Wood Trade Marks and Design Limited

Trade marks are a difficult beast – some try to use them to stop their competitors commenting on their behaviour.  We see this in many forms:

1. Trade mark owners trying to seize back domain names which have the trade mark in the name when they are being used for criticism sites;

2. Trade mark owners trying to suggest that competitors cannot use their trade marks when they criticise them; and

3. Trade Mark owners trying to use trade marks to stop people using the marks in Adwords.

All three situations are difficult, as there is inherently nothing wrong in commenting and using trade marks where the use is to identify the competitor.  The test is whether the use is in accordance with honest business practices, however, and if you go to far then you stray outside the realms of acceptable practice.  Whether it is acceptable practice or not may be difficult to assess – some will be put off by receiving threatening letters even when they have a “gut” feeling that they should be able to keep using the mark.

Further problems arise where someone has a logo – are you going too far if you use the logo?  If you could quite easily identify them just by the word part (think ESSO) then it may well be that using the logo may go too far.

In the case of AdWords, there may be a difficult “squeeze” involved.  If you want to say that JOHN SMITH vodka is made by underpaid child labour, you may want to use the trade mark JOHN SMITH as an AdWord and also say in the text “Read here how JOHN SMITH is made by child labour”.  The problem comes that Google will routinely reject the advert (and take it down if complained about) on the basis that the trade mark is in the advert text.  This is in their terms of service, so it’s a matter of Google’s terms with advertisers rather than a legal requirement.  If you don’t make the advert clear, however, then the trade mark owner may suggest that you are conducting a “bait and switch” site, attracting people by suggesting that the site is real/official/authorised.  If they successfully argue that then you may find yourself on the wrong side of a trade mark case.

The centre ground would appear to be to use wording which makes it clear that it is not official – something like “Read the truth about child labour that they don’t want you to read!”.  It seems unlikely that anyone would be confused, and you have made it clear what they will find.  Nevertheless, you should probably expect to have to explain your actions at some point.

By the way, in case anyone is in ANY doubt, nothing on this blog constitutes legal advice – don’t simply rip off my comments and think I’ve given you “proper” watertight legal advice!

It pays to stay on top of your domain names.  It seems like The Coca Cola Company did not with their 5 Alive drink.

They recently come out on the wrong side of a couple of domain name decisions relating to the domain names www.5alive.co.uk and www.fivealive.co.uk. In both cases the Expert found that Coca Cola had not proven that the registrant had registered the domain names in bad faith.  In the 5alive.co.uk case, the Expert went a little further..

The registrant had found that the domain name 5alive.com was not registered to Coca Cola.  The Expert picked up on this, and also the fact that Coca Cola were apparently just about to launch a new marketing campaign in the UK.  The timing of the complaint seemed to be with that in mind – to succeed and get a domain name transferred to them to use for marketing campaigns.

As always, it seems that painting the right picture is important – Coca Cola seem to have attracted the Expert’s ire by the timing of their action, having had some 6 years with few domain names and then a sudden “push” to get them.

ICE CREAM – for those in the know, it’s a very cool brand (excuse the pun).  But their attempt to protect the brand in the UK failed due to an earlier registration of HIGH HEELS AND ICE CREAM.  The UK Intellectual Property Office took the view that the marks were similar, pointing to the fact that the ICE CREAM element of  HIGH HEELS AND ICE CREAM has an independent role in the mark (since you don’t tend to put the two together).  On that basis, the opposition brought by the owner of that brand succeeded.

I’ve some sympathy for Pharell and the other members of the Billionaire Boys Club (who use the ICE CREAM brand).  I suspect this will not be the end of the matter, however, as I can see easy ways to turn it round and where money is involved, there is often a way…

If you want to read the entire judgment, go here: http://www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decision-results/o21010.pdf

Celebrity branding. You have to love it.  Except when it involves terrible combinations of celebrity and product.

The UK trade mark office have published an application for N-DUBZ covering a range of products, including CDs, clothing and entertainment services.  Pretty mainstream.  But we then get some slightly more fun products:

Crayons – Dappy’s writing instrument of choice?

Decorations for christmas trees – we all like a bit of bling at Christmas..

Paper napkins - who knows…

I was slightly disappointed they are not trying to protect their band name for rapping paper (or should that be BBBRRRRRAPPPP!!!ing paper) and that they haven’t covered belts – although having seen their jeans I can tell they don’t wear them. 

If you want to see it in its glory look here:  http://www.ipo.gov.uk/t-find-number?detailsrequested=C&trademark=2538207

Hands up who watches Dragon’s Den?  Over the years it seems the dragons have got more IP savvy, and I credit the programme with making people more aware of IP.

It is the key to every business – the content that brought success.  It could be a contact list, a recipe, a product, who knows.  But the key point is this – you need to know WHAT you have, and WHAT is worth money to others.  Most importantly, if you are engaging others to help you then you HAVE to agree what happens with the fruit of that collaboration.  I am in the midst of trying to unravel a particularly horrible Gordian knot created simply because they didn’t think hard in the beginning.  I am constantly saying this line to my clients:

Hope for the best, but plan for the worst.

Hope that they are as genuine as they seem when you met.  Hope that fairness will rule throughout.  But plan for them to go into liquidation, try to deprive you of assets and do all manner of underhand things.  They just might…