Imagine successfully building your own brand, taking over half a decade to accomplish. This will include much more than just a marketable logo or a well-placed advertisement. Acquiring clients whilst building trust between the services you provide and your customers, will be hard work. All this will be of paramount importance to the brand name and requires substantial capital, a significant period of time, high level of skill and diligence, but above all achieving to effectively stand out from the crowd and differentiate your brand from the competition in the market. It is, therefore, important to protect your monadic brand's voice and rights. Protecting your rights means respecting your organisation's efforts and 'demanding' other entrepreneurs to respect and protect your rights when they make their decisions for building their own brand and reputation as well.
A trademark is generally a word, phrase, symbol, design, or a combination thereof, that identifies and distinguishes the source of the goods or services of one party from those of others. This is what distinguishes you and your brand's voice from the relatively crowded niche.
A fried chicken restaurant to pay 14.5 million KRW ($12,750) for selling 'Luis Vuitton Chicken' - Louis Vuitton v Louis Vuiton Dak (2016)
Not long ago, the legal world was shocked with one of the more amusing legal debacles involving a major international trademark infringement. The owner of a South Korean fried chicken restaurant named his shop 'Luis Vuitton Dak' which originated from the word 'tongdak' that translates to 'whole chicken' in Korean. The owner also used a logo identical to that of the French fashion brand 'Louis Vuitton'. Of course, the owner lost a trademark battle with Louis Vuitton.
The court decided in the Louis Vuitton's favour, underlining that the shop's name of 'Louis Vuiton Dak' was too similar to 'Louis Vuitton'. Further to the name infringement, the restaurant also had an almost identical logo and almost identical packaging with that of the French designer.
Having changed its name to 'LOUISVUI TONDAK' not long after the court's first ruling, the unfortunate restaurant was ultimately penalised with 14.5 million KRW ($12,750) in fines for non-compliance. The Seoul Central District Court highlighted that the name was still read in the same way and therefore did not lie outside the scope of the court's ban. The damage caused to the French Designer by confusing the brand's image in the Korean market was related to the feelings of luxury and uniqueness that customers purchasing LV products expect. At the moment, the LV brand is associated with premium quality and unique products. Additionally, the company's brand name, logo and packaging are what help the consumer acknowledge and associate the brand's products with such high quality and luxury. Therefore, having the designer brand confused with this restaurant can have unprecedented consequences of damaging the brand's originality and devaluing its prestige and reputation. Moreover, the existence of this restaurant with the specific name, even if it exists in a completely unrelated product market, may limit the French Designer's ability to exploit and enter the Food and Beverage market further into the future. These factors highlight the importance of trademark rights protection.
The international designer brand's value, originality and fame which the restaurant could have tarnished, was eventually restored but the restaurant itself did not only pay in terms of serious legal costs, but also faced the risk of losing customers and even shutting down due to the defamation that this case could have brought upon the local restaurant.
Many brands can stay away of similarly expensive legal disputes by ensuring that they do not mirror their brand after a brand already in existence, even if their products and markets of operation are completely unrelated. This has been made obvious by the aforementioned case.
Trademark rights protect the brand image and customer base of already established companies that have spent money and resources to build their brand name. As we can see from the case if trademark rights did not exist other companies would have the ability to take advantage of other brands and their image in order to increase revenue and customer support.
Donate to help Henrik Huseby raise money to pay his legal fees - Apple v Henrik Huseby
Henrik Huseby, the owner of the Norwegian repairing company called PCKompaniet lost his legal fight against Apple in Norway's Supreme Court for trademark infringement. Apple claimed that the owner of PCKompaniet was importing "counterfeit" iPhone screens. Huseby successfully denied Apple's allegations in court by making the argument that his company only used refurbished iPhone screens that were never publicly advertised as being unused "genuine" spare parts from Apple nor that they carried Apple's approval.
