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Like most areas of law, Intellectual Property can appear daunting and complex. There are a great many practice areas, subjects and procedures. The SH&P “A-Z” Intellectual Property glossary is a free and easy to use glossary of legal terms commonly used and associated with IP. We hope that it will help you better understand this topic. All of the entries include contact details for SH&P expert advisers. Alternatively, you can request a free, no obligation, IP Consultation and Review here if you require more information or have a particular issue you would like us to help you with.
Trade dress is an American term that refers to the visual appearance or essential characteristics of a product or its packaging, which in turn indicates the source of the product in question to consumers. Taking for example the well-known Jif “lemon”, this is distinctive by virtue of its trade dress – i.e. the product shape (that of a lemon fruit) and its bright lemon colour.
In the UK we refer to trade dress as the “getup” of a product, which by the same definition conveys how a brand owner presents its product to the market. Features of this presentation include the labelling and packaging of the product, such as colour and combination of colours, graphics and any design elements. Trade dress or getup is the overall visual presentation taking all these features into account.
Using the example of a bottle of COCA-COLA, the trade dress or getup would include the red and white colouring on the label, the white horizontal “swirl” across the label, the shape of the bottle itself perhaps (particularly if it is a small glass bottle) and last – but by no means least – the wording COCA COLA on the bottle. The impact of the combination of these features (i.e. the trade dress) is to leave the consumer in no doubt that they what they are purchasing is the real COCA COLA.
|In simple terms, a trade mark is a “sign”. This sign can be a letter, a word, several words, a slogan, a logo, a word or words contained within a logo, or a 3D shape. A trade mark can even be a sound or smell. What a trade mark must have is the ability to be graphically-represented. In other words, it must be something that is capable of being written down and conveyed visually.
A trade mark must be able to distinguish the goods or one undertaking from those of another undertaking. A customer who buys a product with brand X needs to know that what they are buying has a certain quality they are used to. The brand is the identifier of the product’s origin, such as the manufacturer. Without a brand it would be difficult for a customer to be sure of what they are buying and that it will meet their expectations.
A trade mark is empowering. It is a sign of trust. If it is a product that you have not used before then it is a substitute for trust. If you have no knowledge about a certain product then it is the trade mark that can persuade you to put your trust in that product and to purchase it.
It is a common misconception in the UK that registering a trade mark gives its owner the right to use that mark. That is not always so, since unregistered trade mark rights accrue to a party who have used a mark consistently but without registering it. These rights can be used to invalidate a registration if commenced prior to the registration date. However, by registering a trade mark the owner will have the right to prevent competitors from using the same or similar mark in relation to competing goods or services, provided none of the competitors have no prior use or registration of their own mark.
In other territories, such as in China, a “first to file”system operates whereby the user of a mark has no virtually rights at all. Priority is given to the party that registers their mark, even though another party may have prior use of the same or similar mark.
Infringement of a registered trade mark occurs when there is unauthorised use by another party of the identical or similar trade mark in relation to the identical or similar goods or services for which the registered mark is protected. The infringement of a trade mark is actionable in civil law, but can also be a criminal offence.
In the UK, infringement of a trade mark registration is covered by Section 10 of the UK Trade Marks Act 1994, the following being the key sections:
“Use” of the trade mark must be defined as use “in the course of trade”. In other words, an alleged infringer must use the mark in the course of business such that he or she gains an economic benefit in its use and profits from it. There are exceptions to this provision which are dealt with under Section 10(6) of the Act governing fair use of one party’s trade mark by another party. Section 11 of the Act covers defences to infringement. Examples of this include use of a person’s own name as a defence to infringement. Further, under UK law, the use of a registered trade mark cannot infringe an earlier identical or similar trade mark registration. Under those circumstances the owner of the earlier right would need to launch a successful invalidation action against the later registration as matter of course in order to pursue an infringement claim.
Most jurisdictions allow for third parties to object to the registration of a trade mark, either during the application process or immediately after registration, with formal procedures varying depending on the territory.
Once a UK or EU application has been examined on absolute grounds, its acceptance is published for opposition purposes in a trade mark journal, providing a fixed period within which to file an objection to its registration. It is possible to file opposition against only some of the goods or services claimed in the application.
