22 February 2013

The WIPO Global Brand database

WIPO has added seven million American trade marks to their Global Brand database.

The idea behind the database is to make brands – registered trade marks, though branding as a concept is somewhat broader -- more accessible to anyone interested in using them for information by bringing together data from different sites.

An earlier related attempt is TMView, run by OHIM, which administers an EU-wide trade mark system. Its own data is searched plus that of numerous EU countries to provide a single list of results.

 The Global Data database has broader ambitions – it really aims to be global – but besides that it has some very interesting search features. This makes it the obvious site to use when checking for international coverage. Presumably more offices will later join the database.

With the new US data, it now contains over 10 million trade marks. The other main offices in it are the Madrid Agreement data, which provides coverage in many countries with one registration, and Canada and Australia. 10 offices in all are so far included, plus Lisbon appellations of origin and 6ter emblems, which are wording or images which cannot be registered as trade marks (such as national flags, official heraldry etc.). Clearly, the more countries join the better.

The database is easy and intuitive to use. As you type in a word or holder name it suggests possible wording. Fuzzy logic or phonetic searches to find closely related marks are possible by clicking on symbols to the left of the search box (but not it seems more detailed search variants such as in the UK trade mark database). The results appear very rapidly in order of the most recent registrations in a seamless list, with numerous details displayed including the logo.

Below is an image of what the search page looks like with a couple of the results showing at the bottom.

WIPO Global Brands database results example

The logo search area is very intriguing. Suppose you are looking for images of mountains as a trade mark. Click on “lookup” and then type mountain in the new search box. Eight possibilities are offered, which are either VC (Vienna Classification, which is internationally used) or the US variant of VC. Click on the one you want, say 06.01.02, mountain landscapes, and the search is transferred to the main search box. This makes what can often be very laborious much simpler.

 There is also a filter function to the right of the search boxes so that groups of data can be selected. A display automatically appears for any result list broken down by the numbers found in each office. There is also status – the numbers “active”, pending or deleted. “Expiration” tells you how many will expire within set time periods, which is potentially useful for formalities officers needing to check for future renewals.

Other details are explained in the Help function at top right of the screen. All in all I found the database easy and helpful to use (it does help that I am an experienced searcher). I would encourage everyone doing similar work to try it out and add it to their search tools.

31 January 2013

Marks & Spencer alleged to have copied Nudo’s olive oil logo

There have been newspaper reports, such as an article in the Evening Standard, that Nudo, a small olive oil producer, is stating that Marks & Spencer are using a very similar olive tree logo to theirs on their olive oil range. Here are the contrasting logos.

Nudo and Marks and Spencer olive tree logos

Nudo was founded as a company by Jason Gibb and his partner Cathy Rogers in 2005. Her sister designed the logo. It is a premium Italian olive oil.

In 2011 Marks & Spencer launched their range, and it seems strange that the dispute has only just occurred. Mr Gibb is quoted as saying “I just want these big players to stop ripping off the small guy.”

M&S deny copying the logo and say that the olive tree theme is common in the sector “as customers instantly associate them with the product”.

While I am not a patent attorney or lawyer, I wonder if Nudo would be on stronger ground if they alleged not copyright infringement, which is what seems to be happening, and where copying must be proven, but rather trade mark infringement. The problem is that the olive tree logo has not been registered by Nudo. In fact they have not registered Nudo as a trade mark either. I checked all three systems that cover the UK: the national, European and Madrid Agreement Protocol.

It would have cost just £170 to register a UK trade mark via the Web at the UK IPO for activities in Class 29, which includes olive oil. It is possible that they would have been asked to add the word Nudo to the logo to make it more distinctive, which in turn would admittedly weaken any claim to trade mark infringement. There are several registered trade marks that include the word Nudo, and one covers Class 29:

Nudo sushi box trade mark logo

Trade marks can co-exist in the same class if no conflict arises: few would associate sushi with olive oil, I suggest.

As so often, one for the lawyers to sort out.

16 January 2013

The Compare the Meerkat campaign as a trade mark

For four years British TV has had an advertising campaign for comparethemarket.com where there are constant jokes about a comparethemeerkat.com website that is confusing the public (and for which a fake website has been set up, and which has a clear link to the real site).

The cute little animals, who talk in the adverts, have certainly helped the financial website, which helps customers compare costs in insurance and other products, build up its market share.

