Innocent Until Proven Guilty?…

February 26, 2015

One of the biggest problems we see as IP Specialists is disputes over ownership. These rarely go all the way to Court, but in the case of Innocent Drinks and the “dude” logo, the stakes were high and the matter did!

Intellectual property is often termed a monopoly right by lawyers. In practice this means winner takes all! You either own it and control it or you don’t. In between ownership and use, there is a raft of commercial possibilities – and elephant traps. One of which Innocent and their brand creators Deepend fell into.

Back in 1999, a design agency called Deepend created the well known “dude” logo for the then start up Innocent Drinks company – now known as Fresh Trading Limited.

Deepend and Innocent did a deal – without lawyers. They agreed in unsigned heads of terms that Deepend would create the branding and design for Innocent, and Innocent would allot them shares in the start up company. Deepend created the brilliant bottle logo design we’re all so familiar with…

Innocent never gave them shares. No contract was signed.

Let’s fast forward here 15 years, and Innocent drinks have of course become outstandingly successful – no doubt in part measure because of their branding. Deepend would have liked some kind of shares or payment but none has been forth-coming. And thanks to a recent High Court decision, Innocent now own the copyright to the logo, but Deepend haven’t and won’t be paid. (Subject to an appeal of course!).

A Lesson To Be Learnt?

The lesson is this – mere promises ARE NOT enforceable! Harsh but true. The directors or employees you are now in business with may not always see things as you do. People fall out and move on. If you are a supplier, make sure you will get paid by using a properly drafted contract. If you are a director or shareholder make sure the company has control over its intangible assets. There are few certainties in life but one that we see regularly is that if it is of value then people will fall out about it and getting clear contracts in place is often money invested against future disputes.

If you have any concerns about disputes over ownership, give one of our team a call for a no obligation chat on 0113 4032102 or email us!

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‘e’ by gum I’m confused!… Brand owners beware!

February 26, 2015

Of all the phone calls we receive, the unhappy ones are usually from brand owners who’ve been copied…

Sometimes the offender is a “looky likey” product but often an entire brand name or logo has been copied, if not slavishly, then in a way that is very confusing for the consumer. So it was of interest this week when I read about Enterprise Holdings Inc slogging it out against Europcar Group UK Limited over the use of ‘e’ as part of their car hire brand, and the obvious confusion that followed.

I won’t go into the legal details of this case, suffice to observe that both sides appeared to run every allegation and defence with great vigour. It is worth mentioning that his Honour Justice Arnold noted that both parties treated the dispute “as if it were a state trial.”

The vehicle hire market in the UK is big. Indeed the UK is the second largest hire market after Germany. The market is dominated by Enterprise, Europcar, Avis, Hertz and Sixt. Most bookings are made in advance via websites and intermediaries. The rest are done on the spot or by telephone. A highly relevant factor in this case in relation to customer confusion, was the transnational character of customers. In simple terms, many customers spoke limited or no English. Bear with me on this point; it is important, especially at airport car hire desks!

Jack Taylor the founder of Enterprise in the USA started using an ‘e’ logo in 1967. This has since morphed into the stylised ‘e’ seen below.

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From 2006, green was also used with black and white as part of their livery.
Enterprise started in the UK in 1994, and quickly spread through Europe. It now has extensive presence throughout and franchise arrangements in 14 EU states. The ‘e’ logo has been extensively used by them on signage and also on airport buses, car rear bumpers and the homepage of their website. Naturally the ‘e’ is a registered trade mark. As are a number of variations of it.

Europcar started in Paris in 1949 and used a simple ‘e’ type logo from 1965. It then moved to Europcar as a word mark and in 1988 developed a green and white colour scheme, which it now uses extensively. Europcar has extensive Worldwide coverage, but has little market share in the USA. The two now compete for #1 slot of market share. In 2012, after a consumer studies and a brand re-vamp, Europcar became:

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The digital age had arrived and was encapsulated by Europcar’s moving ‘e’ logo which was then used on the website, as signage on vehicles and as a phone application etc.

The problem that arose was that from its introduction in 2012, passengers queued in droves for the wrong car hire buses at airports! Europcar customers queued at the Enterprise car desks for car hire and vice versa. The nub of the problem here is that infact consumers have imperfect recollection of any trade mark!

