WE HAVE NOW MOVED TO IP-BRANDS.COM/BLOG

This is the last post on blogger as we have now moved to a new blog platform which is hosted on our own website.

It has been a time of growth and change for Azrights, so it wasn’t possible to post more than one blog during July. The frequency of our posts should increase and regularise from September onwards. So, if you are subscribed to this blog, please visit our new blog to continue to subscribe to our blog.

The new website: www.ip-brands.com/blog

Coca-Cola Bottle Granted Trade Mark Protection in Japan

Japan has joined a handful of other jurisdictions which recognise the shape of a Coca-Cola bottle as trade mark. According to the New York Times (see here), Coca-Cola had been pushing for this mark since 2003. They have succeeded where many other famous brands have failed including Yakult who also tried to register the shape of its bottle for trade mark protection.

The shape of the iconic bottle was first used by Coca-Cola in 1916. The bottle shape is the product of a contest held by Coca-Cola for design that a person would recognize it even in the dark. The bottle went onto latter fame with Andy Warhol’s pop art masterpiece which featured three of the contoured bottles.

Japan is not the only country to recognize shapes as trade marks. In fact, the bottle is already protected under trade mark law in several countries including the U.S., United Kingdom, Russia, and China. The Japanese Patent Office is still deciding whether they will appeal the ruling which was issued by the Tokyo High Court.

Domain Name Expansion – ICANN

The board of the Internet Corporation for Assigned Names and Numbers (ICANN) has recently approved a recommendation to expand the number of Top Level Domains (TLDs) from the existing 21 TLDs to what could eventually become thousands of domain names.

The sudden availability of domain names provides an opportunity for businesses to choose a domain name which will be linked directly to their brand – www.Mc.Donalds for example, would be the complete domain name address – with no need for the currently used suffixes of .com, .org for example. The entire domain name could consist of your brand name. In most web browsers, the WWW. prefix can also be dropped by a user.

The disadvantage of this is that there is widespread potential for abusive registrations on a vast scale. Opportunistic registrants have had to be particularly sharp to take advantage of domain name registrations in recent years – some of the most valuable domain names using the ‘traditional’ TLDs, such as .com have almost all been taken and are usually taken by domain drop catchers for resale to the highest bidder at auction.

Of greatest concern to commercial clients with key brand names will be what protection will be afforded to protect their trade marks? The ICAAN press release has an increasingly familiar approach to such matters:

“Trademarks will not be automatically reserved. But there will be an objection-based mechanism for trademark owners where their arguments for protection will be considered.” See here

So the onus is on the trade mark owner to be proactive in enforcing protection of their trade mark rights. How this will work in practice will remain to be seen. The trade mark owner will have to spend considerable resources in enforcing their rights and preventing others from registering domain names similar to their own. Whilst the dispute resolution service can offer protection from the more blatantly abusive registrations, there is grave potential for some trade mark owners to suffer dilution of their brand name if they are unable to prevent a particular domain name registration.

The changes will now allow for other language scripts. Currently domain names are limited to 37 roman characters, now there is the opportunity to expand brands internationally to allow consumers in one particular country to be directed to an instantly recognisable domain name in the local language script. The concern for trade mark owners will be that this will allow for transliterations of roman characters into many other languages. The ability of trade mark owners to identify such registrations could take considerable time and effort, long after any damage to the brand’s identity has been suffered.

Whilst ICANN’s expansion presents a number of opportunities for brand expansion and promotion, it clearly adds to a trade mark owner’s burden of maintenance to defend their key brand names.

Band Names

A problem faced by bands sometimes is the discovery of another band sharing the same name. Unfortunately this rarely happens at the early stages when a band first adopts its name. Often, a substantial amount of marketing and resources will have been invested into promoting the band’s name on CDs, DVDs and merchandise before it’s discovered that other musicians are using the same name.

The fact that bands with substantial record label support can fail to identify pre existing band names is evident from the dispute involving boy band Blue (reported here by BBC). The case erupted when a previous band of the same name took exception to the use of the name.

In cases such as the Blue dispute, the goodwill in the band’s name may have spread into popular culture already, and substantial marketing costs incurred, so that any rebranding will be unwelcome. On the other hand passing off proceedings will be equally unappealing. However, something has to be done (in Blue, the two bands were able to continue using their names within their distinct geographic areas, but this is not always going to be a suitable settlement option for other bands faced with the same situation).

