Month: November 2014

Brand Protection, Intellectual Property, On the Blog, Trade Marks

Part 5: Enforcement: Why you need to implement your brand protection strategy

Posted by Kate Ritchie on 29 November 2014

blog5

You’ve worked hard to build your brand and protect it. So now it’s time to enforce it.

Over the past few weeks, we’ve considered what it takes to create a strong brand and how to protect it at home and overseas. In the final part of this series we’ll look at some of the ways you can implement your brand protection strategy and enforce your trademark rights.

Methods of protection

As we’ve discussed, brand protection encompasses the measures taken to prevent someone from illegally making and selling a product, or offering services using a brand name owned by another company. A strong brand protection strategy will help to safeguard your most valuable asset, but you need to use it and enforce it decisively, or you will lose the protection and value in your brand, that you’ve worked so hard to build.

Fortunately, businesses can protect their brands by implementing various legal processes. We discuss some of these below.

Using the TM & ® symbols

As we discussed in part three, trademark registration is one of the most effective ways to protect your brand in the market. Once your trademark is registered you should consider using the ® trademark registration symbol on your branded material.

The trademark registration symbol ® can only be used for trademarks that registered in Australia. You can also use the trademark registration symbol in overseas markets, but your brand will need to be registered as a trademark in those countries and you need to ensure you are also are adhering to any local conventions. If you don’t have a registered trademark yet in Australia or in your overseas markets, then you can use the ™ symbol.

It is not compulsory to use the ® or the ™ symbol, but its inclusion will give your brand a sense of qualification and act as a deterrent for would be infringers.

Use it or lose it!

Once you register a trademark you must use it in the form it is registered and for the goods and service for which it is registered, to prevent your trademark registration from becoming vulnerable to removal from the register, for non-use.

Anyone can apply for the removal of a trademark for non-use. It is then up to you as the trademark owner, to oppose the removal action and provide valid reasons for why you believe your trademark should remain registered. You will also need to produce satisfactory evidence in support of your opposition to the application for removal.

Diligent trademark owners should keep records of their use on file as this can be very useful not just to defend non-use actions but also to rely on as evidence of your reputation in your trademark, your prior rights and your ownership.

Controlling use

If you are allowing others to use your trademark, then it is important that you control that use. The most common way to control authorised use of a trademark is with a trademark licence. A good trademark licence will include details of the trademark or trademarks that can be used, how they can be used, where, when, the fee for the use and for what purpose the licensee can use the trademark. If you don’t control the authorised use of your trademark then you risk waiving your rights in the trademark.

Common licensees include manufacturers, sponsors, distributors and retailers, franchisees, contractors and consultants.

Watching & monitoring

As a general rule, your brand protection strategy should include watching and monitoring.

Trademark monitoring involves systematically checking for newly filed trademark applications that are similar to your trademark registrations and may adversely affect the value of your brand, your business reputation and your trademark rights, should they be registered. Observing competitors in this way will allow to you to deal swiftly with any threats or infringements on your brand.

Trademark monitoring should also include inspection of business and company names, domain names, social media profiles, websites, directories and search engines, marketing and advertising material and published content such as blogs. Not only will online monitoring of your brand protect you from would be infringers of your trademarks, but can also mitigate your risk of infringing someone else’s. As well as protecting against online threats, monitoring your brand online can allow you to measure how your brand is performing and how effective your reach and impact is.

If you identify a particular brand or trademark that may be problematic for your business, then you should implement a trademark watching process that monitors a specific trademark application or brand.

Cease and desist letters

If you suspect an individual or business of infringing on your brand, you can send a “cease and desist” letter. Also known as an infringement letter or a demand letter, they contain a warning and deadline to cease specified conduct and actions. Cease and desist letters can be an effective way of resolving potential issues before they have a chance to develop.

Be aware that there are risks in sending out a cease and desist letter including action being taken against you for groundless threats or misleading or deceptive conduct (to name but a few!). If you do wish to send one out, we urge you to engage a lawyer who is experienced in brand protection to do it for you. That way you invest a little bit of money upfront to save a lot of potential costs and liability if you get it wrong.