I had a look for trade marks, where Class 36 includes insurance. In December 2008 there was a British trade mark application for comparethemeerkat.com and also for Aleksandr the Meerkat and they have also registered Orlov, Simples, and several along these lines:

Meerkat trade mark logo

Believe it or not, that is UK trade mark 2560681A, for Class 28 (games etc.) It is Alexsandr Orlov in his usual dressing gown, who keeps on saying “simples”. Compare the Meerkat was only applied for 8 months later but for many other classes. The campaign had begun in early 2009 so the first trade marks predated it.

These are all in the name of BGL Group, who own the comparison website. The FAME database, which the British Library subscribes to, tells me that it is a private limited company which in 2012 had a turnover of £418 million and a profit before tax of £85 million, a useful 20% margin. There were 3,703 employees. There was only one shareholder, Budget Holdings Limited, a Guernsey company.

You are not supposed to have a trade mark that describes what the business is – you can’t register “Lettuce” if you grow lettuce, or “Hotels in London” if you are about London hotels – and “compare the market” is surely within this category. That is why descriptive domain names can be more valuable than trade marks if your advertising is intended to drive people to the website. BGL apparently, tried to get around that problem by registering in 2007, before the meerkat campaign, a series of marks such as this one:

 Compare the Market trade mark logo
Three other closely related ones include the strapline “for cheaper insurance, nothing else compares”.

Possible objections along these lines form part of what is called absolute grounds, with other exclusions including using generic phrases used in the business, praising the product (surely nothing else compares qualifies ?) and blasphemy.

This is distinct from relative grounds, where a trade mark application might be rejected because it is confusingly similar to a registered mark.

Recently there have been new advertisements where a well-known comic explains to his perplexed assistant that there is no possibility of confusion between the wording compare the market and compare the meerkat. They could have been on difficult ground if someone applied for compare the meerkat, but they had already, shrewdly, registered that phrase.

According to an amusing (and informative) article in the American journal Advertising Age (28 September 2009), How did a meerkat bowl over Brits ? It’s simples, the campaign, by advertising agency Vallance Carruthers Coleman Priest, was devised to avoid the high cost-per-click of the word ‘market’ as people come to the site via priced advertising on Google. It cost $8 per click for the word “market”, but only 8 cents for the word “meerkat”. Their twelve month target was reached in just nine weeks, and their market share went up 76%, so that Go Compare felt forced to respond with a campaign about an opera singer annoying people. Fascinating stuff !

Jason Lonsdale of Saatchi and Saatchi was quoted as saying “They’ve done something unexpected and a bit bonkers, and it's paid off. A campaign based on talking animals and a pun sounds like a terrible idea, but it works.” There has also been extensive use of social media such as Facebook and Twitter.

How did I find the article ? By carrying out a search on Business Source Complete, another database we subscribe to. Not everying is available for free on the Web.

The adverts keep coming, with more than 30 so far. Most can be seen on Youtube.

10 January 2013

Transport for London and patents, designs and trade marks

This post is about intellectual property by Transport for London and its predecessors and marks 150 years today of the London Underground. Congratulations !

From 1908 onwards there was a conscious attempt to provide what would nowadays be called a corporate identity, using initially what became this famous icon for the Underground

E3966082

and this was reinforced as more lines were added. By using it as a trade mark, numerous items can be sold, as in a European trade mark registration in 2004 for named goods and services in numerous classes, some rather surprising (see Class 03 for example).

Some early attempts at the logo are still protected, as opposed to having been allowed to lapse, possibly because they are still selling souvenirs, and possibly to prevent others from using the logos. An example is British trade mark 548799, applied for in 1934, and shown below.

 1934 London transport trade mark

British trade mark 2103551 sounds rather unusual – the registration of Pantone 485 as “the predominant colour of the coloured surface of a passenger transport bus.” The famous red, that is – registered in Class 39 for, specifically, transporting bus passengers in London.

Turning to designs, there are three British designs currently registered for the appearances of buses and all for “Structure for use as a commercial outlet”, according to the title. These can be found here. Click on the logos and then on the Formal Reps to see the detailed drawings.

I suspect that the old Harry Beck maps may have been registered as designs but a long search through the National Archives design holdings would have been needed. Does anyone know the answer ?

