • signs consisting of flags, arms and other official emblems of states or international organizations which are registered in accordance with Article 6 of the Paris Convention;
   • signs contrary to public policy or accepted principles of morality.
   • etc.
3. Define the classes of goods and services for which you want your trademark. Every trademark application includes a list of the so-called Nice Classes of goods and services. The scope of trademark protection is valid only for specified goods and services. This means that your monopoly over the sign is limited to those classes. One simple way for classification is to use the TM Class tool.
4. Do a preliminary trademark search. This is absolutely critical moment. You need to check the Patent Office’s trademark database whether there are identical or similar trademarks for the same classes of goods and services. If this is the case it could mean that third parties can oppose your trademark or even sue you for a trademark infringement in case you start using the mark.
5. Consult a registered Trademark Attorney. The legislation in most of the countries allows a trademark application to be filed personally by the applicant. This can save some money from attorney’s fees. However, this hides some traps. In case you don’t have the necessary legal knowledge of how to go through the registration procedure it can lead to a refusal or opposition against your trademark. From that perspective you can lose not only your application but to waste some money. So you need to think carefully to what extent you are prepared to do the job and whether you need help in order you to avoid legal pitfalls.

More or less these are some of the main steps that you need to consider before filing a trademark application. They can save you time and money if implemented well.

In case you want to learn how to do a preliminary trademark search on your own, in order to select the best brand name for your business, check this new Udemy Complete course on trademark search.