UGG boots – a descriptive term or a trademark in the US?

Dennis Crouch, the author of the IP blog Patentlyo reports about an interesting trademark dispute in the US.

The case concerns the term UGG which is used in Australia for describing sheepskin boots. The terms derives from a quote by the surfer Shane Stedman who said that these boots were ugly = ugg.

Different Australian companies use this term for such boots, which are well-known, and from that perspective the term is generic in the country.

The problem arose several years ago when one of those Australian companies imported UGG boots in the US.

A lawsuit for trademark infringement was initiated by Deckers Outdoor Corp based on already registered US trademark for UGG for the same class of goods.

The case was successful for the US company and the Australian importer appealed before the US Supreme Court referring the following questions:

1. Whether a term that is generic in the English-speaking foreign country from which it originated is ineligible for trademark protection in the United States.

2. Whether and, if so, how the “primary significance to the relevant public” standard in 15 U.S.C. § 1064(3) for determining whether a registered trademark has “become” generic applies where a term originated as generic before registration.

It is interesting what will be the Court conclusion on this matter. Nevertheless the case is indicative for the fact that one and the same term can be a trademark and a descriptive term in different countries. This can create risks for both the trademark owners and the users of the term depending where it is used.

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One crucial thing before filing a trademark in order not to waste your money and time

When you have your own business sooner or later you will start thinking about your branding and how to protect it from unfair use by competitors.

All of this is normal because when one business takes off, gaining some traction and achieving some success, other market participants will try to take advantage of its reputation and recognizability amongst the consumers. 

From that perspective, every business owner should be prepared with a proper trademark protection strategy.

Building a good brand name is not an easy task. From one side, such a name should follow so many marketing requirements, from the other the name should be unique, that is to say, it must not be registered as a trademark by someone else.

This, in particular, is essential. If your brand is already registered with the Patent Office of the country where you are operating as a business, this means that you can become a trademark infringer even without suspecting this.

It can be a trap because in such cases a lawsuit can be really expensive and in the end, you probably will need to change your beloved brand.

What is the solution in such situations? Well, it is a simple one, just check the official trademark database of your state Patent Office. This will show you whether there are earlier marks or not.

What do you need to know when you conduct such searches?

In brief, the things that can be bear in mind are:

1. Every trademark is valid only for the goods and services for which it is registered. This means that when you compare two marks they have to share common G&S. If this is the case it could create a problem. All goods and services are grouped in classes called Nice Classes. You can classify your G&S using this free tool TMCLASS.
2. Trademark protection scope covers not only other identical signs but similar too. For example, a trademark INEX for bicycles can stop a later mark INIX for bicycles.
3. Assessment of identical marks is relatively easy. Both marks should be absolutely identical in every aspect. They have to be for identical G&S too.
4. Assessment of similar marks, however, could be tricky. This requires in-depth legal knowledge and understanding of the case law in the relevant country.

It is advisable, such searches to be done through the brand-building process because this will allow you to make modifications to the brand before launching and filing a trademark application. It can save you a lot of money and time. 

In case you want to learn how to do trademark searches in the US, Canada, the UK, Ireland, Australia, and New Zealand you can check this Udemy Complete course on trademark search.

Ferrari overcame a refusal for its 488 Pista Spider design in Australia

Ferrari has successfully overcome a refusal by the Australian Patent Office for registration of its vehicle model Ferrari 488 Pista Spider.

The case concerns a design application for this model filed in 2018 in Australia. The design was refused by the Office because it was similar to prior design of Ferrari 488 Spider.

As it is known, you can register a design only if it is new and original.

Ferrari didn’t give up. They hired the well-known expert in the field of luxury cars Anthony Moss to make a professional analyse of both designs. According to him they were sufficiently different taking into account that in the case of sport luxury vehicles consumers pay attention even to smallest details.

