A BRITISH couple have won their legal battle over a logo they designed for their upmarket tea shop

The dispute has ended after German-based tea company Teekanne withdrew its objection to the logo just before the case went to a trademark tribunal hearing. Jemma Swallow and Mike de Souza, the owners of The Tea Box in Richmond, South-West London, could have faced expensive re-branding and sky-high legal bills if the case had been pursued.

German tea company Teekanne objected to the hand-painted teapot design, drawn by Miss Swallow, in December last year shortly after it was submitted to the UK Intellectual Property Office.

In accordance with the trademark approval process, the UK Intellectual Property Office published the hand-painted logo in its online journal allowing other companies to raise objections.

Teekanne, which has a staff of 1,300, then argued the logo was ‘confusingly similar’ to their own and that their trademark was being infringed.

Miss Swallow and Mr de Souza decided to fight the case and as a result of the publicity were contacted by a patent specialists’ law firm who offered to represent them for free.

The traditional English tea-room opened in October 2007 in an attempt to provide an alternative to the growing numbers of coffee chains springing up on the high street.

Teekanne, which means teapot in German, has been trading for 100 years and has registered its logo as a Community trademark in all 27 EU member states.

Miss Swallow said that the couple had invested their life savings into the Tea Box and that she hoped this ruling would help other small businesses that didn’t have the time or money to face legal challenges from bigger conglomerates.

She said: “We felt like we were being bullied by a massive company, like a mouse standing beside an elephant.

“They wanted to have the sole use of a teapot logo trademark in Europe, which we think is wrong,” she added.

The logo, painted by Miss Swallow, was designed as an optical illusion to show both a teapot viewed from the side and a teacup viewed from above.

Teekanne’s logo is a white design on red background in a circle whereas the Tea Box logo is a black and white hand-drawn design with green swirls in the middle. Legal experts, commenting before this week’s decision, thought it impossible to predict whether the UK Intellectual Property Office would uphold the Düsseldorf-based company’s monopolistic claim over a functional object.

However, in December last year Lego found themselves unsuccessful in registering their classic red brick as a trade mark by European judges. They agreed that one company could not in fact have a monopoly over a functional object such as a brick.

After an early indication from the UK Intellectual Property Office that they would most likely find in favour of the Tea Box, Teekanne decided to withdraw their opposition to the company.

Miss Swallow said: “Our victory shows that trademark laws are being used for the right reasons, to protect people’s intellectual property rights, not as anti-competition tools.”

Trade group insists on stronger Intellectual Property Protections for Music and TV Industries

The International Intellectual Property Alliance has stated in a recent report that protection of Intellectual Property rights needs improvement in Russia and China. The annual report discovered that these and other countries fall short of providing satisfactory copyright protections.  

China may be the main areas for improvement, but even larger music and TV industries need to take a longer look at IP protection. For instance, in the US the Recording Industry Association of America, the American Association of Independent Music, the American Federation of Musicians, the American Federation of Television and Radio Artists, and the National Music Publishers Association recently issued a statement urging the US government and others to take action. The group said that current economic problems make it more important than ever to ensure that artists don't face unfair competition.

Copyright has come under particular scrutiny, with the threat of piracy threatening to crush the music and TV industries with albums and hit television shows like ‘24’ hitting street stalls and the internet often months before official release.

The joint statement reiterated that piracy creative genius threatens music distribution and the livelihoods of those in the music industry, while allowing illegal enterprises to profit. The Internet, with torrent sites, has helped to hurt copyright protection with the free availability of films, TV shows, music as well as new music by unsigned talent who then have material poached due to not being made aware of the importance of copyrighting their material.

The group called on global leaders and Internet service providers to develop and implement policies and practices to fight what they believe are syndicates that have developed a business of piracy.

In particular, they highlighted the importance of ISPs who were urged to play their part in preventing the use of their networks for the distribution of infringing materials. They could mainly do this by policing more websites and being much quicker to hunt down electronic trails on the Internet to find the source of leaks of new music and video that hits the Internet before the shops.

GOOGLE Settles Patent Claim

Media giant Google has agreed to settle an intellectual property lawsuit brought against it by inventor Judah Klausner, who has already settled similar cases with companies including Apple, Skype and LG Electronics. Despite filing a counter-suit late last year, communications company Verizon also settled.        

His company, Klausner Technologies Inc., holds patents covering visual voicemail technology in the U.S., Europe and Asia. A key component of new touchscreen phones – including Apple’s iPhone - the technology enables voicemail to work more like email: visual alerts of voice messages are sent to computers or phones, allowing users to selectively retrieve them. In 2007, Klausner sued Apple and six other companies for $360 million dollars for violating his patents.  

This latest case was dismissed ‘with prejudice’, meaning it cannot be revived in court by either party. Declining to elaborate further on the terms of the deal, Klausner simply told Reuters “Google has a license to Klausner's visual voicemail patents”.

Google owns two types of services that could be broadly affected by these patents.

It offers Web-based phone services, and it has also built the Android open software platform for smartphones, which it has licensed to companies including T-Mobile and Vodafone. It is unclear to what degree the agreement covered Android software when it was sublicensed by other parties.

Klausner first sued AOL in 2005, and has said he would consider filing lawsuits against additional companies that failed to license his patents, including Web-based phone service providers, but that many smaller companies have opened settlement talks recently.

Separately, T-Mobile agreed to licence Klausner’s European visual voicemail patents in 17 European countries. The agreement covers a new visual voicemail service that T-Mobile's German unit announced at the CeBIT IT trade fair last week.