The problem of conflicting band names seems prevalent in the United States judging by the Seattle Trademark Lawyer reports here on some of the many legal disputes. Obviously a number of disputes do not reach the courts – usually due to the lack of resources to litigate. Reaching a compromise is then the only viable way to resolve the question.

However, the most cost effective approach for any band would be to prevent a conflict arising in the first place. A music lawyer tells me that in the music industry, the Register of Band Names Bandname.com is used for registering a band’s name. This is considered to be good enough for staking a claim to a name - a cost effective alternative to registering the name as a trade mark.

Clearly the idea behind such a registration is that new bands will check the register before proceeding with a name, and should a conflict arise at a later date, a band would be able to point to its registration as an indication of their prior rights to the name.

Discogs, a music resource centre was initially created as a way of enabling electronic musicians and fans to categorise and order the existence of musicians, and their band names. At the time of its creation, there was no easily accessible way of finding out whether a band name already existed, given the unconventional way in which music was released. Conducting a search using their search facility would be a prudent step to catch those names in use, no matter how obscure they may be.

While it is difficult to assess how widespread is the uptake of voluntary registration within the music industry, it is nevertheless unlikely that such registration systems are reliable enough to replace trade mark registration. The problem is that registration is voluntary and has no official legal status. Therefore some band names will inevitably not be registered so that the apparent availability of a name following a check of the register will not necessarily clear that name. Only trade mark registration, which is rare for start up bands, can provide exclusive rights over a band’s name.

Assuming that most bands will lack the resources to invest in a trade mark registration, they should ideally have a trade mark clearance search. Alternatively, if there is no budget to cover even the cost of a trade mark clearance search, then there is a lot a band could do for itself to try to establish whether any conflicts exist before settling on its name. Google searching will reveal many active uses of the name, but it would by no means provide a comprehensive search. A quick and free search of the UK Trade Mark Registry’s website www.ipo.gov.uk should be done as a matter of course, as this will alert the band whether their chosen name (or a similar one) has already been registered as a trade mark or if an application to register it has been made. Any professional who gets involved with a band once it has already begun to use a name should do this sort of basic research to determine if the name is available, and before resorting to a voluntary registration scheme like Bandname.com.

Trade marks as keywords?

My recent trip to INTA was interesting on many grounds, which I hope to report on over the next few weeks, particularly as regards the insights I gained into why anyone having products manufactured in China needs to register a Chinese trade mark quite regardless of whether they intend to sell their products in China.

However, today I wanted to write something about Google's recently revised policy on adwords advertisers bidding on third parties’ trade marks as keywords. Google will no longer block such keywords in response to complaints from trade mark owners. Previously its policy involved verifying that the claim of a trade mark owner was legitimate and if it was, banning the word from use as a keyword by its adwords customer.

There has been criticism of Google’s decision to relax its policy, with some trade mark owners fearing their marks will suffer damage as a result of being available for advertisers to bid on as keywords. Brand owners like lastMinute.com have even suggested they may take legal action against Google due to its change of policy – see their comments in The Times here.

In many ways, Google may be wise to step back from a role which was becoming almost quasi regulatory. It could be quite arbitrary to ban use of certain words as a keyword simply because of a trade mark complaint. This had the potential to be used as a tactic to prevent legitimate competition, by preventing use of words which are arguably not used in a trade mark sense - the question whether use of marks as keywords is ‘trade mark use’ is a hotly debated one.

The Cour de Cassation in France was very recently faced with the problem whether adwords was trade mark use - as reported by the class 46 blog here. The Cour de Cassation has asked the ECJ two questions in order to address the dispute at hand – namely, whether or not trade mark owners have the right to prevent their trade marks forming part of sponsored links, and whether the trade mark owner can prevent such use where the sponsored links take unfair advantage of, or are detrimental to, the distinctive character or the repute of the trade mark.

The answers to these questions may help to ease the uncertainty that is currently faced and give a definitive answer on this point to trade mark owners, and users of sponsored links.

