Protecting Your Brand
Welcome !
Presentation to Bórd Bia Brand Forum
Dublin, 25th April 2012
© FRKelly European Patent and Trademark Attorneys
Protecting Your Brand
• Marketeers talk Brands!
• Lawyers talk Trade Marks!
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Protecting Your Brand
• What is a Trade Mark?
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What is a Trade Mark?
• Any sign !
– E.g. words, names, designs, letters,
numbers, the shape of goods or their
packaging, colours and even sounds!
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What is a Trade Mark?
• Must be capable of graphical
representation
• Capable of distinguishing the goods/
services of one undertaking from
those of other undertakings.
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What is a Trade Mark?
VS
• Distinguishes competing products and services from one another
VS
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What is a Trade Mark?
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What is a Trade Mark?
© FRKelly European Patent and Trademark Attorneys
What is a Trade Mark?
© FRKelly European Patent and Trademark Attorneys
What is a Trade Mark?
© FRKelly European Patent and Trademark Attorneys
What is a Trade Mark?
© FRKelly European Patent and Trademark Attorneys
What is a Trade Mark?
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What is a Trade Mark?
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What is a Trade Mark?
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What is a Trade Mark?
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What is a Trade 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.
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What is a Trade Mark?
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What is a Trade Mark?
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Protection Through Registration
• Trade mark rights are primarily
achieved through registration.
®
• Company name and domain
name registration give no trade
mark rights at all.
®
• 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 a Trade Mark?
• Trade Marks Act, 1996, Section 7(1)
• A registered trade mark is a property right
obtained by the registration of the trade
mark under this Act and the proprietor of
a registered trade mark shall have the
rights and remedies provided by this Act.
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Why register a Trade Mark?
• Trade Marks Act, 1996, Section 7(2)
• No proceedings shall lie to prevent or
recover damages for the infringement of
an unregistered trade mark as such; but
nothing in this Act shall affect the law in
relation to passing off.
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Process of securing a Trade Mark
• Brainstorming
• Availability for use
• Registrability
• Registration
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Clearance of the Mark – Why?
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Clearance of the Mark – Why?
• To determine if prior conflicting
rights exist.
• To reduce the likelihood of
infringement.
• To gauge if the mark can be
registered.
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Clearance of the Mark – How?
• Step 1 – Preliminary (aka “Knockout”) search
–
–
–
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Identical marks / identical goods/services
Irish and Community registers
International trade marks designating Ireland
Cost - €150
• Step 2 – Comprehensive (aka “Full”) search
–
–
–
–
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Broader range of marks / goods/services
Irish and Community registers
Community designs
International trade marks designating Ireland
Cost - €450 upwards
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What Can be Registered?
• Arbitrary marks, e.g. GOODFELLA’S for pizza,
HUNKY DORY’S for crisps or CLUB for biscuits
• Invented words, e.g. TAYTO, GLANBIA or
LUCOZADE for any goods or services
• Suggestive marks, e.g. Tropicana for orange juice,
INNOCENT for smoothies, Pedigree for pet food or
Low Low for dairy spreads
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What Cannot be Registered?
• Generic terms, e.g. CHICKEN DINNER, FRESH
SOUP, YOGHURT DRINK or ENERGY SNACK
• Descriptive terms, e.g. CREAMY SWEET, BEST
VALUE, TODAY’S BREAD
• In certain circumstances, geographical names and
common surnames
• However sufficient use may overcome objections!
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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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Important Countries in the
Madrid System
•
•
•
•
•
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Australia
China
European Union
Israel
Japan
Norway
•
•
•
•
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Russia
Singapore
Switzerland
Turkey
United States
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Enforcing Trade Mark Rights
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Enforcing Trade Mark Rights
• 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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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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Protection Through Use:
Passing Off
• In Ireland and the UK,
trade mark rights can be
acquired through use.
• If there is goodwill, these rights
can be protected by a legal
action called passing off.
• According to the courts “nobody has
the right to represent his goods as the
goods of someone else.”
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Protection Through Use:
Passing Off
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Passing Off: Jacobs v McVities
• Get-up of fig rolls and cream crackers (generic names)
• First impression is paramount
• Figrolls = passing off:
– combination of colours, font, shadow, biscuit images
– Use of small house marks did not prevent confusion
• Cream Crackers = not passing off:
– yellow background, white on brown name
– “Jacobs” was major feature, large “Cream Crackers”
was distinguishable
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Protection Through Use:
Passing Off
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Passing Off:
McCambridges v Brennans
• Reputation and goodwill in the combination of the
packaging elements
• No deliberate intention to mislead
– alterations to bring it “closer to McCambridge's”
– penalised in costs for pursuing this issue
• Test – would a reasonable member of the public
wishing to buy McCambridge's be confused by
the new packaging of Brennans’ and, as a result,
buy the latter in error
• The first impression is crucial
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Passing Off:
McCambridges v Brennans
• Differentiating features: the trade marks
• Reality: loaves“get tossed around on the shelf”
so trade marks may not be so visible to
consumer
• Use of Brennans’ logo on the front panel not
sufficient to prevent confusion because of the
overall appearance of the packaging from the
vantage point of the average reasonable
consumer
• Query:
prudent
to
ensure
product
is
distinguishable from all angles potentially visible
to the consumer?
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Protection Through Use:
Passing Off &
Consumer Protection
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Irish Mail on Sunday v
Sunday Tribune receiver
• Irish Mail on Sunday in a wrapper
• “This paper is a special edition designed for
readers of the SUNDAY TRIBUNE”
• Passing off action by receiver – settled
• National Consumer Agency prosecution
under Consumer Protection Act
• Probation, €15,000 donation to charity and
€25,000 costs
• Overzealous rather than deliberately
deceptive
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Protection Through Use:
Passing Off
“A man better have anything happen to him in
the world, short of losing all his family by
influenza, then have a dispute about a
patent.”
Lord Esher
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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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The Jelly Bean Factory
A Case Study
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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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