In the UK, the opposition must be filed by an opponent within two months of the publication date of an application. This period can be extended by a further month on request. The grounds of opposition may be based on any absolute grounds (usually that the mark is non-distinctive/descriptive) and/or relative grounds (earlier identical or confusingly similar registered or unregistered trade mark or other rights such as design right, registered design or copyright).
If relying on earlier registered rights, it is important to consider what rights are most appropriate as any registration that has been registered for more than five years must be accompanied by a declaration stating that the mark has been in use in the UK for the past five years. Such a claim can be challenged by the applicant, adding cost and effort.
The UK IPO provide the option for a “fast track” opposition enabling a swift and low cost resolution of the dispute. To qualify, the grounds must be limited to certain earlier rights (i.e. registered trade mark for identical or similar marks covering identical or similar goods/services only) in order to keep the consideration simple. Proof of use of any older registrations must be filed at the time of the opposition (if over five years old). A quick decision is therefore based solely on similarity of marks and goods/services and would be expected within 3 months. It is still possible to appeal a fast track opposition decision.
The EU opposition procedure allows for an opposition to be filed within three months of publication and opposition may only be based on relative grounds. Objection on the basis of absolute grounds may only be submitted by way of observation (pre-publication) or by cancellation (post registration).
Again, when relying on registered rights, it is important to consider what rights are most appropriate as the applicant can challenge the validity of any registration over five years old and request proof of its use. In addition, if the opposition is successful, the extent to which the applicant may then convert its application (see conversion) will depend on the extent of prior rights claimed in the opposition.
Both opposition procedures in the UK and the EU incorporate a cooling off period enabling parties to discuss settlement of the dispute, and so deferring the costly stages of the legal process. Furthermore, if there has been no attempt to settle prior to formal proceedings, the level of costs awarded may be affected.
An award of costs is granted to the successful party. However it merely represents a contribution – not a compensation of all the fees incurred by a party. For a fast track opposition, the cost award is capped at £500.
Both systems also allow for decisions to be appealed up to the Court of Justice for the European Union (CJEU).
A trade secret is the name given to a process, design, formula, practice, instrument, pattern, or compilation of information that a company can utilise in order to create or maintain an economic advantage over its competitors and customers. It is kept out of the public knowledge and is non-discoverable, meaning that its secrecy can be maintained indefinitely. Every business must take its own special measures and precautions to ensure that secrecy is kept intact. This is no mean feat given the numbers of employees that would need to be made privy to such information.
There is no formal protection for a trade secret, but its value can be almost priceless as a business asset. Consider for example trade secrets such as the COCA COLA formula and Colonel Sanders’ “secret blend of herbs and spices” for KENTUCKY FRIED CHICKEN (KFC). These secrets underpin these business operations and are perhaps the most valuable part of each business – ahead of even the value of the COCA COLA and KFC trade mark rights.
Transformation allows the owner of a Madrid Protocol International Registration (“IR”) to change the basis of its protection from that of one or more IR designations to non-IR national registrations – in the event there is a successful challenge against the base (or home) IR registration.
An international registration is essentially a “bundle of national rights” brought together to simplify the prosecution process and enable single transactions (assignment/renewal) post registration – which provide significant cost savings for the proprietor. However, an IR is entirely dependent on its “base/home” registration for the first five years of its life. Accordingly, should the base application fail to proceed to registration or if the registration is cancelled within five years of the IR registration (by a process called “central attack”), the entire IR falls. However, rather than lose the protection in all the designated territories, it is possible to “transform” the IR into “independent” national rights – choosing some or all the originally listed designations – whilst maintaining the original filing dates (or subsequent designation dates).
Upon cancellation of the IR, there is three months within which to apply for transformation. In the UK, it merely means filing a fresh application with the original IR filing date being claimed as priority. The process (and costs) for transformation in other territories will vary with some requiring full re-examination and others simply re-registering the mark.
It is possible to divide and partially transform an IR if the base registration has been rejected/cancelled in respect of only some of the goods or services.