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Parody trademarking

I actually wouldn't mind getting one of these tees.

Major brands have always been subjected to parodies. In US, the Courts recognize parody as a defence against a trademark infringement action, although this area of law is not covered in Singapore.

Here are some amusing parodies and their not too amusing consequences:

North Face vs South Butt (2007 - 2011)

In a nutshell: The South Butt was started in 2007 by Jimmy Winkelman as a parody brand that sells clothing. It was issued a cease and desist letter by North Face and in 2010, both parties reached a settlement in which the terms are undisclosed. However, instead of abandoning the brand, Winkelman proceeded to launch The Butt Face. This time, a judge ordered the Winkelmanns to abandon their application for "The Butt Face" trademark, shut down their web store and Facebook page, surrender all merchandise and pay $65,000.

Read more here

Saks Fifth Avenue vs Snaks Fifth Avenchews (2014)

Oh look! Puppy!

In a nutshell: Snaks Fifth Avenchew was served with a cease and desist letter from Saks Fifth Avenue for the usage of her company name. For most small businesses, it would have been easier (and spared them the litigation expenses) if they were to just change their name. But what if you have spent a lot of time, effort and money on your branding? In this case, Snaks business owner, Carrie Sarabella, is not ready to just give up on her brand and has hired a copyright lawyer. It has been argued that

the name was acceptable under the so-called fair-use law, which “recognizes that parody marks cause no harm to the established mark

Such determination proved to be worthwhile for Carrie as they've consequently received a letter from Saks, saying that they would no longer pursue the matter. As an added bonus for Carrie, she's received more publicity and her sales figures has never been higher.

Read more here

Here are more articles on parody trademarking that has gone wrong (or right, it depends)
Polo/Ralph Lauren overturn polo player on a bicycle trademark decision
Dear Google: Parody Is Not Trademark Infringement

Should you have any enquiries or other amusing trademark parodies, feel free to drop us an email or tag us in your replies!

Intellectual Property Rights 101

Most people get confused over all the different categories of Intellectual Property Rights (IPR) and give up trying to understand it, much less try to apply for it. Then there are also those who lump IPR as one whole category and figured that it would be too costly and time consuming to protect this Intellectual Property thing.

But don't worry, we are here to save the day.

After much information consolidation, here's a simple infograph that explains the different types of IPR.

Not wise to trademark like these big guys

Trademarking your brand, be it logo, colors, or even scent is important, as your brand distinguishes your products from other traders. But how do we know that it is not taken too far? In this case, Tesco Stores Limited attempted a very simple mark, an example of when it might be taking trademarking a bit too far.

http://www.marketingmagazine.co.uk/article/1318214/tesco-drops-hopeless-application-trademark-blue-dashes-its-logo

So basically, they've registration for their brand name (EU000388223):

They've also trademarked their logo (EU003016458):

In 2013, they filed an application for the blue dashes (UK00003000786) which was rejected by the UK examiner:

As eloquently explained by our head honcho director, Edward;

This is yet another attempt by big corporations with deep pockets to try their luck on obtaining registration for signs which are generic and have very wide scope of rights.  It is trite law that a sign has to be distinctive in order to be registrable.  I liken the application for the ”blue dashes” to filing an application for a hashtag symbol or an underline, a generic sign which is a common expression of everyday usage and therefore inherently incapable of distinguishing the goods of one trader from another.  It is not difficult to see why the UK examiners are very reluctant to allow any single trader to monopolise use of such signs in commerce.

To sum up, don't try to trademark something that is too general, like dashes or exclamation marks.

Of oil and the colour green

BP loses battle to trademark the colour green in Australia

So what's exactly going on? Here's our take on the current situation.

A colour, by itself or in combination with other colour(s), may qualify as a trademark. However, registering colours per se as a trademark is more an exception rather than the rule. 

In many cases, achieving registration for a colour mark would require the applicant to show that the colour(s) in question has acquired distinctiveness through extensive use in relation to the claimed goods/services. For example, Singapore Reg. No. T9906795F for the famous three horizontal stripes colour mark in respect of retail services filed by 7-Eleven, INC in 1999 was granted registration after the registrar was satisfied that the lodged evidence of use showed that consumers in Singapore have come to identify the colour combination as identifying that the services originate from the 7-Eleven, INC and no other.