Opposition proceedings

Another important strategy you can use to enforce your trademark rights is to oppose new trademark applications that conflict with your brand or otherwise should not be registered. The benefit of this is two-fold. The first being that you are preventing others (usually competitors) from devaluing your trademark rights and diluting your market presence. Secondly, you are saving yourself a lot of heartache if you decide to lodge new trademark applications that incorporate the conflicting trademark. What does this mean? If you allow your competitors to register a trademark that is similar to yours, it is more likely than not that future trademark applications that you wish to lodge for your brand will be stopped by your competitors trademark. What’s more, you won’t be able to enforce your rights against this competitor in the future. They now have a defence and you may be viewed as having waived your rights to action against them. This highlights the importance of understanding the potential costs and ramifications of not taking action to protect your brand and why it might be more cost effective (and valuable!) to take action.

An opposition kicks off by lodging a notice of intention to oppose a trademark application with the Australian Trademarks Office, within a 2 month opposition period. You will then have one month to lodge your statement of particulars which sets out the grounds of your opposition. If the applicant of the trademark defends the opposition, then you will enter opposition proceedings, notwithstanding the option of a cooling off period where the proceedings are suspended so that the parties can negotiate a settlement.

Oppositions, like any legal proceeding, can be scary for small business owners but they needn’t be. In my experience, by adopting a smart, upfront strategy to oppose, these proceedings typically go into a cooling off period whereby the parties can negotiate a sensible, commercial solution that, if successful, puts an end to the proceedings.

Court proceedings

If all else fails, business owners can start court proceedings against the parties believed to be infringing on their brand and trademark rights. Proceedings can cover aspects such as trademark infringement, misleading or deceptive conduct, copyright infringement and passing off. Court proceedings should be a last resort only where previous attempts to resolve the matter have been unsuccessful.

For more information on how to protect against trademark infringement, misleading or deceptive conduct or passing off, read part two of this blog series.

The next step

As we’ve demonstrated, creating a strong brand protection strategy is essential in protecting your brand and assets, but you need to be proactive and willing to enforce it. Here at Ethikate we pride ourselves on being brand protection specialists. We can work with you to (1) create and implement a strong, tailored brand protection strategy; and (2) enforce your brand and trademark rights for you. Click here to find out more!

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Brand Protection, Intellectual Property, Internet and ecommerce, On the Blog, Trade Marks

Part 4: Protecting your brand overseas

Posted by Kate Ritchie on 7 November 2014

Global trade

 

Time to enter the global market? Protect your brand with international trade mark registrations

So far in this five-part series, we have discussed the importance of creating a strong brand protection strategy in order to safeguard your assets here in Australia.

But what happens when you decide to expand your business and tackle the global marketplace? This post considers some of the steps you’ll need to take to ensure you are protected and operating legally in your overseas markets.

Do your research

Unfortunately, ‘global trade mark registration’ or ‘international trade mark registration’ does not exist, so you will need to undertake significant research on the laws and conventions of your chosen country to establish how best to protect your brand there. This is no easy task and in any case, you will almost always need to engage a lawyer or attorney either in Australia and/or in each of the overseas markets to assist you with this process.

You will also need to ensure that you are able to operate legally without infringing on any existing rights held by similar businesses within your industry, in each relevant overseas market. Trade mark registration is recognised on a per country basis, with the exceptions of Europe and Africa where regional trade mark registrations are also available.

Clearance checks and legal processes will need to be implemented; many of which are not dissimilar to those here in Australia, but they do vary. So, keep reading!

Options for registering your trade mark overseas

There are two options for overseas trade mark registration which we set out below.

1. Madrid Protocol

This is a process of international registration under a treaty recognised as the Madrid Protocol. Australia is a party to the agreement under the Madrid Protocol. Hence, where you have filed a trade mark application in Australia, registering international trade marks under the Madrid Protocol involves filing a single international trade mark application directly to the Australia Trade Marks Office (IP Australia), designating which countries or regions of the Madrid Protocol you wish to be registered for, accompanied by the designated fees.

This is generally the most straightforward option as it is both time and cost-effective where you intend to register in more than one overseas market. However, one potential disadvantage of using the Madrid Protocol for international registrations is that, if your application in Australia fails to register, so too does your international registrations. Hence, you should be confident that your Australian trade mark application has good prospects of achieving registration before registering overseas using the Madrid Protocol.

It is also important to remember that any of the countries included in your Madrid Protocol application can choose to reject your registration request. If this happens, you will need to engage a qualified trade marks agent in that country to prosecute the trade mark application on your behalf. This can sometimes result in more cost to you than had you filed the application directly with those agents in the first place!

