Embed Size (px)
DESCRIPTION
All too often, too much money and too many man hours are wasted by companies and agencies not proactively thinking about legal aspects relating to their brands, such as registering trademarks and other forms of intellectual property. Theuns van de Merwe from IP experts Cedar White Bradley shares practical experience on the intellectual property aspect of brand selection. Starting with trademarks, clearance exercises and the potential pitfalls new brands face, this is a session not to miss for anyone considering a rebranding or for those who work in the branding arena. From the Transform conference MENA in Dubai on 2 June 2014.
Citation preview
Brands: how to put a smile on your trade mark lawyer’s face
Theuns van de Merwe
Tel: +974 44 101562Mobile: +974 33 751576Email: [email protected]
Copyright © 2014 Cedar White Bradley
The story of the smiley face
The Smiley Company“Smiley brand” was “founded” by Franklin Loufrani in 1971 “through a newspaper promotion to make people happy”
*Source: http://www.smiley.com/company
Today?
The Smiley Company ranked as 90th top licensor by License Magazine
USD168 000 000 in retail sales in 2011/2
Smiley Face Logo registered in over 80 countries worldwide
They effectively own as a trade mark
Not so happy litigation in USA
*Copyright and trade marks of Wal-Mart Stores, Inc.
1995/6
The legal battle
The Smiley Company and Wal-Mart tried to register smiley face as a TM
Litigation: both said smiley faces are “generic” - shouldn’t be registered unless - associated with the company
Wal-Mart won that round with 18 month’s commercial use of the mark with $$$ marketing
Present:
Matter settled out of court in undisclosed terms
Wal-Mart phasing out use of Smiley as advertising symbol
Both parties incurred substantial cost
Ownership rights in USA unclear (lost market for Smiley Company?)
Where do you need to be?
Create the best intellectual property framework for you brands
Registering trade marks
Exclusive right - trade mark - goods or services specified in the registration
Exclusive right - authorise - goods or services specified in the registration
Registration - personal property - can be sold
Registering trade marks
Strong, wider legal remedies: Injunctions Delivery up of infringing materialsCriminal complaintsDomain name/Advertising Standards’ complaintsDamages/penalty/royalty payments
Recording licenses - ensuing benefits
Assignments - valuable consideration
Stopping infringers
Sri Lanka
How do we best protect trade marks?
Choosing the right mark
Generic
Descriptive “Apples for Apples v. Computers”
Offensive “J-sus”
Functional
clearance searches Check if available Is the search possible? Trustworthy? How long will it take? Costs? How wide should we cast? Can we beat potential obstacles? What steps can be taken before-hand (e.g.
filing combinations)?
Filing application and prosecution What do we file for? What will we use?
Filing application and prosecution
Good and services?
Manufacturing services
Electronics
Banking
Territorial nature of TM’s
Proper use (e.g. as registered; “genericide”)
Proper licensed third party use
Employment agreements
Monitoring third party applications and use
Appropriate steps when potential offending third party applications and use
Trade mark ownership notices (e.g. on websites)
Keep record of all use of trade mark (advertising, sales figures, invoices, letterheads etc)
Overlap
Remember there is an overlap between different types of IP
To keep your trade mark lawyer happy:
1. [pay on time] 2. be aware of brand related rights;3. identify your brands;4. protect your brands; 5. enforce your rights; and6. exploit brands correctly.
Questions
Thank you
