Trademarks

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Question - do I need to register my trademark?

Answer - some countries (typically associated with US and UK common law) are 'first user' countries, so whoever first uses the trademark for trade owns it. In other countries (typically civil law countries), the first person to register the trademark owns it

Key points

Trademark law is complex, and can vary from country to country. This commentary is intended to provide a general overview and not legal advice specific to your situation. Please consult a lawyer for legal advice before proceeding - your trademark may be worth US$ billions.

Intellectual property rights

Trademarks (TMs) belong to a class of rights called intellectual property rights that also includes:

• Patents, to protect product inventions and, in the USA, business models
• Design rights (UK only currently), to protect the appearance of the product itself
• Copyrights, to protect artistic creations

Trademarks are distinctive elements that denote the source of a product or service within a specified class of products and services, and are the only type of intellectual property rights that can be owned indefinitely if managed properly. They can also be licensed to third parties (a highly profitable exercise for many designer brands) or assigned.

Differences in national and international legislation

The laws on trademarks currently differ from country to country, although there is a gradual process of regional harmonisation, potentially leading to global harmonisation. For instance, in Europe, you can now obtain one trademark that covers all the countries of the European Union without having to register your trademark separately in each jurisdiction.

However, there are still substantial differences between different parts of the world. In the USA, there a trade marks (TMs) for products, and service marks (SMs) for business-to-business services. Additionally, trademarks can be obtained for almost anything that distinctively identifies the source of a product or service including packaging design (Coca-Cola ® ), sounds (Harley Davidson ® engines) and colors that are not intrinsic to the product itself (Post-it Notes ®). In Europe, service marks are not recognised, and there are still issues around anything that does not contain a graphical element (such as a sound).

Another point to watch is the distinction between most countries that are countries of "first registration" and the few that are countries of "first use":

• In countries of "first registration", whoever registers the trademark within that class owns the right to use it for that class of products or services, even if someone else can prove that they were using that trademark for that class of products or services first ("prior use").
• In countries of "first use", whoever can prove they were using a distinctive element to identify the source of a product or service first within a specified class can claim the trademark, even if someone else has registered it subsequently

Losing your trademarks

Trademarks are lost when they are neglected and become generic - Elevator is one famous example. The best way to avoid this happening is to:

1. Register your trade mark in all countries where you are ever likely to do business in whichever classes of products and services you are ever likely to operate
2. Take defensive action against anyone infringing your trademark by immediately involving your lawyers and proceeding resolutely to legal action if the infringement persists (the Coca-Cola Corporation has a team of investigators across the world actively seeking out infringers)
3. 3. Ensure that you always use the right notation (e.g. within a text - the trademark used as an adjective, followed by ®/TM/SM, followed by a noun - Microsoft ® products, Black & Decker ® drills, Mud Valley TM consultancy)

Infringing others' trademarks

Equally, of course, you must ensure that you do not infringe others' trademarks. Things to watch include the notations of your products/services (names/sounds/colors), any graphical elements (icons/designs) and slogans.

The cost of maintaining trademark registrations

Managing intellectual property is expensive. Researching and registering a trademark globally can cost up to US$500,000. On top of this you will have to maintain your registrations, seek out infringements and confront infringers. However, many global brands are worth in excess of US$1 billion, so it is usually worth protecting the trademark to which the brand is attached. The golden rule is to maintain only as many trademarks as you can afford to manage thoroughly. This is also good branding practice.

An additional complication is transliteration. There are many different scripts in the world - Cyrillic, Farsi, Chinese and Japanese ideograms. It is not enough to register your global brand in Roman script where another script is more commonly used. If you do not create and register appropriate local formats, the locals will do it for you and may end up, in the worst case, owning the registered trademark.

Trademarks need to be registered in many notations - different scripts, sounds, colors, icons, designs and slogans.

Domain name registrations

Your brands also need to be registered as domain names on the Internet. The rule for domain names is simple - KISMS (keep it simple and memorable, stupid!)

If you have an established brand and you find someone "cyber squatting" by owning the domain name equivalent to your brand, in some jurisdictions (notably the UK and the US) you may be able to get it back by law - as Madonna did for instance. If the incumbent has a legitimate right to the domain name, you can either register around it or try to buy it (which may prove very expensive).

Some countries used to (and may still) impose severe restrictions on the registration of domain names with its country-identified suffix. One European country, for example, limitd registration to three names per company registered in that country. This poses a major problem for mega-corporations owning multiple brands. On the other end of the scale, West Somalia (.ws) markets its country-identified suffix to anyone in the world willing to buy it, even adding the substitute concept of "World Services". The US suffix (.com) is also available to anyone who is prepared to pay for an available name.

Most major corporations register as a minimum their own country-identified suffix, plus .com, .net, and .org if they can. However, ICANN continues to generate whole sets of additional domain name suffixes, so the old rule of trying to buy every conceivable variation of your brand name on each of the available higher level domain names has become virtually impossible.

It is best not to register a name with a sexual implication, as this may be screened out by your ISP (Internet Service Provider) as offering sexually explicit content.

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