A T-Mobile spokesman said: "We want to offer what currently has a working title of 'visual mobile box' to all our customers, not just those using the iPhone, for example."

"The visual mobile box will be available in Germany soon, definitely in the first half of the year," he said. "The application will be available on all phones that have the hardware to support it."

Klausner became famous in the 1970s as the inventor of the standard PDA. Ironically, one of Klausner’s biggest targets in recent lawsuits, Apple, passed up the chance to license the patent for the PDA. General Instruments and Hewlett-Packard also turned down the design before Toshiba accepted it, licensing the patent it later bought outright.

Klausner also licensed several other patents on personal electronic organizers, for example for address books, to consumer electronics makers in the 1970s and 80s.

Grab the market

Wooden prototype to US distribution in three years? Graham and Susan Renny are learning how to deploy the IP in their Grab-o-saurus

One late summer afternoon in 2005, Graham Renny stood in his kitchen under the Black Mountains watching his wife pick up horse manure in their field - a back-bending task that you cannot skip.

But did it have to be such a chore, thought Renny? A former engineer in the oil industry, he disappeared into his shed for a week to see if he could find an alternative to shovel and rake.

He emerged with a wooden device like a pair of eagle’s claws that could pick up detritus from above rather than lifting it from below. He gave it to his wife, Susan, to try. She cleared the field in half an hour, easily halving the work and saving herself any back pain.

When their friends had a go, it quickly became clear that you could use it for all sorts of tasks round the garden. As anyone who has cut a hedge will tell you, the worst part is picking up all the cuttings.

Now 72 and 69, Graham and Susan felt excited enough to risk their pension pot to see how far they could take the idea. Helped by their two sons, they formed a company and wrote a business plan.

Then they asked all their family to put suggested names for the product into a hat. The "Grab-o-saurus" was the clear winner.

Four grants from Coventry University have taken Graham’s wooden prototype through to a production model. First, they trademarked the name. Then they applied for a patent. To their surprise, it was granted in 15 months.

A US patent followed even more quickly. Europe is next, then Hong Kong. Described as a long-handled, scissor-action, waste-collection device, Graham’s idea has been protected in full.

Just before Christmas in 2008, Radius Garden, a leading name in the US, signed a licence to make and distribute the Grab-o-saurus in North America. It is a deal that could open the way for global deployment in 2009, says Susan, a former journalist, who runs the day-to-day business.

In negotiating the agreement with Radius, the patents and trade marks were "massively important," she says. "Without them, they wouldn’t have looked at us. They are hard-nosed and straight. If you play ball, you will be fine."

So far, the Rennys are selling 4,000 of the Grab-o-saurus a year in the UK. Made by a plastics moulder in Redditch, the distribution is mainly through online catalogues, although talks are being held about going into garden centres.

At present, the Grab-o-saurus comes only in black and sells for £24.99, on which the Rennys make £9. Including their grants, a total of £80,000 has been spent in developing the product since Graham’s moment of inspiration in 2005: £50,000 has gone on IP and £30,000 on tooling.

In the UK, the aim is to push sales up to 10,000. In the US, Susan is expecting a lot more noughts than that.

February 2009

An Indian Takeaway is being threatened with legal action over its name

Muhammed Ali opened Malik's, in Chesterton, in August and says business is booming. The businessman faces having to start again after being accused of breaching a trademark rights owned by a restaurant 150 miles away reported by Staffordshire newspaper The Sentinel.

Beta UK, which runs two restaurants named Malik's Tandoori Restaurant, one near Maidenhead and the other in Buckinghamshire, has sent Mr Ali a letter to change the name of his London Road takeaway or face court action.

Mr Ali said: "I thought it was a joke when I received the solicitor's letter. Malik is a very popular Islamic surname. It used to be my name before I changed it and four of my children are called Malik. It's like being called Mr Smith.

I chose the name Malik's for my takeaway because I wanted it to be named after my children, not because I wanted it to be the same as a restaurant 150 miles away. There's no way I'm changing my takeaway's name. I've put too much hard work into this and built up its reputation just to be told to change my name. I would have to advertise all over again and that would cost a lot of money."

Solicitors representing Beta UK say the firm has the trademark rights to Malik and Mr Ali is using the name to make a profit.

The Malik's Tandoori near Maidenhead was named the Best Restaurant in the South-east at the British Curry Awards in 2005, 2006 and 2008. Its visitor book is signed by celebrities including Peter Andre and Jordan, model Kelly Brook and former England footballer and manager Glenn Hoddle.

Solicitors of Beta commented:

"My client holds the trademark to the name Malik or Malik's. There are two other restaurants in the country that use the name Malik and in both cases we were satisfied the ownership was by a man called Malik and decided not to take action. It appears that Mr Ali runs Malik's takeaway despite not being called Malik himself.

There is no evidence to show any reason why he should be entitled to breach my client's trademark. My client is intending to issue legal proceedings unless something changes.

Unless we get a proper response which satisfies us, we would be looking to get an injunction to prevent Mr Ali from using the name Malik for his takeaway. We would also be looking for damages suffered and for any legal costs to be reimbursed."

Counterfeit brands market close to US$ 4 billion p.a. in the Middle-East

Saudi Customs Authority has signed an MOU with International Trademark World, a leading KSA-based organization engaged in the fight against commercial fraud, counterfeiting and trademarks protection in the Saudi Arabia.

The MOU aims to increase cooperation between public and non-government sectors in the campaign against commercial fraud and counterfeiting. The agreement was signed by Ibrahim Bin Suliman Al Mousa- Director General of Administrative Development Department - Saudi Customs Authority, and Abdullah bin Mohammed Al Arifi Chief Executive Officer - International Trademark World Company.

