October 29, 2021
With Halloween only two days away, we are bringing you some of the scariest scenarios our patent and trade mark attorneys face! Here, we are ‘creeping’ it real and sharing our first-hand intellectual property (IP) horror stories.
A classic nightmare in the world of trade marks is investing time and money in a brand, only to discover you cannot use it. It is not uncommon for businesses to adopt a trade mark without first conducting appropriate due diligence to establish if said trade mark is free from third party encumbrances. Should they commence the use of the brand and invest resources establishing it, business owners run a significant risk of developing a brand that they don’t truly own. It is often the case that as your hard work starts paying off, aggrieved third parties take notice and begin issuing Cease & Desist Letters. For the most unfortunate, the only way out is to surrender the brand and start from scratch under a different name!
Some brand owners will opt to run their own searches on the Trade Marks Registers, however, to think this will all run smoothly is often ‘witchful’ thinking. Infringement of IP rights goes beyond identical names, products, or trade marks. Earlier owners may enforce a range of rights, from similar trade marks protecting identical/similar goods and services, to trade marks with reputation and even non-registered trade marks. Problems may therefore ‘creep’ up on business owners from multiple directions, and so the only way to identify potential obstacles and assess the risk, is to run a full clearance search.
Another mistake that could haunt you is omitting to carefully consider future plans outside the UK when adopting a new brand. There are many aspects to take into consideration, especially if there are plans to use the brand in several territories. In order to ensure brand consistency across different markets, the searches discussed above would have to cover all jurisdictions. Trade mark protection is territorial and whilst it may appear free to use in the UK, this may not be the case in other countries.
Yet another factor to consider when expanding internationally is the local language and culture. Brands may be refused protection if their meaning has derogatory connotations, and such situations may not be obvious without translation and feedback from local professionals. Entering a market under a brand with negative undertones can easily escalate into a horror story, not only from an IP perspective, but also when it comes to your business’ PR.
Trick or treat is never fun when playing with your brand – beware of trade mark squatters. There are not many things scarier than attempting to use or protect your mark in a new market, only to find that third parties have already registered it, hoping to seek financial gain. Emma Raducanu’s success and novelty attracted attention not only from all tennis fans, but also trade mark squatters, who filed to register her name as a trade mark.
The process of recovering a brand name from squatters can be very expensive and time-consuming, therefore, it is advisable to file for protection sooner rather than later, including in ‘terror-tories’ that may become of interest in the future.
Ghosts, goblins and zombies might be scary, but those pale into insignificance for attorneys who face a conversation with a potential patent applicant who proceeds to tell a chilling tale about how their new invention has already been made public on social media or in a published paper, prior to them filing an official application! Under UK and European law, publicly disclosing an invention (in a manner that enables the notional ‘skilled person’ to recreate it) before submitting the patent application, usually means the chances of obtaining protection are minimal. IP rights can only be granted for inventions that are novel, and therefore, any previous disclosures have a detrimental effect on the possibility of receiving IP protection.
Although the news that no patent protection can be obtained is disappointing, some relief can be found in the registered design system, which – unlike patents – protects the appearance of products, rather than the way they work. Despite the same ‘novelty’ requirement also applying to design applications, the UK and EU (and several other jurisdictions) offer a 12 month ‘grace period’. Any previous product disclosures that took place within 12 months of filing date are not considered when assessing novelty. Discouraged applicants seeking IP protection for an already disclosed product should explore the creative utilisation of the registered design system – an alternative but commercially useful protection that can still be obtained, even for products which are not purely focused on aesthetics.
So what do all these horror stories have in common (other than bad puns)? They could have been easily avoided! The golden rule in IP is: the sooner, the better – so don’t wait! If you are working on an invention or building a brand, make sure you carry out your due diligence and help your future self by contacting a ‘fangtastic’ attorney to help protect your business.
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