Website Scraping

In recent years, a number of comparative websites have appeared online in which consumers can compare prices of a number of businesses without the need to search individual websites.

Websites such as Expedia use special web crawling software which accesses information from various websites in order to obtain information – key to the consumer being price information. Whilst the technique is of benefit to consumers in many ways, as the user can compare a number of prices or products with one search, there are potentially legal implications for those websites that employ web crawling software to search other websites.

The websites that are subjected to web scrapping by web crawler software are faced with a dilemma. One the one hand, there is potential for extra business generated through referrals from a comparison website, whilst on the other hand it distracts consumers away from their own website and their own marketing and branding. There is also an increase in website traffic, pushing up maintenance costs and slowing the user experience down when their website is accessed directly.

What remedies there are to a website owner could, in many instances, be limited. Whilst website terms and conditions may prohibit use of web crawling software to extract information, an automated machine does not read, understand and agree to terms and merely extracts information from the website. The consequence is that there is an issue of whether such terms of use could ever be incorporated and enforceable.

As websites have their information organised in databases which are arranged in a systematic and methodical way, there could be some reprieve for European Union businesses through the Database Directive. However, this is untested and in a national decision of the Danish Maritime and Commercial Court (Copenhagen), the court ruled in 2006 (in Danish only) that using deep linking and extracting information using web crawling software was not in conflict with national law or the Database Directive. It remains to be seen if other member states take the same view, and what the European Court of Justice's view would be.

If the access is unauthorised, there is an argument to support the idea that the Computer Misuse Act 1990 is breached – it is likely that the access provided by web crawling software is unauthorised access to computer material. Any aggrieved website owner would of course still have the task of persuading the authorities to initiate criminal proceedings against an alleged offender.

For the meantime, websites who are aggrieved by web scrapping seem to have little recourse in law, and may for the meantime be better served by technological means such as road blocking software if they want to prevent web scraping.

McDonalds opposes McSweet’s trade mark application

An established trader in USA has been selling pickled goods under the name McSweet for a number of years. However, as soon as he filed an application for a trade mark at the USPTO McDonald’s opposed the registration on the grounds that the mark was confusingly similar to the McDonalds brand reported here by the IPkat.

This is quite predictable, as it is well known that McDonald’s policy is to oppose any food related trade marks beginning with the prefix Mc even where a substantial part of that trade mark is only remotely similar.

Although there may be a legitimate case in many instances for a small business to adopt a name that a larger, more established brand opposes, the question inevitably turns on whether it has the resources to fight its corner.

On the other hand established brands do need to take care not to throw their weight around indiscriminately, as this can sometimes generate substantial negative publicity and damage the reputation of the very brand the business was seeking to protect. The question is whether this case has harmed McDonald’s. The other interesting point is the effect on McSweet – it seems the publicity generated by the case has attracted more business to McSweet’s website than it ever had before.

The Unpredictability of Trade Marks

Trade mark law is never black and white. When it comes to registering a mark, there are often surprises once the application is examined by the Intellectual Property Office (IPO).

For example, Jeremy Phillips recently reported on this trade mark application which has amazingly passed through the examination process, and is currently being advertised. This says it all about the unpredictability of the trade marking process. The mark is quite non distinctive as is clear from the amusing letter featured on Jeremy’s blog. It is difficult to see how this word mark can operate as a badge of origin, and therefore be registerable, and yet The Village Vet was refused. Even more surprising is that the owners of MyGP have already managed to register MyDentists here.

While it is possible to register the most non distinctive of marks if it is combined with a distinctive logo, MyGP is being let through as a word mark. That means the trade mark owner will be able to object to others using these words by arguing that use of the words caused confusion in the mind of the consumer.

In our experience the IPO tends to raise objections to many a mark that are far more distinctive than MyGP, and there is no way of knowing in advance whether an objection is likely to be made. What is even worse is that trade mark applicants cannot rely on the fact that a similar name has been allowed in the past as a basis on which to argue and persuade examiners to use their discretion to allow an application. So, in the end it is the registrant of the mark that suffers, in sometimes having marks refused, or having to pay heavily to appeal IPO objections.

