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clearing trade marks in the uk CASE STUDY

‘Trade mark owners don’t want to be told they can’t use a mark. They want to be told they can but that there is a list of things that they have to do first.’ David Stone, Partner at Simmons & Simmons and acknowledged expert on trade marks and design rights, shares his views on clearing trade marks and the future of the trade mark business. ‘The key challenge for trade mark practitioners is to provide useful advice to their clients at a price that meets their expectations, which is becoming more and more of a challenge. Saying no is not an option anymore,’ David Stone explains. ‘Some clients are very adverse to risk. And rightly so given their industry, their competitors and the reputational and financial costs of litigation. So it is essential we know their business and their risk threshold. And that we can come up with the right solutions efficiently and cost-effectively.’ AGAINST ALL RISK

These days, some companies have a tendency to take more of a see-what-happens attitude to the filing of trade marks. According to David Stone, this might involve the risk that someone will object to your use. Moreover, the owner will not know of the objection until after the launch of the product or service. ‘If you are printing your trade mark on the product itself, the real danger is that someone can obtain an injunction that prevents you from selling it,’ he warns. ’And injunctions are reasonably easy to obtain in some EU member states. In such cases, you will be forced to stop selling your product. The real problem, particularly in industries like electronics, food and beverages, is that the public does not readily distinguish between a product recall on the basis of health and safety and injunctions preventing the infringement of trade mark rights. The long-term damage to a brand can be immense.’


‘That said, I can also see circumstances where a brand owner may get away with it. For example, if the mark is not going to appear on the product but only in internet advertising for a short period of time. In such cases, you’re probably not going to be filing the trade mark in the first place. And chances are you may well get away with not performing clearance. That, in my opinion, is part of the expertise of trade mark law. It is not just about doing the same thing time and again but it involves modifying the search and filing strategy to make the risk level acceptable to the client.’ SETTING THE APPROPRIATE STRATEGY

Based on his experience, David Stone identifies two different strategies: screening and full clearance. Each depending on the customer’s needs at a given point in time. Screening: Choosing between multiple marks ’Sometimes, a client will come to me and say: “Here are 3 or 4 (or sometimes 300!) marks that we’re thinking of using and we really don’t know which ones we like. Can you tell us which of them are going to be easier to register and use in the UK or in Europe?” When I am faced with a large number of marks as an external lawyer I really have a lot of leeway in recommending which marks are likely to fly and which are going to cause more difficulties. In such cases I conduct an online screening on SAEGIS™ on SERION™. Which offers a quick and inexpensive way of knocking out any marks that are obviously never going to work.’

WHAT WILL THE FUTURE BRING FOR THE TRADE MARK BUSINESS? ‘As well as an increase in the use of technology in watching, searching, communication and portfolio and litigation management – which will definitely require an increase in technological savvy in our business – I think we will see a greater harmonisation of trade mark laws around the world,’ says David Stone. ‘The Singapore Treaty, albeit slowly but surely, is doing just that. We will begin to see an increasing use of international treaties, such as the Madrid Union and the Hague Union, and I think we will see a design harmonisation treaty along the lines of the Singapore Treaty. Internationalisation and harmonisation should continue to make our jobs easier because many of the regional differences will be removed over time.’

case study: clearing trade marks in the uk 

‘If we then come across an exact or very similar mark for the same goods or services that has recently been registered in a major jurisdiction, then it is easy to say to the client: “That’s not going to work. That mark has already been taken by one of your competitors. Let’s look at some of the others.” For each mark we can knock out at this level, the client saves the costs of full clearance in multiple jurisdictions. When we find the marks that might work, the next step is to move on to a clearance by means of a full availability search. Which is a much more detailed, much more thorough process, looking not only at identical marks but also at marks that could be confusingly similar.’ Full clearance: How to get to ‘yes’ David Stone: ‘Of course, clients also come to me when their mark has already been chosen. It could be that it has already been launched in a major jurisdiction such as the US and they now want to roll it out in Europe. Or it may be the favourite of the spouse of the managing director and that is just the mark you have to get cleared. In those cases my task is very clear: don’t say no – say how to get to yes. And that’s where availability searching comes in and becomes very important indeed. Because when the mark is to be launched in the UK for example, I can’t go back and say: “Here is an identical mark I found on SAEGIS”. Clients should get informed of all the problems and how you can get around each of them. You simply can’t do that without a full availability search.’ ‘An example that springs to mind is the launch of CocaCola Zero. A major launch for The Coca-Cola Company in which we assisted with the clearance of the mark in the European Union. Not surprisingly, there were a number of prior registrations for beverages that included the word ‘zero’. Having identified the potential problems, we were able to assist the company by addressing each of them to ensure that the launch proceeded incident free. Indeed, it was incredibly successful.’ LOOKING BEYOND TRADE MARKS

‘Just how thorough a trade mark clearance should be depends on the client’s intentions for its mark. Will it be on the market for a long time? Is the mark to be printed on the product? Or does the owner want to be sure that the mark can be used in 187 countries? In those cases, the level of clearance should be very thorough indeed. In addition to registered trade marks, we would look at UK company names, word elements in Registered Community Designs, 6ter and include a UK Common Law search. Just to make sure that there is no right that has been accumulated through long use that hasn’t yet been registered,’ says David Stone. Company names ‘With the introduction of the UK Company Names Adjudicators, it has become much easier, quicker and cheaper to have a company name struck out in the UK when it infringes prior rights. Under the previous law, only the High Court could establish trade mark infringement, which was difficult if the company name was not yet in use,’ says David Stone. ‘Given the difficulty of taking cost-effective action in the event of an infringement, many clients would not even bother to look for infringing company names.’

