UK: A Strategy for International Protection of Your Brand

Last Updated: 4 February 2004
Article by Emma Lambert

An international trade mark strategy is vital to all businesses from start-ups to large multi-national organisations. Emma Lambert outlines the best options for protecting brands internationally and considers their particular strengths and weaknesses.

Overview

The value of Intellectual Property (IP) is being recognised by governments worldwide – so too is the need for international agreements governing the protection and use of IP. Administrative bodies such as the UN’s World Intellectual Property Organisation (WIPO) and the World Trade Organisation (WTO) have specifically been developed to support international trade and to promote reciprocity of IP recognition and protection between nations.

These organisations are responsible for bringing conventions and agreements into force that can be joined by countries willing to integrate them into their national laws and recognise the IP rights of other signatory nations. Membership of these conventions and agreements can lead to considerable economic benefits as companies are more likely to consider member countries as suitable trading territories and venues for the manufacture and distribution of their brands. Interestingly enough, the Paris Convention for Protection of Industrial Property 1883 (the Paris Convention) came about as a result of companies refusing to attend an exhibition of inventions, trade marks and industrial designs in Austria-Hungary. This was because the protection afforded to international rights holders in Austria-Hungary was considered to be inadequate.1

Ultimately, a clear understanding of the agreements, conventions and bodies governing international IP will assist brand owners and their advisers to develop an effective worldwide brand strategy. November 2003 saw the United States join the Madrid Protocol and, in the field of patents, the UK Patents Bill (published 16 January 2004) is set to change existing UK patent law and bring it into line with the European Patents Convention (revised in 2000). These events are clear indicators that IP legislation is under constant review on an international scale.

The IP strategy considered in this article is restricted to brands / trade marks. The author examines four methods of protecting your brands: some have developed from WIPO governed agreements – the Madrid Protocol 1989, the Madrid Agreement 1891 and the Paris Convention; others through Council Regulation (EC) No 40/94 – which introduced the Community Trade Mark – and the UK Trade Marks Act 1994.

Protecting Your Brand

1. Community Trade Mark

The Community Trade Mark (CTM) is already proving to be a popular means of protecting trade marks in the EU and thus encouraging greater cross-border trade between member countries. From May 2004 it will cover all 25 members of the enlarged EU.

The CTM is a cost-effective, expedient means of protecting brands EU-wide. Application can be made through the UK Patent Office or direct to the Office for Harmonisation in the Internal Market (OHIM) in Alicante, Spain. If you are considering applying for a CTM, there are good tactical reasons to do so before enlargement on 1 May.

However, there is a risk – if the registration fails in one country then it will fail across the entire EU. Businesses are advised to consult a trade mark specialist who can conduct ‘availability searches’. The searches will help to determine where problems could be encountered.

If registration problems are likely, it is worth considering individual registrations in key trading territories instead of (or as well as) making a CTM application. It is important to weigh up the costs of registration in these territories against the cost of a CTM – individual registrations can become more expensive than a CTM if the business is looking at registrations in three or more countries. A cost-benefit analysis is necessary before making any decisions.

If the business already owns registered trade marks in the UK or other EU countries, it is possible to use a CTM to rationalise the portfolio and save money on national renewal fees. It will still be possible to claim seniority on the registrations that have been let go (as though they were still in place) in the event that an action for infringement is necessary or there is reason to oppose a third party application.

2. Madrid Protocol 2

The Madrid Protocol was a development of the Paris Convention and Madrid Agreement. It provides a method of registering a brand as a trade mark in ‘Protocol’ countries through a single application made at the International Bureau at WIPO. Such a registration is commonly known as an ‘international mark’.

To gain an international mark, an initial trade mark application is made to the ‘Office of Origin’ – the trade mark office of the country in which the brand owner has a business, is domiciled or is a national. Provided that country is a signatory to the Madrid Protocol, the Office of Origin (in the UK, the Patent Office) will send the application to WIPO stating the countries in which the mark is to be registered. It is possible to choose to extend the international mark to any number of the member countries of the Protocol (currently 62). These include Europe, North America, Japan, China, Australia and much of the former USSR. It is important to note that the UK is only a Madrid Protocol country and not a signatory of the Madrid Agreement. Therefore, if the UK Patent Office is the Office of Origin the designated countries can only be other Protocol countries.

Registration is more convenient and less expensive than making separate applications in a significant number of individual member countries. Nevertheless, registration can still be expensive as each designated country will charge a fee which will vary from country to country.

