In times of economic crisis the things that can differentiate one company could be critical for its market success.
Some parts of this differentiation can be based on intellectual property rights such as trademarks, patents, industrial designs, copyrights, domain names etc.
One important moment in that regard is how these rights are managed in order to provide the company owner with the necessary economic benefits.
This is essential because in the case of poor management the consequences for the market position of the company could be quite negative.
All big companies have organisations and policies on how to deal with the management of their intellectual property portfolios.
In the case of small and mid-size companies this is not possible all the time because it requires human and financial resources.
Nevertheless there are some things that can be done which will help SME do preserve the value of their intellectual property:
Make an audit of everything that can represent the intellectual property in the company – the main goal is to discover what the company has. For example some products can be sold under a brand name which is not protected as a trademark. Another example is for key technology that is not protected by a patent or trade secret.
Evaluate the information from the audit and identify the key value of intellectual property within the company.
Proceed with receiving the necessary protection for those of the assets that can be registered with the Patent Office as trademarks, industrial designs, patents etc.
Create a database for your intellectual property portfolio in order to manage it properly and to keep yourself on date with its status.
Go over the portfolio and identify the possibilities for licensing your intellectual property to other companies. This can be an additional revenue stream for your company.
It has become recently known that the famous climate activist Greta Thunberg has filed several trademarks related to her names. All of them are European trademarks for classes 35, 36, 41, 42:
FRIDAYS FOR FUTURE
According to Greta Thunberg, the reason to seek trademark protection was the fact that her names and the hashtags that she uses were subject to unauthorized, falsely and misleading use by others claiming relation with her climate movement, which wasn’t true.
The practice famous people to register their names as trademarks are not new or strange. Quite the contrary, it is understandable because the names of such people can create a kind of value and reputation that deserves to be protected.
The key moment here, however, is to what extent such registrations will be effective. As it is known, 5 years after a trademark registration, every third party can try to cancel it if the mark is not genuinely used for the goods and services mentioned in its application.
Recently the famous graffiti artist Bansky had such problems regarding his trademark.
All of this comes to show that only registration is not enough when it comes to trademark protection. A good entire strategy is necessary in order for one brand name with value and reputation to be effectively protected in the market in the long run.
Hans Eriksson published an intriguing article for IPKat discussing the issue on color assessment of trademarks in Sweden.
Until that moment, the Swedish practice in that regard was to accept that trademarks in black and white covers all color combinations for the purpose of trademark assessment in case of disputes.
Not any more. The Swedish Patent Office and the Swedish court change that position implementing the European court decision in case C-252/12 Specsavers, according to which the registration of a trademark in black and white cannot be granted a scope of protection that automatically covers all possible color combinations.
Sweden alongside Denmark and Norway was one of the few countries in the EU which has continuously used this broader approach in color assessment of trademarks.
This change of the local practice will reflect on all future applicant who has to bear in mind that when they build their trademarks strategies for the territory of Sweden.
Rosie Burbidge published an interesting article about the Lego’s IP strategy, discussed through the Second Brand Protection Conference in Frankfurt.
The article goes through the different stages of intellectual property protection adopted by Lego and the different approaches used by the company in order to prolong this protection and to strengthened it. For example, the company has not only a trademark portfolio but domain names one too, which serves to enhances the brand protection on the internet.
It is quite fascinating how the Duch company uses social media to interact with its consumers and to explain gently the need for its IP protection or the fact that a special video was created which was given to customs authorities around the world to help them to distinguish original Lego product from fake ones
Claire Jones (Novagraaf) published an interesting article for Lexology which presents Tesco’s approach regarding the launch of its new retail stores in the UK and what is common with the trademark strategy that the company used.
Tesco, as one of the biggest retailer in the country, decided to launch new stores that would compete directly with Lidl and Aldi under Jack’s brand.
The company desire was to keep this in a complete secrecy because of which Tesco signed non-disclosure agreements with its employees and partners.
So far so good, but what about the trademark protection that this new brand needs. If the company had filed an application in the UK or the EU this would have revealed its intentions to some extent.
To prevent this, Tesco filed for a trademark Jack’s in Sri Lanka for all classes of the Nice classification.
You may ask how this does help the company bearing in mind that the stores are in Europe?
Well according to the Paris Convention for protection of industrial property, if you file for a trademark in one Member State of the Convention and within 6 months you do this in another Member State for the same mark, your second application can use the priority date of the first one.
So in the case of Tesco they did exactly this. Of course, this by itself doesn’t mean that you will register successfully your mark because, for example, owners of earlier identical or similar marks can oppose you. Nevertheless, such a strategy can help you to hide your moves to your competitors.
The US Kirusa initiated a lawsuit in the US against Instagram which aim is to find non-infringement and non-dilution of the Instagram trademark.
The case at hand concerns a registered trademark for Instavoice by Kirusa which was attacked with cancellation by Instagram based on its earlier well-known trademarks.
According to Kirusa, there are no similarities between the signs because the prefix Insta has weak distinctive character, it means something instant, fast.
The company claimed that its registration for Instavoice mark has been done in good faith at least because the company is not a direct competitor to Instagram and do not threaten its business model.
What’s more, Kirusa asked the Court to order Facebook, as an Instagram’s mother company, to stop blocking Kirusa’s profiles and applications in the social network.
This case is part of a more broader approach by Instagram to prevent using the Insta and Gram prefixes and suffixes as trademarks. In light of that, the company has been attacked more than 200 such trademarks trying to accomplish this strategy.
Martin Hendry (Virtuoso Legal ) published an interesting and instructive article for Lexology which discusses the options one entrepreneur has in order to register its trademark.
The first case is when the business owner files for a trademark by himself without using professional help by a trademark attorney. The example presents a story of a Plumber company, which wants to develop a franchise network. The company’s owner in attempt to save some money filed a trademark application by himself without any trademark clearance search. In the meantime, he invested in advertisements and branding. The result was an opposition by a third party and financial loses after that. You have to bear in mind that in such situation a legal proceeding for trademark infringement can be activated by the owner of the earlier rights too.
The second case concerns a situation where the owner seeks support of a trademark attorney who does a trademark search for earlier already registered identical or similar marks and analyses the results. In that way, they can identify the chances for a successful registration and the risk for prospective problems.
But what are the chances to run into identical or similar marks?
Not so small. Only the TMView database gives access to more than 48 million trademarks around the world.
Not only the article proclaims that professional help is advisable in such situations but also the need for an IP strategy which to pave the way for a successful exploitation of IPRs after that.
Many companies and entrepreneurs underestimate these elements of their business which in some cases leads to a serious headache and financial loses.