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Your business name, your rights? Are they strong?

Talk to a BATTLE brand consultant today. Ask about rights to your business name or trademark now.


Why register a trademark?

why register a trademark?

BATTLE - Authors of TRADEMARK TIPS

trademark tips

 

Monopoly rights and registered trademarks

A few sample registered trademark cases

The rights attaching to registered trademarks can have powers like monopoly powers. The enforcement and protection of such rights helps to protect the investment of entrepreneurs in their brands. Some cases help to show how the courts approach the legal rights embodied in registered trademarks.

Through trademark registration, a trademark becomes a legitimate asset of the business. Registered trademarks can be used to justify goodwill attaching to a business. Goodwill in accounting terms is the excess value, above book values attaching to a business. It is easier to justify goodwill for registered trademarks, that hold monopoly powers. In our opinion, venture capital investors like to invest in businesses that have solid brands and registered trade-marks, with a good protection strategy built around them, as well as unique positions with their brands in the market.

By registering brands as trademarks, an owner obtains monopoly rights, that are exclusive to the owner. This provides a business brand with a stronger competitive edge, and is more attractive for potential buyers or investors. Several interesting cases illustrate the value of registering brands, and some have been decided by the courts in the case of trademarks. A few are outlined below: -

Interesting trademarks cases

Packaging get up and passing off - Supreme Court case- McCambridge v Joseph Brennan Bakeries

breads case - McCambridge v Brennans

The Supreme Court of Ireland upheld the claims of McCambridge against Joseph Brennan Bakeries in a passing off case involving brown breads, in July 2012. McCambridge issued legal proceedings against Brennans after it refused to cease and desist from using the pacakaging. It dismissed an appeal by Brennans against a High Court judgment. The 400 day long battle ended with a judgment which indicated that the triple test of passing off had occurred when Brennans presented brown bread in a packaging get up that was designed to compete with McCambridge. The judgment found the Brennans brown bread was likely to cause confusion among consumers. More here about the McCambridge v Brennans brown breads case.

 

Can registered trademarks block counterfeit domains?

Sure says a $164 million judgment.

trademark_value

In 2011, damages totaling $164m were awarded in a trademark infringement and counterfeiting case in New York to Tory Burch. Tory Burch LLC sued several defendants concerning use of their trademarks on counterfeit goods relating mainly to clothing and footwear and fashion accessories.

The case argued the defendants were distributing, offering for sale, via the internet, goods being counterfeit reproductions of Tory Burch's registered trademarks.

The court held that Tory Burch owned all right, title and interest in and to the Tory Burch marks in connection with the Tory Burch goods, and the marks were valid, and were entitled to protection.

The case heard that the defendants offered counterfeit goods, footwear, handbags and accessories, bearing counterfeits of the Tory Burch marks to buyers in the US.

The defendants used the internet to offer counterfeit goods for sale via operating a network of web sites, including domain names containing the Tory Burch marks.

Domain names stopped by registered trademarks.

Trademarks also blocked web site hosting

The judge granted a permanent injunction to stop passing off, to stop distribution, and also stopped use of infringing domain names. The court also stopped registering of any additional domain names that included any of the Tory Burch marks, as well as stopped operating and hosting defendants infringing web sites.

ISP's, registries, registrars were enjoined from providing services. Damages of $2m against were awarded each defendant + $4m against each defendant for use of marks.

Court allowed registered trademarks to block PayPal Accounts

Interestingly, the court also granted a restraining order against monies in PayPal accounts.

 

How much is a trademark worth?

Proctor & Gamble Co. sells 57% stake in its crisp brand PRINGLES

In 2011, the multi-national trademark owner, Proctor & Gamble Co. agreed to sell a 57% stake in the crisp brand, Pringles for $1.5bn. to Diamond Foods Inc.

Blackrock v Blackrock

trade mark dispute

Ouch! What if you had to change your name!

Blackrock International Land plc was forced to change its name to Balmoral International Land plc. This follows a trade mark dispute with Blackrock Inc, the wealth management vehicle from the USA, which concluded in 2010.

Blackrock Inc. owns an EU-wide registered trademark for BLACKROCK.

The publicly quoted entity, quoted on the Irish Stock Exchange, was forced to drop BLACKROCK from its name.

Costly, at the very least.

This demonstrates the power of holding an earlier registered trademark.

Is Blackrock College secure?

This led us to wonder whether the famous school was exposed to a similar fate.

On carrying out a trade mark search, we found that Blackrock College probably took account of the dispute over the name.