Predicting how an examiner will treat an application can only be judged by guidelines and the law itself, but there are certainly trade mark applications which are rejected which do seem to have the necessary quality of registerability about them. Check through the list of refusals, and comparing these against successfully examined applications such as MyGP gives a sense that the chances of success in registering a trade mark could very well depend on the examiner and even the mood of the examiner on that particular day!

Data Protection Compliance

As reported a couple of days ago by Outlaw.com, HMRC have in recent years been criticised like many other bodies for their failures in complying with the Data Protection Act 1998 by the Information Commissioner’s Office (ICO). The data breaches and the publicity generated has obvious implications for public confidence in the ability of public bodies in particular to administer personal information in compliance with the legislation.

Businesses should be on guard as they are far from immune to negative publicity generated when a breach of data security is revealed. Financial institutions such as banks and building societies have had their own share of negative publicity due to non compliance with data protection law. It is only a matter of time before such adverse publicity stretches further out into industry as a whole. Data protection laws are no longer a marginal issue, if they ever were. Nor is ignorance an excuse for non compliance.

How do such a vast number of organisations, be it public or private, get data protection compliance so wrong? Whilst the legislation itself is by no means clear, and there are wide industry calls for reform of the current legislation, the ICO have published many editions of data compliance manuals for different industry sectors, and there is no shortage of businesses offering their own data protection compliance services. This is perhaps what makes it more surprising when larger businesses have flagrant breaches of data protection law exposed in the media.

What seems to be at the root of the problem is that businesses may well register with the ICO, develop or enhance their own data protection policies, but fail to put data protection compliance into practice on a day to day basis. What could be fuelling the problem is that policy is filtered through so many channels and departments before it actually reaches the individuals actually delegated to handle data, or perhaps a lack of genuine understanding of obligations from the core policy makers of a business. Whatever the internal causes, making sure all those handling data understand the business’ obligations is key to successful compliance and avoiding the likelihood of a hugely damaging public embarrassment.

Facebook Dispute

Aaron Greenspan’s continuing dispute with Facebook owner, Mark Zuckerberg has taken the form of a petition to cancel Facebook’s trademark registration in the USA mentioned here. The origins of the dispute lay in Greenspan ’s claims to have had the original idea for the social networking company.

Two interesting points arise from this – firstly how the question whether a trade mark is too descriptive can differ based on culture and language. While in the USA ‘Facebook’ is apparently a generic term for the kind of photo directory that many schools have published annually for years – see here. In the UK the word has no such meaning, so that the trade mark FACEBOOK is distinctive.

The other point of interest is the way in which people want to claim ownership of an idea – as if it is the idea which is responsible for the success that is achieved with it. Anyone who has been in business knows that it is how you implement an idea that determines whether it succeeds or not. But if you do think yours is a brilliant idea then the only way to protect it is to keep it to yourself, and only disclose it to someone else if you trust them, and have a good, properly drafted confidentiality agreement in place. The agreement does need to be tailored to the situation in hand if it is to have any value whatsoever.

Joint Copyright appeal favours Procol Harum

The recent ruling in the Procol Harum copyright dispute illustrates the dangers of joint copyright. It is a huge practical problem which anyone whose business involves copyright works should pay heed to.

In the case it was decided that Matthew Fisher became a joint author of the musical work for the song ‘A Whiter Shade of Pale’ by composing the distinctive 8 bar melody of the organ solo, including the variation during its second repetition during a recording studio performance. The organ solo was described as "significant and as hugely famous."

So, if you develop a product and another party does further work on it – beware that if their contribution is substantial enough, they could wind up having joint ownership of your work. This could have a number of unpleasant consequences, the most obvious one being protracted litigation. What may not be so well understood is that joint copyright has the potential to kill off your ability to use your copyright work. This is because if you and the other joint owner do not agree on your plans for the work, you are in a stalemate situation, with nobody having the right to exploit the commercial value in the work.

What does it take to create joint ownership? If a work is produced by the collaboration of two or more authors, where the contribution of each is not distinct from that of the other author(s), then there will be joint ownership.

So, for example, if two people jointly write a book, collaborating on all the chapters, researching it all - then they are likely to both own copyright in the final work. On the other hand, if they agree to split the workload so that one writes chapters 1-5, while the other writes chapters 6-10, then they will each have copyright over their own separate portions of the book - because their contributions will be separate and distinct. Where there is joint ownership over the whole book the parties would need each others’ consent in order to exploit the work.