The difficulty in registering colours as trademark is one of public policy; the balance of granting monopoly over the use of a particular colour to a single trader without unduly restricting availability of colours for other traders who offer similar products or services.

In BP’s attempt to registering the colour mark, the authority was not persuaded that the lodged evidence was sufficient to show that it has acquired distinctiveness through substantial use.


Edward Jui

Asian Domain Summit 2014

LJ Vernus will be attending the upcoming Asian Domain Summit (Singapore) on the 14th August this year. With 4 conferences taking place in Singapore, Xiaman, Hong Kong and Taiwan, LJ Vernus is proud to be part of this summit to learn more about the burgeoning domain registry industry and explore business opportunities of brand protection.

If you are participating in this event, we would love to have a chat with you. Contact us now to schedule a meeting.

Click image to register.

IP Week @ SG

LJ Vernus will be attending the annual IP Week @ SG which is being organized by the Intellectual Property Office of Singapore (IPOS). Already in its third year running, this year's event promises a vibrant networking platform consisting of in-depth conferences, open workshops and exhibition with the industry leaders, top names in IP and C-level executives from across the world.

LJ Vernus looks forward to catching up with our current partners and making more meaningful connections with potential partners at this upcoming event.

Click on the image for more information on IP Week @ SG.

Feel free to reach us at info@ljvernus.com for more information or book an appointment with us if you're participating.

BOOK AN APPOINTMENT

LJ Vernus will be attending the SMExpo 2014

LJ Vernus will be exhibiting at the SMExpo this year. Come by our booth to learn more about the trademark process and how it affects you and your business.

The event is organized by the Singapore Chinese Chamber of Commerce & Industry and it runs in conjunction with the Annual SMEs Conference and the Infocomm Commerce Conference. Registration for the conference is free. You may click on the link below to register yourself via the online portal.

We hope to see you at our booth!

FREE REGISTRATION

Updates on the Chinese Trademark Law

photo by VAYardley CC by

The third amendments to the Chinese Trademark Law recently came into force on 1 May 2014. The key amendments are set out below:

• Time limits are set for CTMO and TRAB to examine cases.  For example, trademark applications should be examined within 9 months and opposition cases within 12 months.  This is a vast improvement from the previous practice where trademark cases could take years to advance.

• E-Filing and Multi-Class Filings are now available in China.
  

• In line with China’s efforts to curb trademark infringement activities, more severe punishment against infringement are introduced.  For example, maximum statutory damages has been increased to RMB3,000,000.  Punitive damages are available where the infringement activity is “serious”.

• China now accepts non-conventional marks, namely, sound and colour combination marks, as registrable trademark.  Sound marks include ring-tones, animal sounds, etc.

• Limitation of rights to commence opposition action; only those who “own prior rights” or who is an “interested party” may initiate proceedings.  With this provision, the previous practice of opposing a mark based on unrelated party’s registered mark will no longer be permitted, unless the opponent can show that it is an interested person.

• Imposing burden on trademark rights holders to provide evidence of three years’ prior use when seeking damages.  The new law also explicitly provide courts to grant preliminary injunctions within 48 hours.

• Use of the words “well-known mark” on products, product packaging or containers or in advertisements, exhibitions or other commercial activities is now prohibited.  Declaration of well-known status of a mark may be sought in the event of disputes.

The new law clearly shows China commitments towards building a strong and responsive IPR regime, although many uncertainties on the implementation of the amendments exist.  Nonetheless, we are hopeful that foreign trademark owners may now be in a better footing when dealing with infringers in China, and business owners would face a more efficient registry when seeking trademark registration in China.

Global Forum on Intellectual Property 2013

The 4th Global Forum on Intellectual Property (GFIP) will be held at Marina Bay Sands Singapore on August 2013.  More than 800 Intellectual Property practitioners and industry leaders from all over the world are expected to congregate at this biennial event, featuring business-government-NGOs networking platform, IP workshops and conferences.

I am excited and looking forward to meeting old friends and new partners at this IP event. Will you be attending too?