“This MOU has been signed at the direction of His Excellency Saleh bin Minaih Al Khiliwy, the Director General of Saudi Customs, as he personally believes in the importance of cooperation and integration of roles between the public and private sectors.

It is our strong desire to share and take advantage of diverse areas of expertise and skill sets various organizations have built. This will be critical in our pursuit of our common goals of protecting our country against negative impacts of counterfeiting.

This is important to protect ourselves from all kinds of adverse effects - economic, health and financial,” said Ibrahim Bin Suliman Al Mousa. “We have chosen International Trademark World as a partner primarily for its experience in the fight against fraud, and also because it represents a number of brands affected by this phenomenon, and therefore shares our concerns.”

This MOU envisages provision of technical consultancy by ITMW to Saudi Customs in the field of commercial fraud and counterfeiting, including providing early information on spurious goods as well as training and expertise on identifying fakes from originals, across various product categories.

“ITMW has also undertaken to furnish Saudi Customs with information on new developments in the field of commercial fraud and counterfeiting, locally and globally, detailed statistics of fake and bogus products, brands affected, such as Nokia, Toyota, Mercedes, BOSCH, Mazda and others,” said Abdullah bin Mohammed Al Arifi, Executive Director - International Trademark World.

“We are conducting market studies, monitoring and tracking fake and counterfeit products, and travelling across the Kingdom in search of brand infringements on an ongoing basis. Founded in January 2007 with 5 offices in Saudi Arabia – including technicians and specialists, we consider it our responsibility to inform authorities about any illegalities we encounter in our work across the country.”

Arifi pointed out that with the growth of globalization, the flow of products between markets has become easier, which has also facilitated counterfeiting and trade of fake products by unethical traders. This has made matters critical, needing urgent measures for trademark protection within every market.

The parallel global market of counterfeit products which is estimated at more than 700 billion dollars, 50 billion in the Arab world, 7 billion annually in the Gulf region, and 4 billion consumed in Saudi market alone, now affects industries as diverse as food and consumer goods, auto parts, electronics, electrical appliances, clothing, leather, sanitary materials, detergents, medicines and several others.

“The existence of counterfeit products in the market is a challenge to trademark owners, as it undermines the credibility of the brands themselves and is also a serious threat to consumers’ health, safety and well-being.

Such practices cause potential loss of profits for both the manufacturer and importer,” he added. “Saudi Arabia suffers more risks from commercial fraud and counterfeiting than other countries in the region because of its large market size, which is very attractive to counterfeiters.

This also prompted the government to set up the Consumer Protection Society, which has played a complementary role with others such as Saudi Customs and Ministry of Commerce and Industry to fight against this phenomenon.”

ITMW’s activities include collection of information about counterfeit goods and control imports of these commodities through mechanisms developed to detect and control goods and containers across all ports of the Kingdom.

The company also undertakes investigations against infringements of intellectual property rights, provides information to the relevant government departments and coordinates raids with them to seize and confiscate spurious goods for destruction.

Through its work, the company aims to protect consumers from safety and health risks and financial losses resulting from the use of fake products. ITMW does this through awareness campaigns and dissemination of information at the community level that focus on the adverse effects of the use of such products. This also helps protect the nation from economic risks associated with counterfeit goods, including protection of business trademarks.

Man. United star Ronaldo registered 'CR9' as trademark

Cristiano Ronaldo has reportedly registered 'CR9' as a trademark - as sources in Spain suggest he has been promised the No 9 shirt by Real Madrid.

The Manchester United star had already claimed CR7 for use on merchandise and his agent Jorge Mendes has now registered the new motif with the National Institute of Industrial Property in Lisbon, according to The Sun.

Mendes is said to have been in talks with Madrid president Ramon Calderon over a £77million summer move to the Bernabeu.

Magic number: Cristiano Ronaldo has always worn the No 7 at Old Trafford.

Bernabeu icon: Raul wears the No 7 for Real Madrid

And the 23-year-old Portugal winger told Spanish journalists earlier this week that he was already learning their language.

Ronaldo wears the No 7 shirt for United and Portugal, but that number is already taken by Spain legend Raul at Real Madrid.

Javier Saviola wears the No 9 for the Spanish champions, but the Argentina forward is expected to leave the club either this month or in the summer.

Seal the deal

Andrew Dahl is using IP chemistry to create an all-weather brand

Yomp up a mountain or slosh around the football pitch this winter and you will be grateful for a pair of socks from Sealskinz. They are designed to keep out the wet, while allowing you to move freely.

Other waterproof socks and gloves have to be stitched out of stiffer materials - they might keep you dry, but they are less comfortable. Your hands and feet also become hot and sweaty.

A Sealskinz sock has a membrane between two layers of wool that works like an 'accordion bellows', according to the company’s CEO, Andrew Dahl. "Our core technology gives a sock that is close fitting, stretchy and seamless, but also waterproof and breathable."

The technique was patented in 1999 by PIL Membrane, a chemical company in Kings Lynn. Fifteen months ago, Andrew Dahl led a £3 million buyout. "We were a little retail brand with some clever technology which had got lost in a big chemical business. From an IP perspective, the attraction was the patent portfolio and the chance to develop the brand."

In the deal backed by Bridges Community Ventures and HSBC, Dahl bought a family of half-a-dozen patents and the trademark for the Sealskinz name.

At the time of the buy-out, annual sales at the company were running at £2 million, but increased 42 per cent last year. Despite the downturn, Dahl is expecting further growth of 50 per cent this year. The headcount at Kings Lynn has nearly doubled, growing from 25 to 44.

