Kicking off on the right foot

By | March 24, 2011

Intellectual Property – that is trade marks, patents, copyright and design registration
This is the first in a series of articles that will be of interest to readers thinking of starting a business, already in business, those contemplating exporting and others eyeing the Internet. They will provide essential guidelines in relation to the many aspects of Intellectual Property – that is trade marks, patents, copyright and design registration. They will spell out the many costly pitfalls that await the unwary and highlight the huge opportunities for those who cleverly exploit the potential.

There are a number of issues which, anyone contemplating starting a business to supply products or services, should be aware of, because ignorance of them can have dreadful consequences.

There is a misconception that having a limited liability company name or business name registration allows use of that name and provides trade mark protection. Not so! The only way to obtain exclusive rights to, and protect, the name under which you wish to trade is by way of trade mark registration.

A trade mark provides exclusive statutory rights so that a rival cannot legally use an identical or confusingly similar trade mark to an earlier registration. Similarly, if you infringe, then all the investment in design, printing and promotion may be wasted.

The golden rule therefore must be, at the outset, do not attempt to market goods or services until the identity under which you intend to trade has been cleared for use. That is, that it does not conflict with an earlier trade mark registration in the target market.

Therefore it is essential that, before using a new identity, a search is made of the trade mark registers in the target markets (be that Ireland or further afield) to ensure that it does not infringe the rights of others. Expert advice, such as that of a Trade Mark Attorney, is advisable because what appears to be clear to the untrained eye may, in fact, conceal a sustainable objection from a rival. Once it has been established that the way is clear the mark should be applied for registration immediately and so secure the position.

Any existing businesses who have not as yet registered their portfolio of trade marks should do so now. As will be shown later these are valuable assets and, if exploited fully, can be of enormous value. It is also worthwhile examining how these can be extended through registration into other classes of goods or services and the new potential for additional branding. It also feasible to apply to register, not only names and symbols, but also, slogans, colours, shapes and even smells.

As a slight aside, but to prove a point, the Walt Disney Company holds no direct ownership in Tokyo Disneyland. However, it licensed the use of its characters for five per cent of the gate money and ten per cent of the sales of merchandise, food and beverages.

It is essential to apply to register your trade mark at least in the home market, Ireland.

Utilising the Community Trade Mark (CTM) it is now possible, with only one application, to apply to register a trade mark in all 15 countries of the European Union. Anyone who currently trades, or intends to trade, in the EU in the foreseeable future should seriously consider this option. This facility has an added benefit in that when one successfully secures a CTM registration, it is only necessary to use the mark in ONE of the 15 countries to maintain exclusive protection in all 15 member states. This opens up huge possibilities for the entrepreneur.

The costs involved in both the national and CTM options are very modest. In Ireland, about €500 is required on application, with the same amount in perhaps 12/18 months at registration. These figures increase to about €1,500 in the case of the CTM with a lapse of more than 18 months between application and registration. In both cases the period of cover is for an initial 10 years and is renewable.

One of the biggest selling coffees in the world started out as the brainchild of an American salesman. His spare time labours resulted in his developing a method for making instant coffee. Rather than put his own name on his creation, he called it after the first hotel to stock his product, Maxwell House. His family name was, by the way, Cheek! A brand that has become a run away success is Nike and small wonder, it is called after the Greek goddess of victory and who would argue with a woman? When the founder’s favourite song is the classic Al Jonson best seller “Sonny Boy” and Sonus is the Latin for sound who would object to Akio Morita calling his company Sony? Two famous trade marks – protected world-wide by registration!

Liam Birkett


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