The well-known school, in 2010, obtained an EU-wide registered trade mark for their main activities.

Is your old school name secure?

Is your friend’s business name secure?

For the record, Blackrock Clinic and Blackrock Hospital are registered trademarks also.

Louis Vuitton trademarks wins €30m v ISP's

LVM the owner of luxury brands, and registered trademarks including Louis Vuitton sued parties that hosted sites selling goods using their registered trademarks. The case established that ISP's can carry a considerable commercial responsibility, especially if registered trademarks are infringed by any site that they host. They can be held liable for damages when they host web sites involving sales or promotion of goods that abuse registered trademarks or that supply counterfeit goods, without the permission of the owner of the registered trademarks.

A jury held that the parties, including the hosting service providers were liable for over €30million in damages.

A feature of a registered trademark is that it cannot be used without the owner's permission to sell competing goods/services. If the hosting entity had shut down the counterfeiters, or ceased to host their site, this would probably have reduced the damages. For more registered trademarks cases information see our tweets about TRADEMARK TIPS at Twitter [@TRADEMARKTIPS].

Refusal to register trademark resembling Canadian flag stands

American Clothing Associates, domiciled in Belgium, applied to register a community trademark covering the EU, with a sign that contained a maple leaf above the letters RW. Initially, OHIM refused to register the trademark because it resembled the national emblem of Canada.

One of the corner-stones of laws on trademarks is the Paris Convention on Industrial Property 1883. Article 6ter prohibits the registration of state flags.

A lower court decision was appealed by both parties to the European Court of Justice, ECJ. American Clothing sought to have the mark registered in relation to the services in its application, since the Paris Convention referred to goods. However, the ECJ held that the Community trademarks regulations applied to both goods and services.

Article 6ter leaves the extension of the protection guaranteed to trade marks for goods to service marks to the discretion of the States party to the Convention.

Accordingly, the ECJ held that Article 7(1)(i) CTMR applies without distinction to trade marks for goods and service marks, so that registration could be refused, for example, to a service mark containing a badge.

The application to register a trademark resembling the Canadian flag was refused.

Yoghurt trademarks case. Danone v Glanbia

Danone, the large French dairy group was seeking damages from Glanbia from use of the Yoplait Essence brand name for yogurt. Danone contended it used Essensis as a trademark for yogurt between 1998 and 2004 - selling 72 million pots of Total Activia Bifidus Essensis. ESSENSIS is a registered trademark in Ireland.

Danone sought to block the registration of Glanbia's Yoplait ESSENCE brand, and pursued a legal action for infringement of its registered trademark in Ireland.

A feature of a registered trademark is that it must be used within 5 years. Glanbia contends that the Essensis brand was not put to genuine use in Ireland. Glanbia also contends it would be inconceivable that an Irish consumer would purchase a Yoplait yogurt brand item thinking it was made by Danone.

Initially, the High Court found in favour of Glanbia, and proposed to revoke the registration of the ESSENSIS trademark, on grounds of non-use and for being applicable to an ingredient as opposed to yoghurt. Danone appealed the decision on non-use and on trademark revocation to the Supreme Court. The Supreme Court over-ruled the High Court's judgment on revocation of the trademark, as being interpreted on a unduly narrow interpretation of the law.

TESCO v METRO trademarks case

To keep a registered trademark valid indefinitely, renewal fees are payable every 10 years. When a trademark is registered, it is important to ensure trademark registration fees are paid on time. This proved to be a key matter when TESCO STORES LTD. was opposing the registration of the trademark METRO for a German cash and carry/supermarket group, as a Community Trade Mark. Tesco held a registered trademark for METRO in the UK, and filed an opposition to the registration of METRO as a Community trademark.

Tesco sought to block the registration of METRO.

A feature of a Community trademark is that if it falls in one member state, then the trademark registration cannot be upheld throughout the EU, so if TESCO successfully opposed the METRO CTM, through its prior registered trademark in the UK, it could block the application for trademark registration in the EU.

The trademark opposition was appealed in the European courts. On examination, it appeared that TESCO did not provide evidence that its registered trademark in the UK was renewed during the period when the proceedings were being contested. As a result it was held that the TESCO registered trademark was not effectively valid at that point in time, and it was possible for the Community trademark to be registered.

The applicant succeeded in obtaining a registered trademark, when an opponent did not provide evidence that its registered trademark had been renewed through evidence of payment of renewal fees for its registered trademark.