‘However, now that they can actually do something about it, clients keep a much closer eye on company name registrations. Because of the need to move swiftly and file a complaint before the company starts trading. As a result, we now also recommend a company name watch service for all of trade mark owners’ major brands.’ According to Darts IP, a European IP case law database, in 19% of OHIM decisions related to a conflict between a trade mark and a prior trade name, the trade mark was refused based on prior rights. Domain names ‘In the UK, the ownership of a domain name does not of itself establish trade mark type rights. The fact that someone owns a domain name, in other words, does not stop you from using a similar word as a trade mark. Unless the domain name owner has established a significant reputation with respect to relevant goods and services,’ David Stone explains. ‘We do have a look at domain names because knowing about them at the clearance stage can help prepare for possible obstacles in the future. However, more and more companies are taking responsibilities for those themselves. So if the client has decided on the name of the product, it will go ahead and register the domain names that it wants. And if those are not available, then the client may well consider another mark from the start.’ Verbal elements in Registered Community Designs Because of the interrelation of design and trade mark law, in some cases an earlier design can invalidate a later trade mark, and vice versa. ‘Particularly now with the possibility of registering stylised words and logos as Registered Community Designs, trade mark clearance is more meaningful if you have checked what has been registered as a design. I can see now, for instance, that there are two RCDs including the word element David. One refers to ‘David Seaman’, a soccer player, and the other to Michelangelo’s David! So, when clearing a mark, it is definitely useful to cross-reference against Registered Community Designs which contain verbal elements,’ says David Stone. 6ter search ‘That really is a tough one,’ says David Stone. ‘Because if a mark is protected under Article 6ter of the Paris Convention these special rights are not foremost in our mind and are often easily overlooked. Searching for protected state emblems and names, abbreviations and emblems of international intergovernmental organisations is no easy task. A search tool that includes an overview of exact marks with ‘global’ rights as per Article 6ter would be very helpful indeed.’

DAVID STONE: A PROFILE David Stone is a Partner in the London office of Simmons & Simmons, an international fullservice corporate law firm with 20 offices around the world in Europe, the Middle East and Asia. David Stone heads the European trade mark practice along with Adrian Smith, offering a genuine one-stop shop for the firm’s clients - from clearance, filing, litigation, oppositions and customs to anti-counterfeiting and eBay. David Stone is a recognised expert in design and trade mark law. His true passion is the law itself: ‘I really enjoy the legal work, so I make sure I have time to do that. I’m afraid I am one of those lawyers who is happy to spend a Saturday with a pile of judgments to read and a couple of articles to write. I’m very grateful that I do love what I do.’ David Stone also finds time to help the global trade mark community: he is the driving force behind the MARQUES Design Team and is part of the committee already planning the 2011 INTA Annual Meeting in San Francisco.

case study: clearing trade marks in the uk 

According to Darts IP, a European IP case law database, in 60% of UK decisions and 78% of European decisions based on Article 6ter of the Paris Convention the trade mark was refused because it was too similar to a protected state emblem. COMPREHENSIVE COVERAGE FROM A RELIABLE SOURCE

Local expertise ‘When it comes to clearance, we’re always going to require some level of local expertise. I can give you a fair idea of whether two marks could be construed as similar in the UK. But frankly, I would have no hope of getting it right in Bulgaria, where a different script is used and I don’t speak the language. Having a partner like Thomson CompuMark, with a multitude of teams and tools that span the globe, we get those sorts of answers from a reliable source rather than doing it ourselves from within our own jurisdiction,’ says David Stone. Thorough and responsive David Stone: ‘I have worked with Thomson CompuMark for many years and have always found them to be particularly thorough and responsive. And those are two things that I value as a practitioner. My advice is almost completely reliant on the tools with which it is prepared. So if a prior mark is missed by the search provider, it will fail to show up in what I am given and I will not be able to pass it on to the client. Having a strong level of confidence that the first stage of the search has been conducted properly is essential for any practitioner in this field. The fact that Thomson CompuMark is responsive is also very important to me. I do not profess to be an expert on all the different ways of searching all the different types of marks. Whenever we are given a clearance task that is a little bit out of the ordinary, I find the staff at Thomson CompuMark extremely helpful. They will always say immediately which elements they can search and which things can be done more cost effectively. In that sense, they are invaluable in helping us construct a search strategy that will generate comprehensive and cost-effective results for our clients.’

“The key challenges for trade mark practitioners are knowing the client’s business, knowing their risk threshold and being able to find the right solutions efficiently and cost-effectively.” David Stone Partner at Simmons & Simmons in London

THE EXPERT’S VIEW David Stone’s tips for researching and registering a trade mark in the UK: • Read the cases. Get a feel for what the courts are doing. And make sure you stay up to date with recent decisions in trade mark law. • Make sure you are aware of the various tools available to help you do your job. • Try new things when they become available and see if they work for you and your clients. • Rely on new comprehensive reports that make a thorough trade mark search possible. • Talk to your peers. Find out what they are doing. Benchmark to make sure you are on the ball.

Clearing Trademarks UK  

‘Trade mark owners don’t want to be told they can’t use a mark. They want to be told they can but that there is a list of things that they h...

Clearing Trademarks UK  

‘Trade mark owners don’t want to be told they can’t use a mark. They want to be told they can but that there is a list of things that they h...