The case won the international attention due to the right to repair debate that is going on globally with manufacturers, journalist, independent repairers and law professionals participating. This right is under attack by Apple's determination to regulate how and whom can restore the well-known brand's damaged products. Even though, initially Apple faced defeat in 2018, they took the case to Norway's Court of Appeals, which in 2019 decided in Apple's favour on the grounds that the parts unlawfully appropriated Apple's trademark. Huseby appealed and lost the case on the 2nd of June 2020. Apple's logo, which had been affixed without the consent of the company, was covered with a marker. The Supreme Court stated that the import of the screens was not compatible with sections 4(3)(c), cf. (1)(a) of the Trademarks Act. It was underlined that the marker could be erased and consequently this did not permanently remove the risk of damage to the trademark and reputation of the brand that this trademark protects. Therefore, covering the product's logo with a marker could lead to confusion when it comes to identifying the origin of that product. Provided that, it could be uncertain whether it was an original component, or a counterfeit was sufficient to prove a risk of loss/damage to the function of trademark.
Independent repairers have limited rights as to what they can repair when parts of a device are broken. Apple maintains high prices when it comes to its repairing services and additionally makes it difficult for independent repairers by using glue and other obstacles to deter any unauthorised repair.
On 26 of November 2020, the UK Parliament's Environmental Audit Committee issued a paper reprimanding Apple for being an active contributor to a "throwaway culture" of "short-lived products." From 2021 suppliers will be obliged to supply spare parts for their products for up to a decade. They must also ensure that spare parts are easily replaceable by using commonly accessible tools, without causing permanent harm to the device itself.
For now, Apple takes advantage of intellectual property law as
an irreplaceable tool in their armory by using several logos and
QR-codes on each component part of their screens.
Huseby faced considerable legal costs in addition to the equivalent of 23,000 Euros compensations to Apple and he set up a donation for people to help him pay his legal fees.
Coca Cola wins the Maaza Dispute - The Coca Cola Company v. Bisleri International Pvt. Ltd.
The Bisleri International Pvt. Ltd. is an established Indian manufacturer of bottled water which sold and transferred trademark rights for the MAAZA product line. This included the right to formulate, intellectual property rights and the mark's goodwill to Coca Cola. The Indian manufacturer only retained the right of MAAZA in all other countries (excluding India) where MAAZA was already registered.
Following their agreement, Coca-Cola filed an application for trademark registration for the 'MAAZA' name in Turkey (where MAAZA was not previously registered) and commenced exports of the identical product under the same tag. When the defendant (Bisleri International Pvt. Ltd.) took notice of Coca-Cola's actions it proceeded to repudiate its agreement and void all of the selling rights that were originally granted to Coca-Cola. The plaintiff, Coca Cola, then filed a lawsuit claiming that the terms of the agreement were ignored by the defendant and that Coca-Cola was the exclusive owner of the rights to the MAAZA trademark both within India and outside the country.
An interim injunction was held up against Bisleri for using the trademark MAAZA in India and for exports and in 2013 Bisleri International was eventually barred from selling MAAZA products in India except in the case were these products were produced in India but exported to pre-existing MAAZA registered countries, for which Bisleri held the trademarks of.
Every entrepreneur out there must recognise the importance of such trademark laws and how easily it can hinder their company's growth or even result in the company being dissolved. It would definitely be of more intelligence to appoint business professional services specialising in the legal sector to guarantee protection against such compliance issues. Big brands take vigilant precaution in representing their brand's picture, reputation and character through broadly registered intellectual property rights. It is important to register your trademark and keep it readily available thus being prepared in the event you are required to fight for the protection of your rights and win the legal battle.
Last but not least, the EU has continuously been taking actions to reinforce regulations on trademark protection within the EU Member States. A great example of such reinforcement is the European Trademarks Directive (Directive (EU) 2015/2436) and EU Trademark Regulation 2015/2424 which aim to harmonise trademark laws across all the Member States but also adapt these laws in order to be more applicable to the modern world economic environment. Significant amendments have been introduced such as the restructuring of trademark fees by reducing said fees especially for companies holding long-term trademarks for over ten (10) years. This reinforcement effort has also been echoed by the Cyprus Parliament on the 5th of June 2020 through passing the new Trademarks Law No. 63 (I) of 2020 which establishes multi-class trademark applications that consequentially allows for a wider range of legal entities to submit an application for collective trademarks. Additionally, the term of the trademark registration has been lengthened from seven (7) to ten (10) years and a single unitary fee has been set for trademark registrations.
As it is obvious, trademark registration has been taken much more seriously within the EU in recent years. A step towards the right direction as clear and transparent trademark legislation will eventually lead to an innovative and progressive business environment in all the Member States.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.