In the appeal the Office changed its position. It agreed that when it comes to car design, authors freedom to innovate is somewhat limited because they always have to use wheels, doors, bonnets and mirrors. So in that regard consumers would apportion more weight to areas where the designer has freedom to innovate, which in this particular case was the front and rear section of the car.

In the case at hand, the new model has some differences. For example, an air damn and air scoop running through the front bumper and up through the bonnet of the 488 Pista was different compare with the older design. The air damns and the wrap around diffusers in the rear of the new model were also considered different. 

This case shows clearly that protection of industrial designs can be quite tricky sometimes. The freedom of innovation has to be bear in mind and the field for which the designs will be used. This can be crucial for the success or failure of the design application.

Source: Phillips Ormonde Fitzpatrick – Peter Wassouf, Lexology.

Australia joins TMView

EUIPO reports about the accession of Australia to the global trademark database TMView. In this way 1.6 million Australian trademarks will be added to the database, which will give access to almost 60 million marks from around the world.

For more information here. 

One key moment when you launch a new brand

Launching a new brand in the market is always a challenge. It requires lots of effort and good business and marketing strategies as a ground.

Before launching the brand, however, you need to have an appropriate brand name which in most the cases is a product of a brand-building process.

You have two main options in that regard, to try to create the brand name on your own, in case that you don’t have a big marketing budget, or to hire an agency that will do that for you.

In both of the cases, however, there is one specific moment that you need to pay attention to. It is related to the question to what extent you can use and protect your brand.

It can sound not so an important issue at first glance but it is. The reason for this is that if you start using a brand for which there are already registered trademarks by someone else, you risk becoming a trademark infringer. This can create a myriad of problems for you including the need to re-brand and pay compensations.

And what is the chance for this?

It is not negligible at least because there are millions of registered trademarks in the world which in turn require a lot of attention when a new brand is introduced in the market.

One of the ways to escape such negative scenarios is a trademark clearance search to be implemented before the launch. This can save you not only time but money but will protect you from legal pitfalls.

If you want to learn how to do such trademark searches in the US, Canada, the UK, Ireland, Australia, and New Zealand, you can check this new and useful Udemy course on this topic here.

Do you want to search for trademarks on your own?

When you want to launch a new brand in the market one of the key moment is to be sure that there is no other identical or similar marks to yours. This is a crucial moment because otherwise after your launch you can be accused of infringement of rights by owners of earlier trademarks.

It’s not enough to check for such earlier marks just before the launch, it’s much better if you do this throughout the brand-building process because you will be able to make the necessary changes in your name without losing time at the last moment.

You have two main options to search for trademarks. The first one is to ask the relevant Patent Office to do that, which is possible because most of the Offices offer such a service. The downside here is that for every search you need to pay a fee and to lose some time due to the fact that such search reports are not instantaneous.

The alternative is to do this search on your own. Is this possible? Yes, it is. Most of the Patent Offices have free and open online databases for trademarks because this information is public. You can check them searching for your trademark.

However, you need to know some of the basic principles of trademark protection and how these database works and their nitty-gritty.

If you want to learn how to do such searches and to save time and money you can check this new Udemy course on this topic which will be launch very soon. It will teach you to perform trademark searches for the territories of the US, Canada, the UK, Republic of Ireland, Australia and New Zealand.

For early birds that sign up, there will be free coupons.

For more information here.

Swatch prevailed over Apple in a trademark dispute

A recent trademark battle between Apple and Swatch has ended with success for the Swiss company.

The dispute at hand concerned a trademark application for ‘one more thing’ filed by Swatch.

Apple filed an opposition arguing that this phrase was well-known by consumers in relation to its products because it had been used in their launching.

The Australian Patent Office disagreed stating that according to the evidence Apple had used this phrase only once. This wasn’t enough to constitute real trade usage for the purpose of the trademark opposition procedure.

In addition, Swatch emphasized that the idea for this trademark was inspired by the  “film noir” genre and in particular by the character of Colombo detective who regularly used this phrase in his investigations.

Source: WIPR.