Trade Marks Selection & Protection

Transcription

1 Adelaide 2017

2 Trade Marks Selection & Protection JAMES OMOND lawyer and registered trade mark attorney

3 What is intellectual property? Trade mark Company name Business name Domain name Copyright

4 Why is IP important? Louie Woodhouse, 3D Artist,

5 Why is IP important? Massive growth in industry participants Number of marks Australia - number of TM applications Year Australia - Total marks registered in class

6 Why is IP important? Commodity v Branded products Margins cf licensed product fee

7 How to protect your IP? Brand and sub-brands Register as a trade mark the only way to secure ownership Entitled to use Common law claim can use symbol (have to prove reputation, damage)

8 How to protect your IP? Copyright (e.g. logos, labels) No registration in Australia (different overseas) Must have written document from creator with express words assigning copyright (e.g. advertising photo shoot)

9 Selecting new product / brand names Be aware there are good names and bad names. Be aware what elements of a name / label may constitute use as a trade mark (e.g. Barossa Signature ) Carry out at least basic searches of the TM Register, and common law usage by other producers

10 Trade Marks words logos slogans (e.g. MADE FROM BEER) distinctive colours (e.g. Cadbury - purple) shapes (distinctive bottle shapes) sounds smells

11 Good Names -v- Bad Names Good Names Invented words THE BEST!!! Arbitrary (e.g. Elephant) Suggestive (e.g. Yeastie Boys) Unrelated to the product (e.g. North Pole for bananas) Not similar to existing brand

12 Good Names -v- Bad Names Bad Names Common surnames Descriptive names Geographic names Generic names Laudatory words (e.g. BEST ) Deceptive names

13 Selecting new product / brand names Seasonal beers protect if will be using in future seasons One-off beers not so necessary to protect Brew pub beer (in-house) names as with other names. Venue name same rules apply (but is in a different class)

14 Selecting new product / brand names Important even if you don t register / protect, search to make sure you are not infringing someone else s mark. Best to use an expert to search but can do the basics yourself first narrow the field identify obvious problems

15 Selecting new product / brand names Remember it may be the name of a wine or a spirit that is the problem not just an existing beer

16 Selecting new product / brand names The Test How would you feel if you saw the name on a competitor s product?

17 Availability Searching Australian Trade Mark Search (formerly ATMOSS) Common law searches: Rate Beer Beer Advocate Dan Murphy s

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21 The trade marking process Application Examination Opposition Registration Minimum 7½ months More like 9 12 months $250 per class government fee TM Attorney fees (if used)

22 The trade marking process 10 years protection Can be renewed indefinitely ($400 govt renewal fee) Country-based system only provides protection in Australia For overseas, have to apply in each jurisdiction (Madrid Protocol makes it easier and cheaper)

23 What to do if someone else is using your brand? Pick up the phone talk brewer to brewer

24 What to do if someone else is using your brand? Pick up the phone talk brewer to brewer Russian River Brewing v Avery Brewing Stone & Wood - Yeastie Boys - The Forager

25 What to do if someone else is using your brand? if that doesn t work.

26 What to do if someone else is using your brand?

27 If your head isn t spinning by now what about product get up?

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29 To finish and to make you feel that it s not just lawyers taking brewers money to sue other brewers: The Craft Beer Attorney, a boutique law firm, applied to register the mark CRAFT BEER ATTORNEY and was opposed by no less than ten competing law firms on various grounds, including the argument that CRAFT BEER ATTORNEY is a generic term for an attorney who provides services to craft beer makers.

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31 #ACBC2017