WHAT IS A TRADE MARK?

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1 WHAT IS A TRADE MARK? A good name is better than riches Cervantes, Don Quixote

2 TRADE MARKS, BRAND NAMES, SERVICE MARKS A trade mark is a name, a sign or a symbol which is used to distinguish the products or services of an individual or enterprise from those of others, e.g. GUINNESS, LEGO, TAYTO or PAMPERS A trade name is a name which is used to distinguish an individual or enterprise offering goods or services, e.g. BUTLERS, KEPAK, ARAN CANDY A service mark is a trade mark used specifically to distinguish a service as opposed to goods, e.g. KWIK-FIT, AVIVA or VISA

3 TRADE MARKS, BRAND NAMES, SERVICE MARKS A brand is a trade mark, or combination of trade marks, which through promotion and use has aquired significance over and above its functional role of distinguishing the goods or services concerned, e.g. MARLBORO, LEVI S, SMIRNOFF, TIFFANY & CO or CLIO A brand name is the most common form of trade mark and is the central component of the brand, e.g. KERRYGOLD, PEPSI or YOPLAIT A coporate name is a company name, e.g. GLANBIA, GILETTE, CUISINE DE FRANCE or KERRY FOODS

4 WHAT IS A TRADE MARK OR BRAND? VS Distinguishes competing products and services from one another VS Visual sign, e.g. words, logos, packaging, shapes, colours, letters, numerals, sounds and smells Advertising slogans: Vorsprung durch tecknik The Real Thing Because you re worth it

5 THREE DIMENSIONAL MARK A three-dimensional trade mark is a trade mark relating to the shape of the product or its packaging, for example: perfume bottles, liqueur bottles, various containers, etc.

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11 In Ireland and the UK, trade mark rights can be acquired through use. PROTECTION THROUGH USE: PASSING OFF If there is reputation, these rights can be protected by a legal action called passing off. According to the courts nobody the the right to represent his goods as the goods of someone else.

12 Jacobs accused rival biscuit firm McVities of living dangerously in a High Court row over fig rolls and crackers

13 VODKAT isn t VODKA! Diageo vs International Brands

14 UNFAIR COMPETITION In the US, most EU countries, and other jurisdictions, there is unfair competition law. Provides redress in cases where third party get-up or trade dress is very similar, e.g. look-alikes. Third party intends to benefit unfairly from your reputation and goodwill.

15 Company name or domain name registration. PROTECTION THROUGH REGISTRATION Trade mark rights are primarily achieved through registration. Once a trade mark is registered, the registered proprietor is given the exclusive right to use the mark for certain goods or services.

16 WHY REGISTER? Not compulsory, but advisable Monopoly rights Easier enforcement More cost effective Unlimited life Deterrent factor Prior use / later registration?

17 COLLECTIVE MARK A collective trade mark is a mark that distinguishes the goods or services of the members of the association, which is the proprietor of the mark from those of other undertaking.

18 CERTIFICATION TRADE MARK A certification trade mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the Mark in respect of origin, material, mode of manufacture of goods, or performance of services, quality, accuracy or other characteristics. A certification trade mark shall not be registered if the proprietor carried on a business involving the supply of goods or services of the kind certified.

19 WHAT CANNOT BE REGISTERED? Generic terms, e.g. CHAIR for chairs, LAPTOP for computers, TRUST for financial services Descriptive terms, e.g. SWEET for chocolate, SHINE for shampoo, FRESH for milk In certain circumstances, geographical names and common surnames However, sufficient use may overcome objections!

20 WHAT CAN BE REGISTERED? Arbitrary marks, e.g. APPLE for computers Invented words, e.g. KODAK, TAYTO, or GLANBIA Suggestive marks, e.g. SUNNY for electric heaters

21 REGISTERED TRADE MARKS AS PROPERTY Trade marks can be fully or partially assigned, licenced, or mortgaged to raise capital Licensing of a trade mark is central to franchising agreements Guard your registered trade marks!

22 Registering a trade mark abroad The national route The regional route, e.g. Benelux, European Union International route, Madrid system (administered by WIPO)

23 ENFORCING TRADE MARKS Burden of enforcing a trade mark is on the owner Must identify any infringements and decide if action is necessary Seek expert advice Cease and desist letter

24 Case study: Cooley Distillery, PLC Irish Geographical Names as Trade Marks

25 History of Cooley Distillery PLC Founded in 1987 First new distillery to be set up in Ireland in 100 years Acquired and resurrected famous old brands Tyrconnell, Kilbeggan. Acquired famous old distilleries Kilbeggan Distillery Now it s the only Irish owned distillery. Only Irish barley is used. All water sourced from the Sliabh na Gloch river in the Cooley Mountains

26 Products Malts Locke s Tyrconnell Connemara Grain Greenore Blends Kilbeggan Inishowen Millar s

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28 The Trade Marks Tend to be townland, towns, village names Domestic Market: Some local significance some fairly well known. Example Irish Registration for KILBEGGAN restricted to whiskey casked in Kilbeggan Internationally Irish allusions, but no real meaning. Thus, distinctive names. CTM registration for KILBEGGAN no restriction.

29 Main markets

30 Searching/filing strategies Many of the TM s were acquired/resurrected Many in use for serveral/many years alternatives not an option. Identical searches only. Straight to filing applications CTM, USA, Russia, S. Africa.

31 New Marks Tend to be Irish surnames/placenames. Identical/close identical/full searches. Depending on Mark. Proceed to filing Generally USA/CTM or Ireland/UK

32 The Jelly Bean Factory A Case Study Niamh Hall FRKelly

33 First registrations 1997 UK and Ireland THE JELLY BEAN FACTORY (words)

34 Community trade mark 1999 Combined words & logo, black and white

35 Livery red, blue, yellow & white

36 Foreign Applications: 2001 Black and white, combined words & logo Australia, Bahrain, Canada, India, Japan, New Zealand, Saudi Arabia, South Korea, Sri Lanka, Switzerland, Turkey

37 Change in livery 2008: green, pink & white

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39 Protection for new livery Existing registrations in black and white Selected new applications in colour e.g. Community trade mark

40 Other important intellectual property Slogan: THERE S NEVER BEEN A BETTER BEAN! Get-up: packaging layout and colours e.g. Know-how 36 flavours, constant research and development, quality product, natural colours and flavours

41 IP agreements Licences Co-branding agreements