2. Country-by-country

If you want to focus your international expansion on one or two overseas markets, you may decide to tailor your overseas protection strategy on a country-by-country basis. This can sometimes be tricky, as local laws and conventions can vary greatly. You will also need to engage a domestic lawyer or attorney in each of those countries who is qualified to file and prosecute the trade mark applications on your behalf. This option can become very expensive and time consuming if you wish to register in more than one or two overseas markets.

With regards to European protection, you can apply for a ‘Community Trademark’, which enables you to lodge a singular application for protection in all 27 EU member states. However, Community Trademarks by their nature are prone to opposition as conducting clearance searches in 27 countries is not generally feasible and so your risk of conflicting with similar marks in one or more of the EU member states can be quite significant.

Conventions, priorities and deadlines

Whichever option you use, it is also important to keep in mind that international conventions and each country have strict time limits and ‘priority dates’, and not all are the same.

Many countries and regions including China, Japan, German, Spain and Korea, operate on a ‘first to file’ basis. This means that the first person to file and successfully register a trade mark in those countries will be deemed the owner of that trade mark. This can create issues where you may have been using your trade mark in one of these countries, but didn’t register it straightaway. If someone else registers your trade mark in these countries first, it will be very difficult to claim your right of ownership. The owners of well-known brands such as Penfolds, Apple, Ferarri, Pfizer as well as celebrities including Justin Beiber and Michael Jordan are just some who have fallen victim to China’s trade mark ‘squatters’ as a result of China’s ‘first to file’ principle. Unless you have lots of time and money to start a brand war in China you will find it almost impossible to reclaim ownership of your brand in these countries. This is very different to Australia (and other countries such as the US and Canada) where prior use is recognised as a prior right of ownership of a brand, regardless of who files the trade mark application first.

Many countries allow you to extend your existing Australian registration and accept it as protected in that country after completing certain formalities. This is a result of these countries signing up to treaties and conventions such as the Paris Convention. Where you apply for protection in a contracting country of the Convention and then apply for protection in other contracting countries, within six months of the date you filed your original application, you can claim ‘priority’ so that protection for your trade marks in each contracting country will backdate to the original filing date of that first application.

Hence, if you file a trade mark application in Australia, you will have six months to file trade mark applications in other contracting countries such as the US, Canada or the UK and protection for these overseas trade marks will backdate to the date you first filed your trade mark application in Australia. For more information check out The World Intellectual Property Office (WIPO) website for the list of the 176 contracting countries to the Convention.

The Paris Convention doesn’t prevent you from filing a trade mark application overseas at a later date. However if you don’t file within the six month timeframe, your overseas trade mark applications will lose priority under the Convention. Hence, protection will only apply on and from the date you filed or registered the overseas application, depending on the local laws of that particular country. So it is important to consider your international brand protection strategy around the same time you file your Australian trade mark application.

Is overseas brand protection really necessary?

In a word, yes! With the online world creating a global market for businesses of all shapes and sizes, international protection of your brand is more important than ever. So, if you are intending to promote and sell your goods or services in overseas markets (eg via your ecommerce website) then you need to ensure that you can do so freely and have the necessary protection in place, just as you do in Australia.

Choosing not to register and protect your interests outside of Australia allows the possibility for others to make use of your brand overseas and potentially harm your reputation and/or opportunities for international expansion.

Here are some factors to consider when deciding whether or not to protect your brand overseas:

  1. Are you exporting products, selling your services, or promoting or licensing your brand in overseas markets?
  2. Where are sales most likely to occur, at least initially and, most significantly?
  3. Where do you want to prevent competitors from using your brand?
  4. Is your brand in use or intended to be used in a “first to file” country?
  5. Are you trading in high risk counterfeit and piracy countries such as China, Korea or Taiwan?

So, what next?

Tackling overseas protection quite complex and therefore daunting for business owners, despite international treaties and conventions such as the Madrid Protocol. At Ethikate we are experienced and knowledgeable on overseas trade mark registrations and can offer specialist advice on how you can create a strong international brand protection strategy.

We will provide cost-effective, tailored solutions specific to your businesses’ expansion plans and can manage your international trade mark applications for you, right through to registration.

Contact us to speak to an experienced intellectual property lawyer and trade marks attorney about your international brand protection strategy today.

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