In order for a brand to be truly distinctive, it needs to set one business apart from another. Imitating someone else’s mark, either knowingly or unknowingly does NOT make commercial sense for either party, and can lead to significant reputational damage. Whilst we understand that both companies had a history of using a prominent ‘e’ as part of their mark it doesn’t take a genius to work out that the public were likely to be confused by Europcar’s new identity, especially if they didn’t speak the local language.

This matter also illustrates the importance of getting specialist legal advice when re-branding and getting proper trade mark clearance searches done BEFORE launching a new brand.

Also beware of the digital space – this kind of short hand brand look needs careful thought!

We are totally baffled by Europcar’s stance on this.  Apart from any consideration of trade mark infringement, making a brand distinctive is of paramount importance.  This is often done with distinctive logos which then transcend language barriers.

Enterprise won the High Court battle – at great cost – but common sense should have prevailed well before then!

If this is something that concerns you, or you need any intellectual property legal assistance, give one of our team a call for a no obligation chat on 0113 4032102 or email us!


When Is A Cornish Pasty Not A Cornish Pasty?

October 28, 2014

Answer: As of July this year when the pasty isn’t made in Cornwall!

We’re all too well aware of the legal protection for growers in the Champagne region or that Roquefort cheese can only come from a specific part of France, but English producers are now cottoning on not just to the advantage of having designations of origin, but also a registered trade mark to protect their brand. Many people confuse the two, but in fact the distinction is quite clear. A designation of origin means that only goods made in certain geographic regions can be labelled as such. So for example, Melton Mowbray pork pies can only come from Melton Mowbray, whereas a really decent pork pie can come from any number of locations, and may be a number of different brands.

A trade mark is quite different. Companies who rely on selling really excellent products such as Fyffe’s bananas or Jaffa oranges use trade marks to protect their reputation as importers of high quality goods. The produce often comes from a variety of locations but all of it will be reliably ripe and of higher value because of the brand values associated with their name. Growers are now taking this one step further with trade names such as Pink Lady ® and Tenderstem ® taking brand values and standards for these products one step further.

Pink Lady® can only be called as such when the grower has met certain licensing conditions specified by the brand owner.

Pink Lady ® is owned by Australian company Apple and Pear Australia Limited, and the apple must have at least 13% sugar content and exposed to 200 days of sunshine to qualify to use the trade mark. This means that although an English grower may grow a Pink Cripps apple variety (the Pink Lady by another name); it can only be called a Pink Lady® if it is part of the licensed scheme and is grown in places like South Africa, Australia or the south of France. It is strange isn’t it that whilst the UK is considered a great place to grow apples, in fact we’ve lost out with that particular brand which now commands around 10% of the apple market.

Tenderstem ® broccoli however denotes a variety of broccoli and can be grown in the UK. The brand is owned by Marks and Spencer’s but the variety is widely grown and is sold by other supermarkets commanding a premium price. It is available from UK sources between June and November and from other countries year round. Growing a variety known as Clemengold ® oranges is again only done as part of a licensed scheme ensuring consistency of produce and high standards of quality. Licensees of Clemengold ® oranges must produce fruit of a minimum sweetness but as for the Pink Lady® the rewards of selling the brand mean those growers can demand premium prices and enhanced profits in return.

There’s a lesson here from the food suppliers for many businesses. The question to ask yourself is this: what is my brand and what values do my products need to have to elevate their desirability? You then need to ask yourself how you can set up a licensing scheme that is of interest and value to consumers and can be used by your suppliers to command a premium price.

Whilst it may be true that as Shakespeare put it “a rose by any other name would smell as sweet” it appears that the public don’t feel that way any longer and are quite happy to pay more for certain varieties of rose that can be guaranteed to smell sweet every time.


What’s in a name?

May 16, 2014

I don’t know about you but I’ve really enjoyed Digby Jones recently on TV in the “New Trouble-shooter.” One of the key issues he highlighted is the vital importance of trade marks in business. It is incredible how few of the businesses he has helped even have the most popular of their brands registered. All the more astonishing when you realise how long some of them have been in business. So why are trade marks so important, how do they add value to your business and how do you obtain one?

