- Case Law Search
4 Reasons 4 Trademarks
Trademarks are one of several intellectual property rights that help protect and enhance your brands. They help consumers identify products and services with the entity from which they originate. Organisations rely on trademarks to distinguish themselves from their competitors, to create an association between their trademarks and product quality, and to build their reputation and consumer loyalty. So, there are good reasons to consider how you develop a trademark protection strategy and safeguard your brand.
4iP Council has developed this interactive guide in cooperation with eminent academics and experts to share best practice and deepen understanding of the value of trademark registration. In particular, we would like to thank the following organisations for their valuable insights, engagement and support.
This European IP Helpdesk guide explains the routes to trademark registration.
This EUIPO guide will help you determine what can be registered as a trademark and how. The EUIPO or European Union Intellectual Property Office is the EU body handling the registration of European Union Trade Marks which provide protection across the EU.
Check out the EUIPO Fastrack to registering a trademark in Europe.
The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide.
Stateside Skates Ltd (roller skates) is a business which has grown from strength to strength. They keep their products desirable by protecting their intellectual property. Not only do they have 18 UK registered trademarks, but they have also protected each of these with European trademark registrations. Operations Manager, Alistair Crichton explains, "The business owns ten different brands, each with their own unique design and selling point. Protecting our IP ensures we can produce, market and sell our brands safe in the knowledge that we are the owners. We can take action if anyone tries to copy or pass off their products as ours. Having our brands as registered trademarks assures customers they’re getting the original product." gov.uk/government/case-studies/intellectual-property-stateside-skates-ltd.
For an economic analysis of the benefits of IP Protection, see the EUIPO-EPO IP Contribution study.
"IP has been the backbone of my business for over 35 years." Mandy Haberman, Founder and Creative Director of Haberman Products Ltd. Mandy Haberman and the Anywayup cup have achieved great success over the last 30 years, with over 42 million products using her patented technology sold globally each year. Read how she strategically uses trademarks, patents and designs in this case study: wipo.int/ipadvantage/en/details.jsp?id=903.
Trademark registration provides a presumption of ownership and validity of the trademark as well as the exclusive right to use and protect it.
We would urge SMEs to invest in IP early on, even if it seems like money that could be better invested elsewhere. If you are a company which makes unique products, investment in IP is worth the investment in time and money. Otherwise you can leave yourself open to your products being copied or passed off by rival companies." Alistair Crichton, Operations Manager at internationally successful roller skates manufacturer Stateside Skates Ltd. See case study.
"A consequence of Finnish lighting company Secto Design's success was copying. The case study from the European IP Helpdesk explains how the company dealt with this issue. "Copyright and trademark protection strategies have also been integrated into the company's IP management system in order to strengthen the company's IP portfolio and its position against its competitors and potential infringers."
Mandy Haberman of award winning Haberman Products Ltd. (feeding cups) held out a trademark registration strategy which goes along with her market and product line expansion; starting from national trademarks to regional and international ones, from one or two Nice classes to the double and from word marks to a 3D shape mark for her bottles. Although building consumer trust in her brand took time, Haberman took advantage of IPRs to ensure all significant markets were covered as she expanded her business. Learn how she did it.
Check out INTA's infographic for insights on GEN Z's view of counterfeit brands.
Learn about various IP-related topics, including counterfeiting and other trademark infringements, in these short videos from INTA.
Trademark filing is public and registers are sometimes checked by those who in bad faith register domain names for newly filed trademarks.
For example, INTA’s Pro Bono Trademark Clearinghouse matches eligible clients with trademark issues with INTA member attorneys who provide legal services free of charge. Launched as a pilot program in the United States in 2017, INTA will be expanding the program into several countries, including one in Europe, in 2020.
See this European IP Helpdesk guide for more detail on Trademark searches to know the chances of registrability of a new trademark and avoid unnecessary registration costs.
The enforcement of a trademark is the responsibility of its proprietor. Some options on how to look after your rights here.
Before submitting an application, check the TMview, gateway to 5 million trademarks in one single tool.
Remember that there is a difference between a trademark and a trade name. Sometimes people think that their trade or company name is a trademark because they register the trade or company name with the agency responsible for incorporating companies. Registering a trademark is a separate thing all together.
GEOX (footware) has used different types of IP to differentiate and protect its brand and innovation. GEOX, founder, Mario Moretti Polegato chose the “GEOX” name to identify his products and registered the trademark internationally. The GEOX brand name is a combination of the Greek word "geo" (the earth) and "x", symbolising technology. GEOX products unify patented innovation with comfort and a style in line with the latest fashion trends. Learn more.
Honeywell, Nestlé, Goodyear and Beanstalk explain how brand extension licensing can affect IP strategy and turn infringers into licensees - read the article from Managing Intellectual Property.
"Licensing doesn’t cost the licensor anything – in fact it generates revenues by virtue of the guarantees and the royalties that the products generate", said Oliver Herzfeld general counsel of Beanstalk (global brand extension licensing agency). Source: Managing Intellectual Property.
Christa Cole, Head of Brand Development, Enforcement, and Licensing at Nestle USA, Inc. says that her company is considering licensing to promote its brands in sectors beyond food, such as apparel and cookware in order to generate more consumer recognition than what they would typically get from the food space. Source Managing Intellectual Property.
This factsheet from UKIPO provides useful sources and planning tools for developing your IP strategy.
"Having a trademark strategy is common, both among big fashion companies and independent designers. The trademark strategy must be developed before designing a collection." Learn how a fashion designer considers trademarks when creating her clothing designs in this interview from the European IP Helpdesk.
The innovative patented design of award winning Haberman Products Ltd. (feeding cups) provided a solution to a problem (spillage). Companies were prepared to pay for a license. When Haberman joined forces with V&A Marketing Ltd., the cup, bolstered by a trusted brand, started to sell in unprecedented numbers, at a rate of about 60,000 per week. Read the case study.
'Licences by micro firms represent a high share of their average turnover (29%) and are thus an important revenue source for such firms' is one of the conclusions of a recent EUIPO study that examines the revenues that SMEs can derive from their EU Trademarks by licensing them to other companies. Source: EUIPO.
Showing your trademark is registered with the symbol or the trademark number may prevent potential infringements and help you in the event of any legal action. Read more here.