Outdoor enthusiasts, like Dahl himself, who is a keen sailor and biker, have traditionally been the main customers for Sealskinz. Because the socks keep your feet dry, they help prevent blisters - a feature which is starting to attract interest from the military too.

Another market that Dahl is starting to tackle is football. He has already filed a patent for a waterproof football sock and eight weeks ago he launched the product. So far, his highest-profile customers are Scotland’s referees.

"Football is a hard market to enter, because it is so heavily protected by major brands," says Dahl. "But in the longer term, we see the potential to match our sales in cycling, mountaineering and walking."

At £20 - £40, the socks are relatively expensive. "But you will pay £150 for a pair of waterproof shoes, which will make your feet hot and sweaty," says Dahl. "A lot of our customers will opt for our socks over shoes every time."

In talking to retailers such as sports chains Blacks and Millets, the advantage of well-protected IP for Dahl is that he can offer a truly unique product. "We are the only waterproof sock on the market.

If you want to buy it, you have to buy it from us. Eventually, someone will find a way round the patent, but protecting it has given us the time and opportunity to establish ourselves in the market and develop the brand without any direct competition."

A number of leading names in sportswear have already asked Dahl to make products for them. "We always say no. If you do it for one, then you do it for them all. You dilute the brand. We are pursuing the exclusive model."

As well as his patent on football socks, Dahl’s other priority is to strengthen his trademark portfolio, registering the seal logo, as well as the name. "If we want everyone to wear Sealskinz, then we are going to have to protect it as best we can."

Simon Daniels at Moixa uses IP to capture new product categories

Product design is the main cause of wasted energy. Take the battery charger for your mobile or laptop - it might be a low-power DC device, but when you plug it into a wall socket, you needlessly consume electricity in converting the voltage from AC.

So why not plug the battery directly into the port on your laptop?

'USB ports are a great low-power standard', says Simon Daniels, founder of Moixa, 'and there are millions of them.'

'Our design for rechargeable batteries is just like a memory stick. By rethinking the architecture, we might actually start using our rechargeable batteries the 500 times for which they were designed.'

The design is part of a huge shift to low-power DC devices, argues Daniels, 37. 'You might once have had ten of them. You now probably have 50. Before too long, you will have 250.'

As a former innovation consultant, Daniels has honed his skill in finding a solution, then wrapping the IP around it. 'We aim to create distinctive categories of product and work out the definitive way to make them. Like batteries, the application might be narrow, but it will have wide potential use.'

On leaving Accenture seven years ago, Daniels set up Moixa as a product designer to turn Axioms on their head. By 2004, he was one of the most prolific filers of international patents in the US.

'The heart of our business is our IP,' he says. 'Our business model is to prototype ideas, incubate them, file the IP and commercialise them through licences or alliances.'

'We file patents, designs and trade marks. We like the UK system because it is fast and cheap. We write a lot of our base specifications ourselves and then make a claim with our attorneys.

We can take a few applications through the first phase, then validate whether it is worth scaling them up internationally.'

He steers clear of taking a standard approach to building his IP. 'You have to understand the nature of the commercial opportunity upfront. That drives the IP strategy. You use different routes to market depending on the technology.'

For batteries, he decided it was a build venture. ‘Getting out there first has value, because the big companies move so slowly. It is more efficient to label and sell it to them. So we raised £700,000 in equity and £150,000 as a grant.’

For one of his earlier ideas, the folding keyboard, he chose licensing as the best route. So far, he has sold two million units through companies such as Palm and iPac.

Axiom’s USB battery is now in production in China. 'Because we always focus on a distinct proposition, we launched the AA batteries first, rather than the phone cells, because they are so obvious.'

'Our next move will be look at applications in home energy. We will define the form and function, then recruit a team of specialist engineers. Moixa is the layer that gets the commercials right for the next opportunity.'

November 2008

Huge demand for .tel from registrars as 100 sign up with Telnic

Telnic Limited, the Registry Operator for the new .tel Top Level Domain (TLD) announced that one hundred ICANN accredited registrars had signed an agreement to sell .tel domain names well in advance of its launch.

The one hundredth registrar to sign was Network Solutions, which ranks third largest in the world with the number of domains under management. The first registrar to sign up to distribute .tel was European domain specialist EuroDNS.

“The overwhelmingly positive feedback that we have received from the registrar community about .tel has been spectacular,” said Khashayar Mahdavi, CEO of Telnic Limited. “We are delighted that .tel is having such a huge impact well in advance of its commercial availability. It will fundamentally change the way in which people communicate and interact.”

Mahdavi added: “What is incredibly rewarding is to see the broad international support .tel has already achieved from countries such as The United States, Germany, The United Kingdom, China, South Korea, Japan, Singapore, Russia and right across Europe, but also in countries such as Malaysia, Romania, Pakistan and Turkey. .tel truly has international appeal.”

.tel is also enticing new entrants into the ICANN-accredited registrar community. Organisations such as Digitrad, a French communications provider which offers interactive voice services administrated from the web, will be providing .tel domains to customers in order to deliver integrated communications services on the Internet.

.tel has already been called “game-changing”, “the white pages killer” and “the Google of online address books” after Telnic publicly launched the technology enabling the .tel service at DEMO fall in San Diego in September. Brand owners are already processing the required documentation with Registrars to apply for their trademarks on 3rd December 2008, which is the start of the Sunrise period.

A full list of the registrars that have signed an agreement with Telnic Limited to sell the .tel is available at www.telnic.org.