So, if one party uses the material commercially without the other’s consent, they would be infringing the other’s copyright. Joint ownership can end up in messy litigation, so whether you are in the music industry, or in technology, or any other sector that generates copyright, it is critically important to sort out the copyright position before embarking on a project. So, my advice is:

1. Avoid the possibility of joint ownership arising as this is asking for trouble later on.

2. Don’t rely on a court of law as your failsafe option. It is far more cost effective to avoid fighting over a product.

3. Always make a point of discussing and agreeing copyright ownership questions in advance. Record your agreement in writing and make sure it is signed by appropriately authorised representatives of both businesses.

Domain Drop Catching

Domain names are always an important part of any business. For web based businesses they are sometimes a lifeline. So, what do you do if you do not own a domain name you want? One of the available options is to use a domain drop catching service.

This involves registering your interest with a service provider such as Snapnames.com. The provider will then try to acquire the domain when it becomes available (that is, if the current owner fails to renew it), and then offers it to the highest bidder who has registered its interest in acquiring the domain name.

What guarantee is there that you will get your domain name? None. There are many drop catchers out there, and whichever one gets the domain first will get the domain for its clients. Performance is hard to measure, and service providers will be quick to point out that you only pay if you get your domain. This seems fair enough. Given that you can’t expect guaranteed results, the best policy is to register with as many service providers as possible. Registering with Pool.com, and Godaddy as well as Snapnames should give you a good chance of successfully acquiring the domain name.

Procedure

The procedure for using a drop catching service is to arrive at their site, search for the product (the domain name) you would like to have, add it to your online basket and checkout. You are then effectively registering your interest in the domain. Most providers do not charge you at this point but if they manage to acquire the domain, it is important to remember that they own the domain – you still have to buy it from them.

If no one else has registered an interest in the domain following the service provider’s acquisition, you will ultimately get the domain. It is more complicated if others are also interested in the domain name, in that you will end up in an online auction competing with them for the domain.

It can be a tentative process to successfully acquire a domain name using a domain drop catching service and the fundamental point should be remembered – the domain must expire in the first place to have any chance of success!

Search Engine Optimisation

As a potential user of Search Engine Optimisation (SEO) services, as well as solicitors specializing in internet and related laws, we recently examined the market and reviewed the services that are offered. As expected there is a huge variation in price and terms on offer. Some SEO providers are charging well into the thousands for a monthly subscription service while others charge a tenth of that, and seem to achieve as good and if not better results. In other words, it rarely follows that the more you pay the better the quality of service.

The pace at which SEO has developed into a multimillion industry in its own right has surprised the industry itself. The market is already flooded with providers, making promises of results to increase your business’ visibility, accessibility and many more terms which have become industry standard in the field of SEO. More and more providers are piling in to the market. So, given that the industry is largely unregulated, and the cost of SEO services can be so high, potential buyers of SEO services need to beware before buying.

It is possible that something along these lines may have motivated American Express’s advice in its Small Business Guide to the effect that SEO is a waste of money. The paragraph in question states: “Don’t waste money on so-called Search Engine Optimization (S.E.O) specialists. Search engines are very quick to penalize sites that try to trick their filtering techniques, and once your site has been put on Google’s blacklist, it will take forever to get off.” Naturally the advice did not endear American Express to the industry - see this blog – nor is it particularly helpful to those businesses that have decided they do want to invest in SEO, but need to know how to select the right provider.

While we are not qualified to comment on the quality of an SEO provider’s services, we can help businesses to ensure they select an SEO company on proper terms. You do not want an SEO that takes your money without making any contractual promises whatsoever in return. A business needs to understand that what can work one week may not work another week. Google changes its policy on listings from time to time and there is a distinct possibility that those with an SEO who uses unscrupulous tactics could find themselves removed from search engine listings altogether. The example of BMW’s removal from Google listings because of alleged “Black Hat” techniques such as to draw in web users could be replicated with the techniques engaged in by some SEO providers and send a business’ web marketing campaign into meltdown. Many SEO companies do not offer proper terms of business to cover a relationship of such substantial value, let alone any redress if they were to positively damage your business in this way. On the contrary those that do offer written terms tend to smatter them with exclusions of all warranties for their services.

