November Council Meeting Hears About The Importance of Protecting Intellectual Property.

Dr Christina Gates of Tomkins and Co, a company that specialises in European Intellectual Property, gave a presentation on the subject of intellectual property at the recent Food and Drink Council meeting. She opened her presentation by giving a definition of a trade mark and she gave examples of good, protectable trade marks. Trade Marks are the most significant part of IP strategy for food and drink companies and a good trade mark is very important. Christina proceeded to give a number of tips on what is and what is not protectable, some good trademarks and a general overview of the IP landscape.

A protectable trade mark must have a ‘distinctive character’ either inherently, or as a result of the use made of it. CG said the shape of the Toblerone chocolate bar is a trade mark, as is the shape of the Perrier bottle of water and the Kit Kat. You can protect a shape, a label or a combination of features.  She advised against using a ‘word’, ‘colour’ or ‘shape’ that someone else is entitled to use.

Good trademarks describe the product, such as ‘Tayto’ and ‘Weetabix’ or can be dictionary words that are used out of context such as ‘Apple’. ‘Kodak’ was also mentioned as a good trademark. Surnames can also be good trademarks such as ‘Guinness’, ‘Jameson’, ‘Bewleys’ and ‘Kelloggs’. However using a surname is not a good option for a new brand as, to protect it, you need a long period of using it. Also it’s not advisable to use geographies to protect a product unless used completely out of context e.g. ‘Arctic’ as a brand name for bananas would be protectable but ‘Barbados’ or ‘Caribbean’ would not.

CG said it’s also important that you think through where you’d like to be as a company in 5 years time when you’re thinking of trade mark protection. If you plan to export to different countries, make sure there are no negative connotations for the brand in a different language. CG stated that you can protect your IP in stages as you grow and become more successful. This could be done first at home and then overseas or widening the categories that are trademarked.

Companies should do a clearance search in advance of entering new markets to make sure there are no conflicting trademarks. They can do internet searches and trade journal searches but, she said, don’t expect to do a clearance search today and launch next Monday as there are long lead times. With regard to getting trademark protection, CG said the 26 counties first. Trademarks are done on a country by country basis except the Community Trademark register which covers all countries within the EU. The typical cost is €1,500 to apply for the trademark and €1,500 to have it granted.

The Madrid Protocol applies to the US, Asia Pacific and other regions and covers over 60 countries. It’s cost effective and each application is treated as individual national one. There are 45 classes of goods and services and CG told the attendees to think about what classes you’re interested in. There’s a flat fee to begin with and there is an additional fee for each class e.g. a water manufacturer might protect the shape of a bottle so that no other water manufacturers can use the design but they may then decide to protect it so that no alcoholic drinks manufacturers can use it. Another sector would be non consumable liquids.

CG stated that maintenance is important and that you have to keep using the mark to continue protecting it. It must be renewed every ten years. There are some marks that pre-date 1875 and they’re still being used. Also you cannot allow the mark to become generic and companies have to always be seen to be doing something about this e.g. Hoover, Aspirin, Jeep, Google.

If you don’t protect your trademark, you can also rely on ‘passing off’. This is where you have a reputation in the mark. However, you have to prove ‘reputation’ and that can be very difficult. You have to be as big as Google or in a very niche sector. An unregistered trademark is denotes by the symbol ‘TM’ within a circle.

A registered trademark is denoted by the symbol ‘R’ within a circle. Regarding reasons for TM protection, CG stated that you have an infinite right the use the trademark (subject to renewal, use, licence). It’s an asset that can be sold. Where the mark is registered, you have infringement rights. This means that the burden of proof is on the infringer.

When choosing a trademark, be mindful of export markets and don’t just piggy back on the market leader. Expand the brand and broaden the range of goods e.g. a bar of chocolate can be a biscuit or cooking ingredients. Consider the word mark, the label and general layout as this given the marketing department more scope to make modifications to keep branding up to date. A discussion took place regarding the County Court for Patents in the UK. This is a quick process and no solicitors or barristers are involved.

To view Christina's presentation, please click here.