 

Obama T-shirts infringe trademark?

Obama fo Yo Mama T-shirts sold online in the final days of the U.S. presidential election campaign infringe on a registered trademark in Canada, a Winnipeg clothing manufacturer claims.

Yomama GearCanada is taking action against California T-shirt retailers Cafe Press and Zazzle, owner Richard Abramowicz announced Monday.

"A series of T-shirts and related apparel depicting 'Obama fo Yo Mama' has been retailed online and infringe on my rights." Abramowicz said in a news release.

The T-shirts are marketed to supporters of Democratic presidential candidate Barack Obama.

The clothing manufacturer released a statement on the eve of Tuesday's U.S. presidential election.

Abramowicz warned he'll take legal action against the clothing companies and any others he hears about, even after the election is over.

Any reference to Yo Mama violates his trademark, the Canadian insisted.

He has ordered a Minneapolis law firm to deliver warnings to the West Coast retailers, advising them to withdraw the T-shirts and to provide records of sales. He said he intends to demand financial compensation, the amount of which would be determined at a future date, he said.

There's no word on whether the California companies will comply with the Canadian's request, delivered by registered mail last week as reported by the Canadian Winnipeg Free Press.

Microsoft: We didn't 'forget' Azure trademark

Microsoft late Monday denied it had neglected to register "Windows Azure," the name of its new cloud computing platform, with the U.S. Patent and Trademark Office.

According to the spokeswoman, Microsoft submitted a trademark application for "Azure" last Friday.

Earlier Monday, Ray Ozzie, the company's chief software architect, unveiled Windows Azure, a cloud computing version of its operating system. Azure, which will compete with Amazon.com Inc.'s Elastic Compute Cloud, targets developers who create online services and software.

Searches on the U.S. Patent and Trademark Office database run throughout Monday failed to find either "Windows Azure" or "Azure Services Platform" as registered trademarks. Microsoft used both names to describe its Software and Services technology.

The spokeswoman laid the blame on the agency. "I can tell you that it is absolutely not correct that Microsoft 'forgot' to register the trademark," she said in an e-mail. "It is up to the Patent Office to update its database, but you will see it listed there shortly, if not already."

This is reported by The New York Times on 28 October 2008.

Harvard University beats Harvard Jeans in Philippine court

A Philippines court has ruled that a local clothing company breached copyright by using the name of elite US University Harvard in a logo for its jeans, according to court papers Tuesday.

The Philippine Court of Appeals denied a petition by Fredco Manufacturing Corporation which had insisted the logo "Harvard Jeans" did not infringe the official trademark of Harvard University.

The court said Harvard University was able to prove the company was using the trademark 'Harvard' and its related shield symbol way ahead of Fredco as the school had been established in 1636.

"Respondents are the actual creator of the Harvard name and symbol," the court said.

It added that "such unexplained use by petitioner Fredco of the dominant word 'Harvard' lends itself open to the suspicion of motive to trade upon the reputation of the university."

 

NYPD Pizza and the City of New York Reach Agreement on Trademark!

The Corporate Headquarters of NYPD Pizza are pleased to announce that the trademark matter with the City of New York has officially been settled. NYPD Pizza will continue to franchise the pizza chain and retain their trademark rights worldwide. Both parties involved with the formal discussions are satisfied with the outcome of the settlement.

CEO and President Paul Russo stated, “I am elated that our organization has ultimately resolved the trademark subject matter with the City ofNew York. It was a bit wearisome coping with the fact that my company had to encounter legal distress with the city in which I am so proud to hail from. I am very pleased with the conclusion for my franchise system and can now venture forward in making the franchising of NYPD Pizza the most successful in the world.”

NYPD Pizza’s mission is to protect and serve authentic New York style pizza, commit to top quality products, provide a family neighbourhood atmosphere and deliver the best customer service in the world pizza market from our squad members and franchise owners.”

 

Intellectual Property rights are growing concern in the Middle East.

Enforcement must be sought against unethical infringers.

View the article here: http://www.ameinfo.com/173445.html

RIPPED OFF: Fakes and counterfeits steal business from exporters – threat from China

View the article here: http://www.shippingdigest.com/news/article.asp?sid=5598&ltype=feature

UK: Update in the "Credit Crunch" trade mark dispute

Class 46 – the IP Law Blog - recently reported of a trade mark dispute between Welsh super hero Captain Beany and department store Selfridges and sweets maker The Chocolate Society over the use of the trade mark "Credit Crunch" on products made of chocolate.

News site thisissouthwales.co.uk now reports of a happy ending. Captain Beany and The Chocolate Society have both confirmed that they have come to an amicable agreement regarding the use of the disputed "Credit Crunch" mark. A spokesperson for The Chocolate Society is quoted as saying: "We are selling Credit Crunch Hokey Pokey under licence from Captain Beany." The Chocolate Society chocolates will now feature two trade marks; Captain Beany's "Credit Crunch" and The Chocolate Society own trade mark "Hokey Pokey".

This might not be the last time we have heard of Captain Beany. According to the news report he appears to have even bigger plans: "If this takes off in the UK, I hope to take it to America." In the meantime, he plans to spend his "Credit Crunch" related profits on more mundane matters: "I will probably pay my outstanding overdraft with the bank and my council tax. Even super heroes are feeling the credit crunch and are in the same boat."

Top Tips on IP Law

An IP cleanser

At Ren, Antony Buck is learning how to build a perfect little global brand.

After 15 years as a brand adviser, Antony Buck was tired of covering other people’s backs. So he decided to leave behind the cynicism where the brand has little to do with how the product actually performs.