*The above image is extracted from IPOS website.

Deputy Minister Aung Zaw Min highlighted importance of IPR in Myanmar

A robust Intellectual Property Rights (IPR) infrastructure is critical for businesses seeking to sell their trademarked products/services in Myanmar. The government of Myanmar has recently acknowledged the importance of IPR in a discussions on industrial design rights bill. Read more here...

Myanmar looks set to modernize its IPR framework which currently do not conform to international standards. Presently, there is no specific trademark legislation in Myanmar and trademark rights are "acquired" through registration of Cautionary Notice published at local newspapers and proof of use of the mark.

The government acknowledgement is a positive development but it remains to be seen if they have the political wills in implementing the necessary reforms.

Your newly created logo or brand name does not qualify as a trademark!

The Dilemma?

Consider this scenario: You came up with a killer brand name for your new products. You spent tons of money marketing and promoting your products bearing the brand name. Your market shares explodes and now you decide its time to protect the goodwill you have painfully generated in the brand name over the past year. You file an application for registration for the brand name, only to be rejected by the Trade Mark Office on grounds of non-distinctiveness.

The above could be avoided if proper research has been made prior to committing to the brand name. When selecting a new brand name for your products or services, it is important to strike a balance between marketability and distinctiveness:

• Marketability helps maximises market exposure for your products or services. 
• Distinctiveness makes it easy for consumers to associate a product or service with your company. 

A distinctive brand name can be registered as a trademark.

In practice, it is often difficult to achieve a right balance between marketability and distinctiveness; the most marketable mark always tends to be the least distinctive, and vice versa. By applying basic trademark principles, you can ensure that your brand name is both marketable and distinctive.

Is your brand name distinctive?

For a mark to be registrable, it must not be devoid of any distinctive character. To determine distinctiveness, trademarks may be generally classified into the following categories (listed from most to least distinctive):

Fanciful mark 

Fanciful mark is inventively-coined and has no meaning. STARBUCKS and EXXON are examples of such marks. Fanciful trademark is considered the most distinctive and is afforded the greatest protection.

Arbitrary mark 

Arbitrary mark comprises common word which is used in a manner that their normal meaning bears no relation to the products or services to which they are applied. APPLE for computers and DIESEL for clothing are examples of arbitrary marks.

Suggestive mark 

Suggestive mark tends to relate to the quality or characteristic of the products or services, although a consumer would have to exercise some degree of imagination in order to determine the characteristic of the products / services. 7-ELEVEN for convenience store is an example of a suggestive mark.

Fanciful, arbitrary and suggestive marks are easy to register as there is no apparent connection between the mark and the products or services. However, it is often difficult to market these marks as more effort is required to convey the qualities of the products or services to the general public.

Descriptive mark 

A descriptive mark directly describes the quality or characteristic of the products / services. Examples of descriptive marks include Denim for jeans or trade marks containing laudatory terms such as BEST and SUPERIOR. A descriptive mark is prima facie unregistrable, but may become registerable upon substantial use.

Descriptive mark is the easiest to market since they simply describe the products / services they are marketed with. However, registering descriptive mark is often costly as it is routinely objected by Trade Marks offices. 

Generic mark 

Generic mark consists of common names for the products or services with which it is used. Generic mark is unprotectable since they are incapable of differentiating products or services of one trader from another.

Striking the Balance

When choosing your brand name, primary consideration should be given to mark that is sufficiently distinctive (to qualify for registration) and yet easily marketable. Finding this balance can be time-consuming. However, the reward of pairing marketability and distinctiveness ensures marketing ease and appropriate legal protection for your trademark.

LJ Vernus is now on Blogger!

2013 has been an exciting and refreshing year for LJ Vernus so-far : achieving ISO 9001:2008 standards in March, revamping our Wordpress blog site, setting up Google Plus +LJ Vernus since April, and now Blogger!

Trademark rights are important assets to any businesses.  We hope these online platforms will be useful in sharing industry knowledge and latest updates with our clients and like-minded people.

In the meantime, you are cordially invited to visit our official website at www.ljvernus.com to find out more about our firm's expertise in Asia.