Registering a trademark makes patently good sense
The Madrid Protocol sounds like the title of the latest bestseller from the pen of Frederick Forsyth or even an obscure clause in David Beckham’s contract to join the Spanish football champions Real. In reality the Protocol may have implications at least as sinister as anything produced by the imagination of a thriller writer.
According to John Mackenzie, a senior associate at Masons specialising in intellectual property law, the Protocol offers a one-stop, cost-effective filing mechanism for international trademark protection. Rather than filing and paying fees in each country in which trademark protection is sought, an applicant may instead file only one application and pay fees to their local Patent and Trademark Office.
So far, so straightforward. Many countries, including most European Union nations, China, Japan and Russia are members. But the conspiracy theorists will look with some alarm at the fact that, from November this year, the United States will join the Madrid Protocol.
On the face of it this means that U.S. companies will get access to an additional, generally simple and relatively inexpensive option to secure international trademark protection for their business operations abroad. While this may sound sensible in the globalisation age, it does pose a threat to UK businesses. Mackenzie points out that US businesses are likely to aggressively exploit this new mechanism when it is fully implemented, and try and secure trademark rights reflecting those held in the US: “Unless UK businesses move quickly the ability to create new brands may be adversely affected.”
If Scottish companies want to protect their brands they need to think globally. While a trademark registration in the United Kingdom is helpful, they certainly need to consider applying for a Community Trade Mark. When selecting its brand a business needs to assess potential challenges, and these can often come from abroad, particularly the US, and especially online.
Mackenzie cites the example of Speechworks Limited, a small Scottish start-up company which had developed award-winning technology. It was aware, through Internet searches, of a Speechworks Inc in the US, but there was no indication of this namesake operating in Europe let alone the UK. Speechworks Limited had applied for and obtained a UK trademark registration, but even that was not enough to prevent Speechworks Inc from operating in the UK. When an interim interdict was sought against Speechworks Inc, the order was refused on the balance of convenience test, (the judge being satisfied that a prima facie case had been made out) as it was not clear that the Scottish company would be in a position to meet an award of damages if they were ultimately unsuccessful. The lesson to be drawn from that experience is that a company needs to look beyond its local market to assess potential challenges.
Such was the case with the Keltic Skunks, the Scots-based virtual corporation founded by marketing and advertising guru Ash Gupta. The concept for the Skunks was the creation of a network of companies with complementary marketing and technology skills. By collaborating on projects they can compete for global contracts that would be beyond them individually. Ford’s electric Think car is a case in point.
Originally the group’s name was to have been the Keltic Skunk Works, stemming from Gupta’s fascination with military aircraft. The Skunk Works is the top secret Lockheed Martin research establishment that the U2 spy plane and the Stealth fighter plane came from Engineers at Lockheed Martin had given the plant its amusing nickname because of the overpowering smell from the neighbouring plastics factory. With its connotations of innovative technology and secrecy the name seemed ideal.But then Lockheed Martin e-mailed Gupta to point out that, far from being a casual nickname, Skunk Works was actually a fiercely protected trade name.
After negotiations lasting almost a year the Skunks agreed to drop the word “Works” from their name. Lockheed had offered to license the name for a nominal sum but Alistair Orr, a lawyer at Maclay Murray Spens recommended that the Skunks should not sign the proposed agreement. The indemnities required could have resulted in Gupta being sued by the aerospace giant if one of the Skunks upset the US government.
As a demonstration of the early warning systems and firepower that major corporations will deploy to protect any aspects of their brand it is highly instructive.
Closer to home this obsession with protecting every aspect of a brand is becoming more widespread: “Brand visibility, and brand association, is almost as important as the brand itself,” says Mackenzie. Recent attempts, to protect slogans as well as the underlying brand show how far brand owners will go to protect their identities. “The phrase “Have a Break”, may be familiar, but is it part of the brand?” asks Mackenzie. “The makers of Kit-Kats thought that there was enough of a connection to try and protect it.”
Major football clubs are now going to great lengths to try and protect their name, and almost anything else that is connected with the club. Arsenal went to the High Court, Court of Appeal and the European Court to protect what were described as “badges of allegiance”(see box) while Celtic are currently seeking to prevent others from using the words “Hail Hail”, which is the opening line of a football chant favoured by the club’s supporters.
When the Americans become signatories to the protocol this November, trademark and brand protection cases such as the above will become more common on a global basis. Lawyers must be prepared. The thriller writers could soon be enjoying a few more courtroom dramas thanks to the Protocol.
In this issue
- Firms lack capital ambition
- Rural law firms facing issues of succession
- Acquiring masters degree can be rewarding business
- Laying firm foundations for future growth
- Registering a trademark makes patently good sense
- What makes a good partner?
- Claims information before merger options
- Shortcut routine procedures by simple codes
- Jamieson arrives with reforming agenda
- Refining details of new civil legal aid scheme
- Round the houses
- Take care with the crave
- Essentials of the anonymous Budget
- Changing duty on commercial leases
- Scottish Solicitors’ Discipline Tribunal
- Planning for the future – simplicity itself?
- Website reviews
- Book reviews
- Commercial property transactions common standard