In partnership with a fellow brand consultant, Robert Calcraft, he took the idealistic decision to create his own brand that genuinely did something for consumers. "We wanted to add a bit to the world without starting a charity. Even if it turned out to be a miserable failure, we wanted to have a go."

He looked at a number of markets: chocolate, restaurants and hairdressing. He only chose skincare after his wife became pregnant and had an allergic reaction. "Why on earth can’t you have lovely, modern, effective, gorgeous skincare that doesn’t have nasty chemicals in it?" he found himself asking.

He knew next to nothing about the business. "None of that matters. You don’t need any skills or many resources. Everything is oversupplied. You can get anything. If you want a brilliant chemist who will work with you, you can find them. You just have to ask them the right questions and point them in the right direction. Everything you need is out there."

Drawing on an old piece of research, they named themselves Ren, which is Swedish for clean. "We remembered that although skincare brands are generally urban New York or posh French, loads of women talked about their ideal being Scandinavian and out of doors."

This year, their sales are heading for £7 million around the world and Ren is going on sale for the first time in markets such as Portugal,Switzerland, Taiwan and Korea. In building his business model, Buck has had to manage a number of disputes and learnt a series of lessons about IP.

After working on consultancy assignments for major brands, he found he was unprepared for the competitive intensity of working in a start-up. "No-one previously ever stiffed us for money. You never asked yourself: 'Hold on, do I own this?' or 'What happens to this idea down the line?' We have now wised up."

Right at the beginning, a colleague asked whether he had secured the trade mark for Ren. "I hadn’t even thought about it. It quickly became apparent that it was an important asset to own in as many places as possible."

Applications have been made in waves, as and when Buck became convinced that he could justify spending the money. So far he has spent about £100,000 registering Ren in 55 different countries. He admits to being surprised that the name was still relatively free.

He could not gain European coverage, because Ren is a local word in Scandinavia. Instead, he has used the WIPO’s Madrid Protocol to make a single application across a number of territories.

In Japan and Korea, the name was already taken, but never launched, so he was able to issue a non-use action. In France, a firm used a similar name and objected, although Buck was able to find a way of co-existing.

Domain names have given him less concern. "If someone tries something malicious, you can easily get your name back. If there is something similar, it doesn’t matter too much, as long as you are strong on the search engines."

Relations with his distributors have taught him more. "We are not dragons, but we have learnt to protect ourselves. If you don’t have a trademark in place, it is hard to sign up the best distributors."

For 2009, Ren will be launching eight more products. In buying in any technical expertise, Buck makes sure that Ren clearly owns the formula for any ingredients. "We now have a written agreement. Once we pay for any input, it is ours."

Beyond claiming these commercial rights, Buck cannot as yet see the point of applying for patents on Ren’s technological know-how. "Even more than foodstuffs, we have to list every ingredient. We might not give the quantities or say how a moisturiser is mixed, but in a few weeks any decent chemist could create something similar. For protection, you have to put faith in the brand. The value lies in the confidence and trust that people have in what we are selling."

The Warning shot

IP rights are only worthwhile if you can enforce them. Otherwise you are toothless. You have to be willing to commit time and expense to acting against the misuse of your rights.

In reality, few cases go all the way to court - the costs are too high. You could spend £400,000 in defending a patent or £40,000 on a trade mark - and so could your opponent.

Most of the time, an infringer will cave in once you have sent them a letter. For between £1,000 and £2,000, you are providing them with an easy way out of the mess into which they have got themselves. You might even ask them to pay your legal fees.

So what is the formula for putting together a letter that warns any trespassers off your rights? To emerge as the winner in any pre-trial correspondence, use these basic rules: watch your market; collect the evidence; write a careful letter; and then extract a promise from them to stop.

Watch the market

You might as well forget about your IP, if you ignore what everyone else is doing in your market and let the unscrupulous trample on your rights. In the same way as you watch your competitors’ marketing strategy and product development, you should think about whether anyone is misusing your rights, swiping your inventions or lifting your software.

If they are sticking your brand on a product, that is easy to point out. In a complex piece of technology, it can be harder to prove that your IP is being abused. But without proof, you are not going to get any sort of remedy.

Go steady with the allegation

Once you have a case and evidence to prove it, then you might think all you have to do is write the infringer a letter, setting out your allegation. The difficulty is that in England, like most jurisdictions, there are laws to say that you cannot make unjustified threats against third parties.

Otherwise any national name could write to thousands of operators threatening to close them down. So when drafting a letter, take care in alleging any infringement, otherwise you can easily fall foul of the law yourself.

Cease and desist

Once you have checked the status of your opponent, you can usually write your letter. In a page or two of plain English, say: here are my rights, here is what you are doing and here is why you are infringing, so stop it or I will take action against you in the courts. Alternatively, ask the infringer to sign an undertaking to prove that they will never use your rights again.

"Cease and desist", a request to halt an activity or face legal action, is normally your goal. You might also ask for any stocks of the offending products to be destroyed or sent to you. Sometimes, you might ask for damages, although you are unlikely to get too far - typically, a court decides any award.

If you are warning off traders, then your lawyer will probably produce a standard format document for you to fill in. In more complicated cases, you will collect the evidence, and let your lawyer put a framework round it.

The response

Once your opponents see that you have collected the evidence and are taking advice, they will normally back down, although you may have to negotiate the terms.

Or they might reply by saying you are claiming rights that are far too broad and they are not doing anything wrong. That’s when you get into a fight and court proceedings begin.