Your brand name is of vital importance – especially in highly visible consumer markets such as food or clothing businesses. The thing that keeps people coming back for more is your brand name and the quality of product that you deliver. And who doesn’t want instant customer recognition and repeat business! If you sell your business your trade name and brands will be of fundamental value, and if you don’t have a registered trade mark, then you could find that your company is worth significantly less than it should be. A registered mark plays a key role in spreading your brand recognition – especially in overseas markets. However, this is the one area that I see most businesses get wrong. Many businesses start to sell overseas without taking proper professional advice from a trade mark expert and soon find that someone else registers their brand names and starts to imitate their products. This frequently kills the overseas opportunities stone dead. Take for example one company I acted for who exported their food supplements over to the Far East. They engaged a local agent who covered Thailand, Vietnam and Korea. Before they knew it their brand name had been registered locally by their agent, who then set about selling cheaper imitation supplements under my client’s brand name to my client’s biggest market!

So what do you need to know and how do the big players get it right? Once you’ve decided on a name the obvious search you need to do is via Google to see what else crops up with that name. A number of years ago I had a client who simply didn’t do this and found that after she starting advertising her new clothes brand that Sainsbury’s were using a virtually identical mark on items of clothing! Whilst the mark wasn’t registered by Sainsbury’s they did have a number of years use of the brand on clothing and blocked her sales in the UK under the mark she’d chosen. It was an expensive mistake. Her products had been made overseas and as the letter before action landed on her desk so did the shipping bill for £100,000 of branded clothing! Not only did she have to re-do her advertising and labelling, she actually had to have the clothing re-stitched with a new brand on the label. To add insult to injury this lady had used a cheap and cheerful on line trade mark registration service that not only had told her that a clearance search wasn’t required but had taken her money up front for a Community Trade Mark registration that was doomed to fail. OUCH.

Next I would suggest a domain name search and a proper clearance search on your chosen brand name. It is often worthwhile buying a domain name of your chosen brand simply to protect it and use it as a website that leads straight to your product or range of products. If you find it is already registered to another totally unconnected business which isn’t in your field then you may have to get creative! So for us we have www.virtuosolegal.com but if I wanted to use that on say gourmet sauces I may want to look at www.virtuosofoods.com or www.virtuososauces.com. I hope you get my drift.

Lots of businesses do their own trade mark clearance searches or rely on the IPO search service to help. However, a proper professional search from a trade mark registration expert is money well invested in your future. A professional search will guide you through phonetic equivalent trade marks and help you avoid registering names that you can’t use in certain markets such as Europe. Let’s face it some words just don’t make great trade marks elsewhere!

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Pschitt soda drinks – not a brand name that would appeal in the UK

A proper clearance search will help you avoid registering conflicting marks or those which could be opposed by other brand owners. Practitioners in the field will often help navigate whether or not other marks are likely to oppose your application. Whilst the staff at the IPO are invariably very helpful, they are not practitioners and their practical knowledge of what may be a problem is often limited to text book knowledge alone rather than commercial understanding of the issues.

When it comes to registration it pays to be aware of the fact that there are 45 different classes for trade marks and it pays to register up front in classes that you aren’t using straight away but may use in the next year or two after the launch of your product. By way of example if you are a food producer and you are going to produce recipes and recipe books and drinks flavoured with your product then you may want to register in class 16 for printed matter and classes 32 and 33 for non alcoholic and alcoholic drinks. Again it pays to get professional advice on this.

Many of our clients register their brands in Europe using the Community Trade Mark application system. The reason for this is clear. Europe is our main area for exports and the internet means that trade goes national and then global quite quickly. There are a few businesses that can only trade in the UK – such as certain financial services. However, some UK products such as food and clothing are often quickly in demand overseas. In addition the professional fees for filing in the UK and Europe are similar as the professional time to draft the applications is similar. The official fees for filing in Europe start at around £815 (depends on the exchange rate), whereas the UK fees start at £200 and then £50 for each extra class. However, in terms of return on investment, a Community Trade Mark or CTM will cover the 27 countries of the EU. Filing your own trade mark and getting it wrong is particularly costly, especially for a CTM. Not only are the only online registration forms quite a challenge but it you get it wrong, you will lose the entire filing fee. Remember this. Your brand is going to be with you a long time. It is tempting to cut corners and costs but the reality is that this is a key investment in your business and getting it right first time by seeking professional advice is almost certainly money well spent in your business’ future.

Elizabeth M Ward

Principal at Virtuoso Legal.

www.virtuosolegal.com

Tel 0844 800 8871 email liz@virtuosolegal.com