It is important to be aware that if the original registration is held to be invalid within five years, the international registration will fail. However, unlike the CTM, the international registration will convert into country-specific registrations.

Registration should occur in each of the designated countries within 12 months of the original registration (although this can be extended to 18 months) unless objections are raised which will slow the process down.

3. Well-known Marks

It is possible to obtain protection against brand infringement in the member countries of the Paris Convention3 on the basis that a brand is ‘well-known’. ‘Well-known marks’ are generally considered to be entitled to protection even if they have not been registered as trade marks or used in the country where the infringement has occurred.

In the UK, well-known marks are covered by the Trade Marks Act 1994 (the Act) under sections 10 (3) and 56. Under section 10 (3) it is possible to claim for infringement of a registered trade mark that is well-known in a Convention country if a third party uses a mark for trading purposes which is identical or similar to the registered trade mark. On the strict wording of the Act, third party use is covered by section 10(3) only if it is in relation to goods or services that are not similar to those for which the mark has been registered. However, European case law4 establishes that the protection of s10 (3) also applies where infringing use is in relation to similar or identical goods. An additional element must also be present – the third party use must take unfair advantage of, or be detrimental to, the reputation of the registered trade mark.

Under section 56 it is possible to claim a mark is well-known if the owner of the mark is a national of, domiciled in, or has a business in a Convention country. This section of the Act can be used to complain about use of a mark that is identical or similar to a well-known mark, and used in relation to similar goods or services, where there is likelihood of confusion – even if the mark is not registered. The confusion test is a different test to the unfair advantage test under section 10 (3): some argue that the confusion test is more difficult and expensive for the mark owner to meet.

One of the main disadvantages of claiming that a mark is well-known to prevent third party use is that different countries have different thresholds of what they consider to be a well-known mark. No definition has been set down – nor has any outline of how much reputation will class a particular brand as well-known. Proof that the brand has been registered elsewhere may support a claim but, ultimately, the best protection is already to have a trade mark registration in the country where the infringement takes place.

4. ‘Passing Off’

In many countries (but not all), it is possible to claim against infringement of a brand even without a trade mark registration. See above re section 56 of the UK Act. In addition, UK brand owners can use the law of ‘passing off’. Other countries, particularly in the EU, rely on ‘unfair competition’ laws. Passing off entitles a rights holder to claim against third party use if they can provide substantial evidence of misrepresentation and damage to the reputation5 in the mark. However, bringing a passing off action can be a costly and time-consuming process – and may be beyond the budget of many small to medium sized enterprises.

Essential Brand Strategy Considerations For Your Business

Before deciding whether trade mark registration is necessary and, if so, where it is necessary – the brand owner needs to consider the following questions:

  • What are the future plans for the brand?
  • How valuable is the brand to your business?
  • Does the brand have longevity?
  • Which are the key territories in which you trade and intend to trade?
  • Which goods and services do you presently trade in?
  • Which goods and services may you diversify into?
  • How damaging would it be if competitors, pirates or counterfeiters used your brand (or a similar brand)? How likely is this? Where is it likely to happen?
  • What is your business’ budget for IP protection and enforcement?
  • Considering your present IP strategy, should you be taking out legal expenses/IP insurance? If you already have insurance, how well are you covered?6

With this information firmly in mind, and the assistance of a qualified and experienced IP advisor, it is possible to develop a strategy to protect brands in a manner that will suit your business.

1. WIPO Intellectual Property Handbook: Policy, Law and Use. WIPO Publication No.489 (E)

2. This article is addressed primarily to businesses based in the United Kingdom. The UK is a signatory to the Madrid Protocol and therefore it is more than likely that UK brand owners will register their international marks in accordance with the Protocol. Accordingly, this article does not extend to the Madrid Agreement. Applications in Madrid Agreement countries can influence strategy and information can be provided on request.

3. There are presently 164 members of the Paris Convention

4. Davidoff v Gofkid [2003] EIPR 279; Adidas-Salomon AG, Adidas Benelux BV v Fitness Trading Ltd (Case C-408/01) (23 October 2003)

5. Trade Mark Registration – v – Trade Mark Use? The Costs / Risk Analysis Emma Lambert © Pictons Solicitors December 2003

6.Coming To Blows... Can You Fight For Your Rights? Judeth Neville © Pictons Solicitors December 2003

© Pictons 2004

Pictons Solicitors is regulated by the Law Society. The information in this article is correct at the time of publication in January 2004. Every care is taken in the preparation of this article. However, no responsibility can be accepted to any person who acts on the basis of information contained in it. You are recommended to obtain specific advice in respect of individual cases.

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