The response to sending a letter depends on the identity of the infringer. In the UK and Europe, these types of letters are taken seriously. In the USA, they are less afraid. Any response might be felt to weaken their case. They will wait to see if you sue. Then they know you are serious. Such an approach is more usual in electronics and software. In life sciences, letters are taken more seriously.

Letters remain a voluntary course of action - they do not force the other party to do anything. However, courts prefer you try to settle before going to trial. So, in any action that you take against an infringer, a letter is almost always the opening ploy.

UK Intellectual Property Office © Reproduced under the terms of the Click-Use Licence

The latest news on 23 October 2008

Less time to obtain your Trade Mark in the UK

From 1 October 2008 the UK Intellectual Property Office (UK IPO) implemented the Trade Mark Rules 2008, and the advertisement period for trade mark applications in the Trade Marks Journal reduced from three to two month for opposition purposes.

As, you might not familiar with the process, trade mark applications are advertised to the general public for opposition purposes, if someone thinks that the application is infringing their earlier rights. That could be a registered right, which has the statutory protection ie. a registered trade mark, or a common law right, which established through use and generated substantial goodwill in that name on the market place.

The advertisement period was three months, which laid down in the Trade Mark Rules 2000, previously, and now is reduced to two months by the Trade Mark Rules 2008.

What this means to you who is applying to register a trade mark?

First of all the period is not in fact reduced to two months, only on the face of it. Objections still can be made against an application up to three month if the objector sends a notice to the UK IPO within the two months of the publication made in the official journal. They only need to indicate their objection with the relevant form to stop the mark to be registered and the objector have the time to file the opposition within the three months   as given to them by the TM Rules 2000.

The applicant will be notified about the opposition and can prepare to arm themselves with legal arguments and reasons, and all the historical records about the use why the mark should be registered and why is not infringing the earlier right.

So, what is the truth around the publication period?

The UK IPO experienced that more than 90% of new application does not attract any opposition with the new rules put into practice to line with the EU practice in last October. I do not want to confuse you with this as you are might not a practitioner. Therefore, I give you a little background information about this change last year.

So, before the 1 October 2007 the UK IPO refused any trade mark application if they thought that is similar or confusingly similar to an earlier registration. Let me emphasise on “they thought” for a little moment. If you applied for a trade mark at that time and your intended mark was for example “Star Bricks” and your business is fashion retail and a café in store than the UK IPO might considered this as confusingly similar to the registered trade mark “Starbucks”, because of the pronunciation of that word and the coffees you sell.

After 1 October 2007 is all changed for the better, now actually the UK IPO leave the decision to Starbucks, if they think is similar to their trade mark then they can oppose to register it. If Starbucks thinks the name ”Star Bricks” is not similar and will not be a competing business which means customers of Starbucks will not be confused by the name “Star Bricks” and get a coffee there, as customer think is a Starbucks outlet. Then, you can register this name freely without any problem. I hope this is cleared the fog for you and we can come back to our original topic the two months opposition period instead of the three months.

We left it where the opposition is less than 10% compare to the number of application has been filed. Therefore, the UK IPO implementing a new rule to reduce the time of registration process and make it speedier for marks that straightforward and unopposed. The truth is, with this decision the UK IPO makes the UK trade mark registration more competitive compared to the EU registration as time is crucial point for businesses to obtain the protection. Also, this is can be the base of an EU application which is necessary for businesses that are trading within the Euro zone.

Official fees are also remained on the same level despite the new regime, which again an advantage against EU registration with the exchange rate of Euro currently sky high. However, EU trade mark carries the benefit of registration in 27 countries and with enlargement of the EU the registration will automatically expand to the new territory.

EU trade mark registration fees will be reduced by 40% from next year?

The head of the Office for Harmonisation in the Internal Market (OHIM) Wubbo de Boer proposed to reduce the fees by 40% for Community Trade Mark applications in the future. As the OHIM sitting on a huge sum of money generated from applications around the 27 countries of the EU since it is opened its doors for registering EU trade marks and designs.

OHIM is a non-profit making organisation that grants Intellectual Property protection across the EU countries which valid in every member states similarly to the US federal system. It has generated about £220 million during the years and is growing by £800 thousands every week according to the global financial magazine The Economist earlier this year.

Trade mark registration fees are currently held at €1600, but will be reduced to around €1000 in the future that is what OHIM proposed in the European Parliament, which agreed to the plan, and the conference of Marques the organisation representing European Trade Mark owners.

There is much debate about the use of the generated sum and the cutting of the prices of Community Trade Mark applications and how to use the funds in the future. Everyone has their own idea but national patent offices are on the lookout as they may lose revenue, but OHIM promised to distribute the sum to national patent offices proportionately.

The Marques insist that services and practice from the national offices must correspond and enhanced to a Common European system as reported by the IPKat the Intellectual Property Law blog.

Diago the drink giant brings proceedings against Vodkat

Diago the global drink giant who owns brands like Smirnoff and Guinness brought a lawsuit against Intercontinental Brands the owner of the Vodkat brand as The Observer and the Just-drinks.com reported.

The dispute is arising from the fact that Vodkat is a spirit mix only contains 22% alcohol and should not be called Vodkat as the name of the brand and is descriptive enough to mislead customers that they are drinking vodka instead of a cocktail. In the EU the standard level of alcohol for vodka is 37.5% and Diago argues that Vodkat only 22% and should not use the name.

However, in our opinion the battle is all around the current economic climate and the fact that Vodkat brand is made a huge success in the last three years as it has been launched and this might caused loss of market share for Diago. The 1.8 billion vodka market in the UK alone is substantial enough to lose even just 5% of the market.

