what is a trade mark?

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what is a trade mark?
WHAT IS A TRADE MARK?
“A good name is better than riches”
Cervantes, Don Quixote
© FRKelly European Patent and Trademark Attorneys
TRADE MARKS, BRAND NAMES,
SERVICE MARKS
A trade mark is a name, a sign or a symbol which is used
to distinguish the products or services of an individual or
enterprise from those of others, e.g. GUINNESS, LEGO,
TAYTO or PAMPERS
A trade name is a name which is used to
distinguish an individual or enterprise offering
goods or services, e.g. BUTLERS, KEPAK,
ARAN CANDY
A service mark is a trade mark used
specifically to distinguish a service as opposed
to goods, e.g. KWIK-FIT, AVIVA or VISA
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TRADE MARKS, BRAND NAMES,
SERVICE MARKS
A brand is a trade mark, or combination of trade marks,
which through promotion and use has aquired significance
over and above its functional role of distinguishing the
goods or services concerned, e.g. MARLBORO, LEVI’S,
SMIRNOFF, TIFFANY & CO or CLIO
A brand name is the most common form
of trade mark and is the central
component of the brand, e.g.
KERRYGOLD, PEPSI or YOPLAIT
A coporate name is a company name, e.g.
GLANBIA, GILETTE, CUISINE DE FRANCE
or KERRY FOODS
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WHAT IS A TRADE MARK
OR BRAND?
VS
• Distinguishes competing products and services from one another
VS
• Visual “sign”, e.g. words,
logos, packaging,
shapes, colours, letters,
numerals, sounds and
smells
Advertising slogans:
•
“Vorsprung durch tecknik”
•
“The Real Thing”
•
“Because you’re worth it”
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THREE DIMENSIONAL MARK
A three-dimensional trade mark is a trade mark relating to
the shape of the product or its packaging, for example:
perfume bottles, liqueur bottles, various containers, etc.
© FRKelly European Patent and Trademark Attorneys
© FRKelly European Patent and Trademark Attorneys
© FRKelly European Patent and Trademark Attorneys
© FRKelly European Patent and Trademark Attorneys
© FRKelly European Patent and Trademark Attorneys
© FRKelly European Patent and Trademark Attorneys
PROTECTION THROUGH USE:
PASSING OFF
• In Ireland and the UK,
trade mark rights can be
acquired through use.
• If there is reputation, these
rights can be protected by a
legal action called passing off.
• According to the courts “nobody the
the right to represent his goods as the
goods of someone else.”
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• Jacobs accused rival biscuit firm McVities of “living
dangerously” in a High Court row over fig rolls and crackers
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VODKAT isn’t VODKA !
Diageo vs International Brands
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UNFAIR COMPETITION
• In the US, most EU countries,
and other jurisdictions, there
is unfair competition law.
• Provides redress in cases where
third party get-up or trade dress
is very similar, e.g. “look-alikes”.
• Third party intends to benefit unfairly
from your reputation and goodwill.
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PROTECTION THROUGH
REGISTRATION
• Trade mark rights are primarily
achieved through registration.
®
• Company name or domain
name registration.
®
• Once a trade mark is registered, the
registered proprietor is given the
exclusive right to use the mark for
certain goods or services.
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WHY REGISTER?
•
•
•
•
•
•
•
Not compulsory, but advisable
Monopoly rights
Easier enforcement
More cost effective
Unlimited life
Deterrent factor
Prior use / later registration?
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COLLECTIVE MARK
A collective trade mark is a mark that distinguishes the
goods or services of the members of the association, which
is the proprietor of the mark from those of other undertaking.
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CERTIFICATION TRADE MARK
A certification trade mark is a mark indicating that the goods or services
in connection with which it is used are certified by the proprietor of the
Mark in respect of origin, material, mode of manufacture of goods, or
performance of services, quality, accuracy or other characteristics. A
certification trade mark shall not be registered if the proprietor carried on
a business involving the supply of goods or services of the kind certified.
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WHAT CANNOT BE
REGISTERED?
• Generic terms, e.g. CHAIR for chairs, LAPTOP for
computers, TRUST for financial services
• Descriptive terms, e.g. SWEET for chocolate, SHINE
for shampoo, FRESH for milk
• In certain circumstances, geographical names and
common surnames
• However, sufficient use may overcome objections!
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WHAT CAN BE REGISTERED?
• Arbitrary marks, e.g. APPLE for computers
• Invented words, e.g. KODAK, TAYTO, or
GLANBIA
• Suggestive marks, e.g. SUNNY for electric
heaters
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REGISTERED TRADE MARKS
AS PROPERTY
• Trade marks can be fully or partially
assigned, licenced, or mortgaged to raise
capital
• Licensing of a trade mark is central to
franchising agreements
• Guard your registered trade marks!
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Registering a trade mark abroad
• The national route
• The regional route, e.g. Benelux, European
Union
• International route, Madrid system
(administered by WIPO)
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ENFORCING TRADE MARKS
• Burden of enforcing a trade mark is on the
owner
• Must identify any infringements and decide if
action is necessary
• Seek expert advice
• “Cease and desist” letter
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Case study: Cooley Distillery, PLC
Irish Geographical Names as Trade Marks
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History of Cooley Distillery PLC
• Founded in 1987
• First new distillery to be set up in Ireland in 100 years
• Acquired and resurrected famous old brands
– Tyrconnell, Kilbeggan.
• Acquired famous old distilleries
– Kilbeggan Distillery
• Now it’s the only Irish owned distillery.
• Only Irish barley is used.
• All water sourced from the Sliabh na Gloch river in
the Cooley Mountains
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Products
•
Malts
–Locke’s
–Tyrconnell
–Connemara
•
Grain
–Greenore
•
Blends
–Kilbeggan
–Inishowen
–Millar’s
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© FRKelly European Patent and Trademark Attorneys
The Trade Marks
• Tend to be townland, towns, village names
• Domestic Market:
– Some local significance – some fairly well known.
– Example – Irish Registration for KILBEGGAN restricted to
“whiskey casked in Kilbeggan”
• Internationally
– Irish allusions, but no real “meaning”.
– Thus, distinctive names.
– CTM registration for KILBEGGAN – no restriction.
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Main markets
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Searching/filing strategies
• Many of the TM’s were acquired/resurrected
• Many in use for serveral/many years
– alternatives not an option.
• Identical searches only.
• Straight to filing applications
– CTM, USA, Russia, S. Africa.
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• New Marks
– Tend to be Irish surnames/placenames.
– Identical/close identical/full searches.
• Depending on Mark.
– Proceed to filing
• Generally USA/CTM or Ireland/UK
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The Jelly Bean Factory
A Case Study
Niamh Hall
FRKelly
© FRKelly European Patent and Trademark Attorneys
First registrations
1997
UK and Ireland
THE JELLY BEAN FACTORY
(words)
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Community trade mark
1999
Combined words & logo, black and white
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Livery – red, blue, yellow & white
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Foreign Applications: 2001
Black and white, combined words & logo
Australia, Bahrain, Canada, India, Japan, New Zealand, Saudi Arabia, South
Korea, Sri Lanka, Switzerland, Turkey
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Change in livery
2008: green, pink & white
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Protection for new livery
Existing registrations in black and white
Selected new applications in colour e.g.
Community trade mark
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Other important intellectual property
Slogan: THERE’S NEVER BEEN A BETTER BEAN!
Get-up: packaging layout and colours e.g.
Know-how – 36 flavours, constant research and
development, quality product, natural colours
and flavours
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IP agreements
• Licences
• Co-branding agreements
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