Given the general lack of understanding in society as to what SEO activities actually involve in practice, it may be more difficult and expensive to sue the SEO company in these circumstances, assuming they were worth suing in the first place. If a business is not careful when choosing a provider it could end up paying significant amounts of money, and exposed to many tall promises and little in terms of remedy should the service badly underperform. We would strongly advise small businesses not to part with their cash without first looking carefully at the provider’s terms and conditions. The most effective way to prevent any problems that may arise is to make sure that the SEO service provider and the business owner are aware of what each other’s expectations are. You need to be clear what the SEO is specifically going to do for you to achieve the hoped for results. How much time will they spend on your project? What input will they require from you?

From the point of view of the SEO provider, they will not be able to promise the earth, there are many factors outside of their control, SEO remains a curious process and business owners will need to be aware that there are limitations to what is possible. However, the business owner will also have to ensure that the services are providing them with a service that can be relied on – i.e. the SEO stand by what they claim to deliver. Therefore key is an agreement ensuring that there is a sufficient understanding between each party and there are adequate remedies when either party is in default of its promises. Beware that a good number of SEOs are trying to tie down business owners to long term deals, which could prove disastrous if the project were to fail to deliver. SEO contracts which cover the necessary points are few and far between, so you will need lawyers that understand this area to vet the agreement before you are bound to it.

Worldwide clearance of names and the small business

Google’s Gmail litigation raises an important point about clearing names before use.

It is hard enough for a business to invent good distinctive names that are not already someone else’s trade mark in one country, let alone in several countries worldwide. The charges made by large search providers can be prohibitively high. A company could pay as much as £10,000 or more just to clear a name worldwide (in practice likely to be in key economies of the world and within the EU). Then there is the cost of trade mark filings on top. So if even wealthy organisations like Google get it wrong see here how does a small business manage this risk?

In managing the risk, there is a lot a business can do for itself by way of initial checks as suggested here, such as searching your desired name in a search engine like Google ®, and avoiding similar names that competitors are already using. However, it is important to understand that here are a host of reasons why a name may not show up on search engines and yet be someone else’s registered trade mark - for example, websites which use flash technology may not be picked up by the search engines, or the registered trade mark may not appear on the web even though it is in use. Alternatively, someone could have registered a trade mark intending to use it but not yet begun to use it (as long as they are within the 5 year limit on unused marks they can stop you using the name even if you begin to use the name before they get round to doing so). And then there is the further complexity that in some countries it is the first person to use a mark that gets superior rights to a name, whereas in others it is the first to file a trade mark.

So, what conclusions should a business owner draw from all this? Well, given that trade mark searches are all about reducing risk, the most important message is that it is better to do some searching than none at all.

There are also a number of options between the two extremes of conducting no searches, or paying the sort of sums that even large corporations may balk at paying. This could range from doing your own search engine searches, to also looking at available domain names, and checking the identical name on a few trade mark registers, such as that of the USPTO.

Bear in mind though that even if numerous trade mark registers are searched, for example, the national registers of the UK, Germany, France, and the US , what you find out is whether anyone has a trade mark over a word corresponding to your search term in that territory. It is also often going to be in a foreign language. So, searching all 27 countries within the EU would be extremely time consuming.

Therefore consider your search strategy in advance, both in terms of the country registers to be searched, and the search terms. Remember there is the added complication of understanding the search results themselves, given that trade marks are divided into classifications across goods and services. Identical marks can be registered in a number of different classes by different trade mark owners. For example, the mark ZENITH, produces 60 results on the UK IPO database. Understanding whether or not a new mark in that name could be successfully registered requires a solid understanding of the classification system, and how cross searching of classifications comes into play to determine whether a registration in one class extends protection into a class that is not specifically registered by the mark owner.

So, anyone having a new brand to clear ought to talk to their trade mark solicitors to see what searching is on offer. For example, could they do some searching of trade mark registers of key economies for you? I would say those of the US, UK/CTM, and certain national registers within the EU and Asia should be on the list. Such a search would not be designed to give the level of comfort of those of the large corporate search providers, but would nevertheless be adequate at a fraction of the price to significantly reduce the risks of trade mark litigation when you come to register your mark.