If Diago successfully argue of its case than might be able to revoke the name of Vodkat from the trade mark register on the grounds of Vodkat mislead the public as to the nature and quality of the product. That would be a precedent case in trade mark law and it is more likely be referred to the ECJ for ruling.

If Vodkat lose the defence against Diago they would have to face with the rebranding costs and huge amount will be wasted on legal fees as well. Let’s see the outcome of this case later.

The Company Names Tribunal: adjudicating on opportunistic company name registrations

On 1 October 2008 new provisions concerning company names came into force, which I will explain and set out below. The Company Names Adjudicator Rules 2008, which give effect to sections 69-74 of the Companies Act 2006, provide for complaints by businesses or persons who have goodwill associated with a name, where that name has been "opportunistically" registered as a company name by someone else with a view to obtaining money from the Complainant, or to prevent the Complainant from registering the name.

"Opportunistic" company name registrations

Opportunistic company name registration share characteristics with "cyber squatting" in the field of domain names; for example, when someone registers variations of the name of a well-known company in order to get the latter company to buy the registrations.

"The Company Names Tribunal" at the UKIPO

The new proceedings will be administered by "The Company Names Tribunal" (the Tribunal) and each dispute will be decided by an adjudicator; these will be hearing officers experienced in trade mark and trade name tribunal work, who are based at the UK Intellectual Property Office.

Who can apply?

From 1 October 2008 onwards, any business or person with goodwill or reputation in a name is entitled to apply to the Tribunal, not just prior registrants of company names. The new proceedings will also allow businesses or persons to prevent the use of their name and/or trade marks in a company name, where such a use misleadingly suggests a connection between the company and the Complainant.

At the moment, a trade mark proprietor who objects to a company name which encompasses its trade mark - or a confusingly similar mark - has to seek relief via the courts. The new proceedings are expected to provide a cheaper and simpler alternative to such, often costly, court proceedings. However, disputes where someone believes that another company name registration is too similar to their own company name, but where there is no alleged opportunistic motive, will still be dealt with by Companies House.

It should be kept in mind, that if a company name is used as a trading name, the common law tort of passing off may also be invoked. It should be noted that if an application to the Tribunal does not fall within the scope of section 69 of the Companies Act 2006 the official application fees will not be refunded.

The proceedings

It can be said that the proceedings are reminiscent of UK trade mark opposition proceedings.

On the Complainant's side the process involves filing a complaint (form CNA 1) including a statement of grounds, a fee sheet as well as the payment of an official fee at the UKIPO. While the Complainant does not have to have a registered company name, it must demonstrate goodwill/reputation in the name at the time that it was adopted by the registration holder as the company name. The Complainant must show that the respondent company has been registered with a name in which the complainant has goodwill.

The UKIPO will send a copy of the form to the primary Respondent and will specify a fixed period within which the primary respondent must file its counter-statement ("Notice of Defence", form CNA2), pay an official fee and submit a fee sheet. The counter-statement should include a statement of the grounds on which the Respondent relies and should state which of the Complainant's allegations it admits or denies; as well as such allegations, which it is unable to admit or deny, but which it requires the applicant to prove.

Each party then has to file its supporting evidence in the evidence rounds; copies of which have to be sent copied to the other parties in the proceedings (forms CNA 3). The Complainant's evidence will include evidence of acquired goodwill or reputation in the disputed (company) name as well as evidence that shows bad faith on the Respondent's side.

Possible Defences

In order to keep the disputed company name, the Respondent may justify its registration by reference to the following defences, which are listed in the Companies Act 2006:

1) the disputed name was registered before the start of the activities on which the applicant relies to show it has goodwill/reputation; or
2) the company is already operating under the name or is planning to do so and has incurred substantial start-up costs, or was operating under the name but is now dormant; or
3) the name was registered in the ordinary course of a company formation business and the company name is available for sale to the applicant on the standard terms of that business; so called ‘off the shelf company’; or
4) the name was adopted in good faith; or
5) the applicant's interests are not adversely affected to any significant extent.

Applications to the Tribunal will only be successful if the registration holder cannot invoke any of the above listed defences. Even if the registration holder can show that it complies with the criteria as set out under 1) - 3), a complaint will still be successful if the Complainant can demonstrate that the registration holder’s main purpose in registering the company name was to obtain money or some other consideration from the Complainant or to prevent the Complainant from registering the name.

Possibility of an oral hearing

Even though either party may request that the decision be made at an oral hearing, a decision may be made solely on the basis of written submissions. Where the adjudicator decides that a decision can be made without an oral hearing the adjudicator will specify a period for the parties to submit written submissions before making a decision. Extensions of time are possible at all stages of the proceedings.

Costs

While the initial application fee is GBP 400, further official fees may be incurred, for example for filing the counter-statement (GBP 150), filing evidence (GBP 150), when requesting a hearing (GBP 100), extension of time requests (GBP 100) and a request for security for costs (GBP 150)

The Tribunal will in most cases award costs to the winning side, however, it is unlikely to cover more than the official fees. If either side wishes to appoint a legal advisor after proceedings have started, or if either party needs to change their address details, a form CNA 7 will need to be filed.

Application successful

If the application is successful and the complaint is upheld, the Tribunal will order the respondent company to change its name to something which does not offend. If the respondent company fails to comply with such an order within a specific time frame, the Tribunal's adjudicator has the power to ultimately enforce a new name on the company by ordering the registrar of companies to change the name to a name of the adjudicator’s choosing.

The Tribunal's decision and reasons will be available to the public and there will be a right of appeal to the High Court.

Source of this article: Class46 IP Blog 

 

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