Wood Trade Marks and Design Limited

What are the three traits that the Dragons ALWAYS want in a business?

1. It will make enough money

2. It can’t be copied (at least not easily)

3. Owners that are not idiots

I’m not an accountant – you can tell like I can if a business is making money or not.  Sales – costs.  If you have a business then hopefully it’s making some profit.

So that leaves 2 elements.. something that can’t be copied too easily and owners that aren’t idiots.  We hear about having a USP all the time.  What about a protected USP – a guarantee that your USP is pretty much yours and can be protected.  That’s pretty good…

That is what good IP is about – finding the juice and protecting the grapes.  If you find a good intellectual property lawyer they will tell you what can be protected, what needs to be protected for an investor to like what they are seeing, and how to do it in the most cost-effective way.  Sometimes it’ll be expensive and a long and arduous process; sometimes it will just take a few emails and a couple of minutes’ work.

The last thing is that the owners shouldn’t be idiots.  Why? Because we like to buy from people we trust, like and admire.  Dragons Den is a bit like X-Factor nowadays.. lots of teary stories, and the occasional singer with a guitar.  Great stuff, and it sells lots of products because people invest in the owner.   If you are a Twitter person or a blogger then you know the importance of personal branding…

If you are not sure what is worth protecting in your business, and how to protect it, then get in touch with me

Software interoperability and competition amongst software is a key issue.  A recent case regarding the SAS Institute helps to underline the law that applies when someone looks at how software works and creates a copy without using the source code – so-called “non-literal copying”.

The SAS Institute produces a very expensive (but obviously highly-worthwhile!) piece of software called Base SAS and also produces lots of modules to add functionality.  They had extensive manuals that detailed the underlying ways in which the product manipulated the data users provided.  A company caled World Programming Limited (WPL) took an educational copy of the SAS software (one meant to help users understand how to use the software) and a copy of the manuals and created their own set of programmes in C++.  They purposefully made the programme work in exactly the same way as SAS, since it was essential that users got the same outcome from their programmes when they used their data as they would get using the SAS modules.

SAS sued for copyright infringement.  Rejecting the case, the judge highlighted the difference between ideas and expressions.  This is the fundemental split in copyright – the law protects expressions, not ideas.  A mathematical formula will often be no more than an idea, so copying that will not be an infringement.  It is only the skill, judgment and labour in EXPLAINING the concept, or in producing code which uses the formula, which will be protected.  In this case, WPL were largely successful in defending themselves, although the judge did say that some elements of the case would need to be referred for clarification by the European Court of Justice and he did acknowldge that WPL’s manuals copied from SAS’.

Ideas and expression.  Not an easy split – it is one of the difficult parts of copyright law, particularly where the output is not directly copied.  How much does one have to copy the plot of a book or a play before it is too close for comfort?  Where does the limit lie in a graphic?  This is a subject which often requires substantial experience to assess.

In the case of software, it should be noted that there is a difference between copyright protection for the functionality (which will be very difficult to protect) and the copyright in the graphical user interfaces (the screens) which may well attract copyright.

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

Lookalike products can be a nightmare to police.  The key for a lot of brandowners has been to register the elements that they want to stop.  Sometimes, however, the relevant authorities make decisions which almost deprive these registrations of their use.

Today (25 March) the General Court found that OHIM had been wrong to find that these marks:

were dissimilar to these:

You may recognise the bottom two images as being the images used on NESCAFE coffee.  The General Court said that whilst there were differences, the marks were similar to some extent and so it was wrong of the Opposition Division and the Board of Appeal to reject the cases.  They will now be sent back for reconsideration, and I would expect Nestle to come away smelling of roses as well as newly-brewed coffee.

Nestle’s registrations were a wise move to combat those traders who were creating copycat products. By working out what others will try to do to copy you, and pro-actively registering, you can help keep the way clear.

It is possible to register 3D images of products or their packaging as trade marks in many countries, including the UK and at OHIM.  But how strong are the rights as against third parties?

Case T-24/08 helps to answer that question.  The owner of a registration for this mark:

Opposed the registration of the following mark as a CTM:

The registration covered largely the same goods  as the later application, alcoholic and non-alcoholic beverages being the area of complete cross-over.  OHIM’s Opposition Division rejected the opposition, with OHIM’s Fourth Board of Appeal rejecting the subsequent appeal.  The Opponent appealed further to the General Court (the body that used to be called the Court of First Instance).

Rejecting the allegation that the marks would be confused, the General Court agreed with the Board of Appeal that before purchasing a product, the consumer would concentrate mainly on word or figurative elements, and areed that there was no likelihood of confusion between the marks.

This appears to be somewhat of a blow, albeit not an unexpected one.  The Court suggested that without evidence of enhanced distinctiveness of the mark (and in particular the neck) there was no likelihood of confusion.  For those that have 3D marks, it is essential that evidence is sourced to the effect that the 3D mark has acquired “enhanced” distinctiveness through use, and that the consumer DOES see the shape of the product or its packaging as an important factor in selecting it amongst others, if you are to successfully stop others from using and registering similar marks. 

As someone who has accidently bought lookalike products (a lookalike of BEROCCA from a highstreet pharmacy) I do think the courts are somewhat short-sighted.. but perhaps I am the shortsighted one!