Using trademarks, design rights and copyright to protect innovation In this chapter, Partner Gregor Kleinknecht, discusses the role of branding and design, arguing that they are key to turning innovation into marketable and commercially successful products. As the importance of brand rights have increased in the global economy, Gregor notes that brand protection challenges and…
Brand names and logos help to distinguish a company’s products and services from those of its competitors and serve to guarantee their origin and quality.
They are the recognisable face of a product or service and encapsulate the goodwill associated with it. Wrongful use of those signs by third parties may damage the reputation and goodwill attached to the associated products and services and their provider. Establishing, protecting and enforcing trade marks is therefore essential to maximise the commercial value of trade names and brands and to preserve their identity and exclusivity.
In general terms, the holder of a trade mark can prevent others from using a mark that is identical with or confusingly similar to his own trade mark for the same or similar goods or services if this would be likely to cause confusion in the minds of the public. Furthermore, certain famous or well-known trade marks also enjoy protection against uses which take unfair advantage of the reputation of such a mark.
Trade mark law can appear confusing and complex, with the co-existence of national, European Community and international trade mark registrations, which are each subject to differing registration requirements, procedures and benefits. Trade marks are registered in specified classes covering defined goods and services. The classification of a trade mark needs to be carefully reviewed in each individual case to ensure that adequate trade mark protection is obtained. But even unregistered trade names can often be protected through actions for passing-off if they have generated goodwill which comes under threat.
Many trade marks are now also used as internet domain names and the co-existence of the domain name and trade mark systems can give rise to legal friction and practical problems, for example, if a person uses a domain name which consists of or includes the trade mark of another person. The domain name disputes that may result are generally resolved through online dispute resolution procedures based on the dispute resolution policy developed by ICANN (the Internet Corporation for Assigned Names and Numbers).
In the area of trade marks, trade names and domain names, we assist clients with:
- Trade mark clearances for registration and use
- Domain name clearances and dispute resolution
- Sponsorship and product endorsement
- Trade mark oppositions and cancellations
- Brand development and protection, anti-counterfeiting
- Portfolio management advice, strategies and implementation
- Trade mark and passing-off litigation
- Licensing agreements and merchandising
- Injunctions, search and seizure orders and other protective measures
In addition to the above, we offer a world-wide trade mark filing, trade mark watch and domain name registration service in co-operation with a tried and tested network of leading trade mark attorneys and domain name registrars. They are recognised specialists in their field and help us to ensure that our clients receive best advice, service and value in each and every case. We undertake investigations of suspected IP infringements nationally and internationally in co-operation with experienced specialist investigators and advise you on your options for taking action if problems are identified. Speak to us about the real advantages of carrying out such investigations through us rather than by instructing investigators direct.
Copyright protects a wide range of creative works, from technical design drawings, over literary and artistic output and music, to software and new media. Copyright also creates moral rights which allow the author or creator of a work to claim authorship and to prevent any form of mutilation or deformation of his creative work by others which may harm his reputation.
In addition, both registered and unregistered design rights are protected by law. In the area of copyright and design rights, we have longstanding experience and expertise with:
- Copyright, data base and design right litigation
- Anti-counterfeiting measures
- Rights management, and commercialisation, including licensing agreements
We are also able to help with the registration of design rights