If TESCO had produced evidence of payment of its renewal fees, it could have successfully blocked the Community trademark registration. [13 September 2006]

PGA v LPGA trademarks case

When a trademark is registered, the Trade Marks Act requires that the registered trademark must be used within 5 years of trademark registration, or alternatively, the trademark registration can be revoked if any such use has been suspended for an uninterrupted period of 5 years.

The Professional Golfers' Association (PGA) sought to revoke a registered trademark (LPGA) held by the Ladies Professional Golf Association.The LPGA's registered trademark was held in respect of golf bags, golf clubs and golf balls.

While the LPGA had entered into a licence agreement for the use of the registered trademark, the evidence of the agreement was not produced, and evidence of the level of sales was scant. As a result it was held that the LPGA registered trademark could not be maintained, and its status as a registered trademark was revoked.

METRO v Independent Newspapers trademarks case

Holders of registered trade-marks have an established property right. In some ways this is more powerful than owning a property in say Dublin, because the registered trade-mark property right extends across the State, and infringement is regarded as a serious matter by the courts.

Independent News and Media sought to publish a freesheet called "Herald Metro". Metro was a registered trademark held by a competitor, and its owners sought to injunct Independent Newspapers to stop them using Metro in the title, thereby potentially infringing its registered trademark.

The Metro free sheet is a joint venture involving the Irish Times, Associated Newspapers and Metro International.

The High Court decided that there was a likelihood of confusion, and therefore that the property right contained in the registered trademark, Metro, for similar goods and services, may be infringed by the publication of a new newspaper free sheet titled Herald Metro.

Accordingly, it stopped Independent News and Media from using Metro in its title (by granting an injunction to holders of the registered trademark). Subsequently, Independent proceeded to launch its free sheet with the name Herald AM, and Metro was also launched by the holders of the registered trademark.

Fortunegreen, the joint venture vehicle, succeeded in protecting the property right contained in the registered trademark, and blocked a competitor from using Metro. [7 October 2005].

Diageo buys Bushmill trademarks for €295 million
Pernod bid €11bn for drinks group

Diageo acquired an option to buy Bushmills, the world’s second largest Irish whiskey brand, for €295m. The Bushmills price is based on 14 times its direct brand contribution (DBC) in 2004. [7 June 2005]

Market share and scale can mean that for competition reasons, selling off brands can be very attractive. Pernod Ricard bid €11bn for Allied Domecq – this would have left Pernod with two significant whiskey brands, Jameson and Bushmills.

Heinz buys sauces trademarks for €700 million

Heinz bought HP Sauce, Lea and Perrins Worcester Sauce and Rajah’s spices to add to Heinz’s famous 57 original varieties. Danone also granted Heinz a license to make the Amoy brand of sauces in Europe as part of the deal. [20 June 2005].

The GIF lemon trademarks case, Colman Products Ltd. v Borden Inc

Defendant used plastic container similar to the “Jif” lemon shaped juice container. Registration of shapes as trademarks is allowed.

The courts restrained the defendants from using the container.

Eastman v Griffiths wins trademarks case to block use of KODAK trademark

The trademark KODAK was being applied to bicycles.

The courts stopped use of the name KODAK for bicycles because the trade in cameras and bicycles were similar.

VISA trademarks & condoms case

An application was made to register the name VISA as a registered trademark for condoms.

The VISA mark for credit cards was upheld because the use of VISA on condoms would be detrimental to the distinctive VISA trade mark.

Coca-Cola bottle is a registered trademark

Legislation allows registration of shapes or packaging to be registered as trademarks.

New legislation was passed in the UK in 1994 allowing registration of shapes. The shape of the Coca Cola bottle is now a registered trademark.

AG Spalding & Bros v. Aw Gammage Ltd.

Spalding manufactured “Orb” footballs. Their mark was applied to two types of ball, and the inferior type was sold to waste rubber merchants. The defendant bought the inferior balls and sold them implying they were the higher quality type.

The courts held that the plaintiffs had established a quality reputation for Orb footballs.

... registered trademarks case law

Case law on registered trademarks is well established, and there is considerable legislation to protect registered trademarks. Decisions on registered trademarks take into account the law, the trademarks involved, and the facts of each case separately.

In some cases competitors keep their territory very well protected, using their registered trademarks for enforcement.


More Battle trademark services

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Battle advises organizations, solicitors, and accountants' clients on a range of matters concerning trademarks. Click here to see more Battle trademark services for our range of other trademark services.