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October 2012
New Workplace Pensions Regulations & Changing Employment Terms
September 2012
Luxury Goods And Services, Website Contracts and Cookies
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July 2012
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Visit Our Archive for previous newsletters covering Hospitality, Recruitment, Intellectual Property, Food & Drink, Commercial Property, Employment, Hotels, Restaurants, Start Ups and many other topics
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Visit Our Archive for previous newsletters covering Hospitality, Recruitment, Intellectual Property, Food & Drink, Commercial Property, Employment, Hotels, Restaurants, Start Ups and many other topics
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Visit Our Archive for previous newsletters covering Hospitality, Recruitment, Intellectual Property, Food & Drink, Commercial Property, Employment, Hotels, Restaurants, Start Ups and many other topics
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Welcome to our April/May Newsletter!
 | | Photograph of Shainul Kassam by Lucy Elliott of www.lucyelliottphotography.com |
Well the weather certainly is very temperamental at the moment - we are hoping we will get another bout of sunshine for the next bank holiday coming up at the end of the month! When the sun is out, chances are you'll feel less like working and more like kicking back, drinking frappuccinos and indulging in some retail therapy. On the High Street the big brands are often locked in battle.
Just this week, Swiss premium chocolate makers Lindt & Spruenglo lost a court battle in Germany to protect its gold foil wrapped Easter bunnies from a family-owned German rival, Confiserie Riegelein. They had been fighting since 2000 in a Trade Mark battle, after Lindt made an application to OHIM and OHIM rejected it shortly after. The German Federal Court of Justice finally rejected the appeal by Lindt on Thursday. Lindt have respected the Courts decision even though it is not in agreement with their interpretation. They have invested substantial amounts into increasing brand awareness, and state they will continue to do so in the future. This just shows the importance of ensuring you register your trademark before incurring significant expense in building a brand, as even a small family run business can win against a large market leader for failure to protect a Trade Mark. Our first article covers this topic and gives advice on the importance of registering a Trade Mark and how we can assist you.
In addition, if like many of our clients you run an international or European business, it is important not to just register a Trade Mark in the UK but also throughout Europe and possibly worldwide. The process for an EU registration is itself more cost effective than making individual applications in each European country. Our second article highlights what a Community Trade Mark (CTM) is and the importance of the search and application process.
Our client of the month is The Egyptian Cotton House, for whom we carried out some CTM work recently. This case was a prime example of the importance of carrying out searches at the outset, as we discovered that their competitors owned pre-existing and protected trademarks in their sector.
Our case update this month focuses on Specsavers vs Asda, where Specsavers had to bring Trade Mark infringement action against Asda for unauthorised use of their logo in a case dealing with the concept of "passing off".
If you have any queries or need advice in relation to any of the matters set out in this newsletter or any other legal issues, do not hesitate to call us on
020 3102 6372 or e-mail us at enquiries@fortunelaw.com. We are always happy to help.
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Shainul Kassam
Fortune Law Solicitors
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Client of the Month: The Egyptian Cotton House
Ayman Ouf
 "I was referred to Fortune Law by a business contact, from whom I learnt about their experience in intellectual property work. I was in the process of registering a Trade Mark both in the UK and in Europe.
I found Shainul and her team to be thorough, fast and reliable. Since instructing them on the Trade Mark applications I have also asked them to advise me on various bespoke commercial contracts related to other business interests.
I would highly recommend Fortune Law."
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What is a Trade Mark?
A Trade Mark refers to a sign which is used by individuals and companies wishing to differentiate their goods from those of other traders. It is a way of saying "this is mine". Popular brands are memorable as a result of a captivating name, slogan, image etc. Trade Marks are strongly linked to branding. A brand provides the consumer with reassurance as to the quality, price, and origin of the product. Brands communicate information about the product.
What can function as a Trade Mark?
Words can function as a Trade Mark and are very common. Sometimes, new words can be created to function as a Trade Mark, or in other words, a "brand". Unique words like Coca-Cola, Microsoft and McDonalds can be very strong Trade Marks. In today's world of social media, a good word mark can be a huge advantage to your company.
Symbols can also function as a Trade Mark and are often combined with words to create a hybrid mark. While symbols can be more difficult to develop recognition by the public, once established they provide an advantage for marketing through visual media. Examples include the Nike "tick", the McDonalds "M", and the Twitter "Bird".
Sounds can also function as a Trade Mark. Like symbols, there can be more difficult to develop recognition by the public. Once established, sounds also provide an advantage in marketing through diverse media, for example
Directline's registration of the trumpet jingle, well known from television and radio commercials.
Benefits of registering a Trade Mark
By registering a Trade Mark, it gives you the exclusive right to use your mark for the goods and services that it covers in the UK. If you have registered a Trade Mark, you can use the ® symbol next to it to notify third parties of your registered Trade Mark. If you use that symbol and you have not registered the Trade Mark, then this is an offence.
By having a registered Trade Mark:
- People can be put off using your Trade Mark without permission
- It is easier to take legal action against anyone who uses the Trade Markwithout permission
- It allows Trading Standards Officers or Police to bring criminal charges against anyone using your Trade Mark
You can sell it, franchise it, or let other people have a licence which allows them to use it.
Procedure following an application
Examination
Normally, common sense rules when deciding what can be used as a Trade Mark. It must be distinctive and capable of graphic representation. It can range from being a word, slogan, sound or even a smell.
Once an application has been properly filed, the Registry will issue an official filing receipt. This details the information supplied on registration including the application number and filing date. There is then a substantive examination of the application where the mark is considered as to whether it meets the registrability criteria under the Trade Mark Act 1994, and also whether there are conflicting registrations of identical or similar marks. Once the application is complete, a report is sent by the Registry, detailing any objections and setting a period of six months for a response. These objections can be minor, e.g. small changes to the specification, or substantive, e.g. having a indistinctive and generic mark.
