IP ANALYSIS
- The London 2012 Olympics – what companies can and cannot do
- Seeking to prevent the sale of goods on eBay
- Trade mark protection in China – special considerations
- Company Names Tribunal – an update
The London 2012 Olympics –
what companies can and cannot do
Many businesses will wish to maximise revenue generating opportunities resulting
from the successful bid for London to host the 2012 Olympic Games. However,
marketing strategies and advertising campaigns must be carefully created to avoid
the risk of infringing the London Olympic and Paralympic Games Act and the Olympic
Symbols Act 1995.
The use of various Olympic marks in the UK has been regulated for over ten years by
the Olympic Symbols Act 1995. “Olympic Marks” are defined as the words
Olympic(s), Olympiad(s), Olympian(s) and London 2012 and logos such as the
Olympic rings, Team GB, GB Paralympic logo, British Paralympic Association logo,
London 2012 bid logo and British Olympics Association logo. Infringing acts extend
to use of these marks, or similar marks, where an association with the Olympic
movement is created in the mind of the public.
The London Organising Committee for the Olympic Games (LOCOG) advises that the
combination of a word in Group one with a word in Group two from the following
lists could be held to infringe the London Olympic Association Right.
- Group one: games, two thousand and twelve, 2012, twenty twelve.
- Group two: gold, silver, bronze, London, medals, sponsor, summer.
The LOCOG will also be monitoring the use of insignia associated with the Olympics,
such as an Olympic style torch and images of venues that will be used for the Games.
By means of a cautionary example, Olympic Removals has operated for over twenty years as a library removal service. The company is reported to have received an email from the LOGOC concerning the use of the five-ring Olympic symbol on its livery. Olympic Removals is, coincidently, located opposite what will be the white-water site for the Games and, unfortunately for Olympic Removals, this may have contributed to the strong handed approach from the LOGOC. The message from the LOGOC is clear: change your livery or risk being sued.
It also appears that the London Olympic Association Right may prevent the use of
Olympic tickets as prizes in company-run promotions, although further clarification
is anticipated on this point.
It is therefore apparent that any business which uses representations associated with
the Olympics in the course of trade in a manner that is likely to suggest to the public
that there is an association with, or an endorsement by, the LOCOG runs the risk of
having to defend an action for alleged infringement.
Seeking to prevent the sale of goods on eBay
With the power of internet selling growing on a daily basis, increased consideration
needs to be given as to how to prevent unapproved listings on eBay. The options
available will depend on a number of factors including whether the goods being
offered for sale are genuine goods or counterfeit.
There are a number of different considerations that could affect how to proceed in
connection with the sale of goods on eBay and each case will have to be assessed on
a case by case basis. It will also be important to consider the desired end result, e.g.
whether the intention is simply to stop the sale of goods on eBay or to additionally
seek financial compensation.
If the aim is just to stop the sale of the goods, then the Verified Rights Owner (VeRO) process provided by eBay will be the quickest and cheapest way of preventing such use. If the additional aim is to seek financial compensation from the sellers, then consideration should be given as to whether to also issue proceedings for trade mark infringement/passing off. It can be anticipated that the costs of issuing such proceedings would be far higher than filing a VeRO application.
One other option available would be to consider whether it might be worth seeking
to enter into some form of agreement with any of the eBay sellers, especially some
of the larger shops. This could be a chance to give consideration as to whether any
licensing opportunities are available which would enable the controlled use of the
relevant trade marks and the generation of revenue.
A detailed article is available - please contact us or download directly from our website
Trade mark protection in China – special considerations
The importance of China, both as a potential market and also a manufacturing source
of products, has increased in recent years. However, China remains a challenging
environment for companies to protect their trade marks and one where special
considerations apply. China is also significant in terms of being the origin of many
counterfeit products.
In trade mark terms, China is a first registrant country, i.e. rights in a trade mark are
granted to the first to apply. As a result, companies can often find that by the time
they seek registration themselves, or wish to enter the Chinese market, a local
individual or company has already applied for and registered their trade marks. This
problem originally related mainly to the owners of well-known brands, but greater
internet availability and usage in China has increased the information available locally
on non-Chinese marks and as a result almost any trade mark with a web presence is
at risk.
Although, in certain circumstances, it is possible to challenge a local registration by
filing a cancellation trial, on the basis of “bad faith”, these proceedings are lengthy
and difficult to prove. They need to be supported by comprehensive and detailed evidence establishing that the company’s trade mark is well known internationally
and/or in China.
Local language issues also make China a country requiring special consideration.
There may be more than one way to represent a trade mark in Chinese characters.
Brand owners should therefore make sure that at an early stage they develop and
identify the way in which they wish to present their marks in Chinese, and also
consider any alternative versions which might be used, and seek registration of
these marks. If prompt action is not taken there is a risk that these Chinese marks
will be registered by third parties.
Additionally, local Chinese companies often apply to register trade marks under
other classifications of goods and services, in particular for packaging, in order to
try to create a “blocking” registration which the company may be forced to try to
acquire in order to clear its trade mark for use in China.
China is a member of the Madrid Protocol and therefore owners of International trade marks under the Madrid Protocol can apply to add China as a designation. This may often be the most straightforward way of registering marks in China, as
some of the formalities requirements which apply to local trade marks are avoided.
However, for marks that are focussed on presentation of the mark in Chinese
characters, and for coverage for goods/services that are potentially outside the
scope of a basic International registration, additional national filings may be
required.
There is a balance to be achieved between the extent of coverage sought and the
costs involved, especially bearing in mind that, if challenged, Chinese trade mark
registrations are vulnerable to cancellation on the basis of non-use after a three year
period. Nevertheless, special circumstances in China justify serious consideration of
a more comprehensive and robust filing programme than one that might suffice
elsewhere.
Company Names Tribunal – an update
Since 1 October 2008, the UK Intellectual Property Office has been operating a
Company Names Tribunal that passes judgement as to whether a company name
has been registered for opportunistic purposes.
To date, the Company Names Tribunal has had twenty five cases to determine. Of
these twenty five, two were withdrawn, one was struck out and twenty two
resulted in findings for the applicant or brand owner. However, it should be noted
that only two of the applications actually resulted in substantive decisions and all
but one of the remaining applications was unopposed.
The following key points have emerged from the case law:
- evidence of confusion carries no weight
- ownership of a trade mark will not contribute to an argument as to goodwill
or reputation
- a witness statement, affidavit or statutory declaration must be filed in
support of any claim to goodwill or reputation, along with any supporting
documentation
- if a company name holder files a defence, then unless the defence used is
that the name was adopted in good faith or that the interests of the
applicant are not adversely affected to any significant extent, the applicant
must show that the registration is opportunistic or obstructive for it to
succeed in its application.
Therefore whilst the Company Names Tribunal is a useful addition to the options
available for companies, it is not a quick and easy alternative to a passing off or
trade mark infringement action, and a successful result for a brand owner is
certainly not guaranteed where the application is defended by the company name
holder.
A detailed article is available - please contact us or download directly from our website
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