Generally the less risk you are willing to take the more thorough your searching needs to be. For example, even if you used a large corporate search provider, you could just restrict the search to the identical name, or you could ask for wider searching to cover certain alternative spellings and words sounding the same or having common prefixes or suffixes. You could also request common law searches. So, the first decision is what is your budget? Then let’s see what your money will buy for you by way of trade mark risk management.

Metatags and Trade Mark Use

Trade mark law like any IP right has been forced to adapt to the digital environment where trade marks are seen on virtually every web page available on the internet. The question is whether or not the appearance of the mark amounts, in certain circumstances to use of the trade mark.

Today many businesses use the internet as a means of procuring new customers. A competitive business will try to increase its prominence by using key search words that a user will search for within their website. Search engine optimisation is a significant investment for any business if it engages a professional search engine optimiser to help it move the order of search results on search engines in order to attract more visitors to the website.

The type of keywords used is a tactic in itself but the starting point for most businesses will be to try and use generic search terms related to the services they provide on their website. For example, a business based in London called Example Cleaners would perhaps start to use terms such as ‘Floor Cleaning’ or target users on a geographical basis, say for instance ‘Cleaners in London’. However, competitors would be using these same generic terms to attract users.

The obvious step is to use more distinctive, specific terms

What if you wanted to use a competitor’s trading name to benefit from their success so that each time someone searched for them your website appeared among the results? What if you bid on a competitor’s name as a keyword in your Google Adwords marketing so that each time anyone entered the competitors name in the search engines, your Adword selling similar goods or services appeared?

We have an answer from the High Court on the second question, which came up recently see here when Yahoo was successful in fending off an action against it by the owner of the mark MR. SPICY. The court decided that the words MR SPICY were not used by anyone other than the user who enters the phrase MR. SPICY as a search query in the search engine - in this case Yahoo’s search engine. It was felt by the court that the response that the search engine generates by the user typing the trade mark is not use of the trade mark by Yahoo.

Google loses Gmail trade mark case

Google’s unsuccessful EU wide trade mark application to register the name ‘G-mail’ shown here is a salutary lesson about the importance of registering rights to a brand early, and in all countries in which you hope to use it. When an EU application is successfully opposed in any one member state, as it was here, the entire application fails (although it may then be converted to individual country applications).

It is expected Google will appeal (see media report here) But in the meantime Google will not be using the name Gmail in Germany or the UK where the mark Gmail is registered by the Independent International Investment Research. This was also the subject of a dispute with Google (now settled on terms whereby Google agreed to use the word Googlemail instead of Gmail in the UK).

Unjustified Threats

One challenging aspect of advising small businesses is the vagueness of the law. It is difficult to give the clear, black and white answers business people need. One client recently asked me what letters we would be able to send out to enforce her design or trade mark rights if she registered them. She even wanted to know how much we would charge for such letters. She was unimpressed to hear about the threats legislation and that the price would largely depend on the facts. For a recent example of the threats provisions at work see here and for more details of the legislative provisions about designs see here, for trade marks, see s21 here and for Patents see here.

So, is it not worth registering rights given the uncertainties that exist and the potential costs of enforcement? I can only express my own opinion by explaining why Azrights has applied for a trade mark even though I know we would not be able to outspend a big corporation if it were minded to steal our brand. But that is to look at a worst case scenario. As the costs of infringement actions are so high for business – both in financial and resource terms – in practice, people are wary of infringing on other’s rights and try to get round them wherever possible. So, IP law does not generally involve squabbling in court over the existence or scope of rights. Rather than going to court to get a judge to tell them what they can and can’t do, the focus is on getting into the best position for reaching agreement on who should be allowed to do what.

In practice, if we did not register our rights it would be even more difficult to enforce them. Passing off actions are notoriously expensive to bring, and sustain. On the other hand a registered trade mark deters most people from infringing the rights. So, a registered right strengthens your position in achieving a negotiated solution. Disputes generally do not reach the courts and are settled, if both sides get the same advice about their respective prospects. It is only if both sides think they are going to win, or that anything can happen that settlement is less likely. As this is an important issue to many of our clients we will be coming back to these questions in future postings.