Once any objections raised by the examiner have been overcome, the application must be advertised in the Trade Marks Journal before it can be registered. The journal is a weekly publication issued by the Registry online. There is a two month period during which interested parties may object to the registration of the mark, in relation to all or some of the goods and services listed in the application.
Opposition proceedings must be commenced within two months of advertisement.
Once an opposition has been filed, the application will not proceed to registration until the opposition has either been withdrawn or lost by the opponent.
Oppositions begin with the parties stating their position, supported by some form of evidence, and then a hearing. The opponent sets out why he objects to the application in a notice of opposition and statement of grounds. The applicant then replies by filing a defence and counter-statement. The parties may agree a cooling off period of nine months which suspends the opposition timetable in order to allow for an amicable resolution.
Assuming there is no opposition, or an opposition has been resolved, the mark will proceed to registration, and a certificate of registration will be issued.
Registration runs from the date of filing, and will last for ten years. It can be renewed for further periods at an additional cost. The timescale normally depends on the nature of the mark, and on the case-load of the assigned examiner. It is possible, however, that if the mark is registrable and there are no objections, a UK Trade Mark registration can be obtained in a few months.
If you
need advice on your choice of company name or if you wish to incorporate a company or carry out Trade Mark searches,
please do not hesitate to get in touch:
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If you want to protect your business Trade Marks internationally, a different route needs to be be taken. There are generally three options:
- Register the Trade Mark individually in each country
- Apply for a CTM at OHIM which covers all member states of the EU, some 27 territories.
- Apply under the Madrid Protocol, which covers all contracting states specifically designated by the applicant.
A Community Trade Mark (CTM) registration is a single registration which provides Trade Mark rights in all twenty-seven European Union (EU) member states. The process is completed either directly through the Community Trade Mark Office (OHIM) or via the UK Patent Office. There are usually two stages involved - the Trade Mark Search and the Trade Mark Application. Similarly to a UK Trade Mark, a CTM is valid for 10 years and can be renewed indefinitely for periods of ten years.
Trade Mark Search
The search will investigate whether there are any similar Trade Marks registered or whether there is any reason why the Trade Mark might be unacceptable under EU regulations. The search is conducted with OHIM and Patent Office and the length of time taken can vary from between 1 to 3 weeks. This search is not obligatory but once you have applied for a Trade Mark, you can't alter it nor have your application fee refunded. It is therefore advisable to undertake a search in all cases.
Trade Mark Application
After filing, OHIM will consider whether an application meets formal filing requirements, including requirements relating to the classification of goods/services. Once any objections relating to classification have been resolved, OHIM will carry out substantive examination to assess whether the sign for which protection is sought is a Trade Mark and, if so, whether it is the type of mark that is registerable (examination on absolute grounds). If any objections are raised, there is an opportunity to respond to the objections.
OHIM has no power to refuse an application on the basis of any earlier conflicting applications/registrations (i.e. there is no examination on relative grounds).
If an application is accepted, details of the application will be published in the Community Trade Marks Bulletin and third parties will have three months from the publication date to oppose the application. An opposition can only be filed on the basis of relative grounds and must be filed by the owner (or in some circumstances a licensee) of the earlier rights upon which it is based.
If no opposition(s) are filed (or the application is not successfully opposed in its entirety), then the application will proceed to grant and a certificate of registration will be issued once a registration fee has been paid. A CTM registration lasts initially for ten years from the filing date. However, provided that renewal fees are paid every ten years, the duration of the registration may be extended indefinitely.
As a Community Trade Mark is a unitary right, if grounds for refusing a CTM application exist in respect of one or more member states, the application will be rejected as a whole. In these circumstances, it is possible to convert a CTM application into national applications, retaining the filing date of the CTM application, in those member states where grounds for refusal do not exist.
The length of time taken until registration can vary greatly depending on whether there are any objections to the mark. However even without any objections the whole process can still take more than 12 months.
If you require any assistance regarding CTM applications, please do not hesitate to get in touch: 020 3102 6372 or enquiries@fortunelaw.com.
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Trade Mark Infringement: Specsavers v ASDA
 Specsavers owns several registered Community Trade Marks for the word mark "Specsavers" and its logo, with and without the wording. None of the marks was registered in any particular colour but, in practice, Specsavers uses the logo in a particular shade of green.
Specsavers brought an action for Trade Mark infringement and passing off against the supermarket chain Asda Stores Ltd ("ASDA") for the use by ASDA of a logo in green text on white ovals, containing "ASDA" and "Opticians" respectively and wording such as "Spec saving at ASDA".
The complaint against ASDA was that of "free riding", that is to say taking unfair advantage of the distinctive character or repute of the Specsavers mark.
The judge found that the strapline "Spec savings at Asda" took unfair advantage of the reputation of Specsavers' marks by creating a link with Specsavers and also used the concept of Specsavers as a value provider. This infringed Specsavers' Trade Marks and logo marks under Article 9(1) of Community Trade Marks Regulation 2009/207/EC (Article 9(1)(b)). Further, ASDA's logo infringed Specsavers' logo marks when used as part of a composite campaign, despite the lack of colour in Specsavers' registrations.
Interestingly, the Court of Appeal has referred to the Court of Justice of the European Union to decide on whether it was permissible to take into account the reputation enjoyed by Specsavers with respect to the green colour which had been used by Specsavers for many years.
Specsavers International Healthcare Ltd and others v Asda Stores Ltd [2012] EWCA Civ 24
If you would like further advice on protecting your intellectual property including registering your Trade Mark as a UK Trade Mark or Community Trade Mark, or if you have been accused of using someone else's mark, please do not hesitate to get in touch:
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