And then there are patents. In 1984 London Underground applied for a Fare collection system which was a customer operated ticket machine. Page 68 shows the way the system worked – coins in, tickets out, etc. Provision was made for data to be collected centrally. I am guessing this is the basically the method used today.

Most patents relating to the Underground or buses are probably in the name of the manufacturers and hence harder to find. There are just five patents in the name of London Underground, from 1984 onwards.

Of course, private individuals can always join in. In 1920 Fountaine Burrell, an electrical engineer from Sydenham, London, applied for British patent 176163, which is specially marked dominoes to play a game based on the London Underground map – read it to find how it works. Perhaps he worked in the system itself. Two of the drawings are shown below.

Dominoes based on London Underground game
Something that could be protected as copyright would be the look of the floors and the seating on trains and buses. For a long time the seats have been in a variety of colours, while the train floors consist of sealed grey material mixed with scraps of yellow and white paper. I am told the reason is that if staining occurs it is much less noticeable than if the surface was a uniform colour.

03 January 2013

The No!No! ® hair removal invention

There has been a lot of TV advertising for an electrical hair removal device with the unusual name of no!no!®.

It uses heated wires to sever body hair, and the claim is that it is virtually painless -- unlike, so I hear, waxing. One thing that puzzled me was that in my hit list on Google’s UK search engine I got at the top of the list for the query “no no”...

NO NO Hair® Official Site

This suggests that the trade mark is No No Hair. Not true – No!No! was registered as a European trade mark in 2008 by Radiancy, Inc., an American company, for Class 3, including “hair lotions; dentifrices; creams and lotions” and also, separately, for Class 8 including “depilatory appliances”. There are 45 Nice Classes, and any applications will be for specified products or services within one or more class.

There are similar registrations in the US such as for “Thermodynamic heat conduction based electric hair shavers for aesthetic purposes”.

In fact the ® icon is not used on the No!No! website I found, something that is highly advisable as it might be thought to imply that they are using an unregistered trade mark (TM), a much weaker right.

Radiancy, Inc. is based in Orangeburg, S.C. The Orbis database, which our Business & IP Centre subscribes to, tells me that the “global ultimate owner” is PhotoMedex, Inc. which is in Pennsylvania and which describes itself as a “Global Skin Health Solutions company”.

In 2011 Radiancy, Inc. had $1.2 million in revenue (no profit figures were given) and 10 employees. A quick check on Google Product Search UK, a free price comparison site for products available on the Internet, suggests a price of £164 or more for it.

According to a press release from November 2012 on the BusinessWire website, the product has been on sale since 2007 and has sold 3.5 million units to date. As in the UK, home shopping TV channels seem to be the main format used to sell the product, cutting out retailers and hence enhancing profits.

So, what about patents ? There seem to be quite a few, starting with publications in 1999 and with other improvements or changes following (I think those from 2003 relate to the device). The inventors are two Israelis, Pinchas Shalev and Zion Azar.

This is a list of “World” patent applications by them inventors in the same field. These include Improved electric shaver, with the drawing shown below.

 No!No! patent drawing

While it seems to be a very successful (if expensive) product, the Internet does have a number of critical comments on it by unhappy customers.

13 December 2012

The Hobbit and The Lord of the Rings film series in trade marks

The first of the three Hobbit films, An unexpected journey, opens in the UK today on general release to an eager multitude of fans. It will be followed by The desolation of Smaug in 2013 and There and back again in 2014. All the titles of course to be preceded by “The Hobbit”.

The potential in merchandising is huge, and this is reflected by the sheer volume of trade marks taken out on names and words associated with the book, while others are related purely to The Lord of the Rings.

The money is not being made by the heirs of J.R.R. Tolkien. In 1968, Tolkien sold the film, stage and merchandising rights of both The Hobbit and The Lord of the Rings to United Artists for just over £100,000 plus royalties. That company sold the rights on to the Saul Zaentz Company in 1976. Saul Zaentz himself is a film producer and Middle-Earth Enterprises handles requests for licensing.

The Wikipedia article on that company lists some licensees for games and collectables, plus the film rights to New Line Cinema. As the first “Ring” film was only released in 2001 the value in what is in effect a complex brand took a long time coming out.  

I can only trace one registered design, applied for in 2006, and shown below. It is European Design 000482070-0001. Its title is “Clothing, jewellery” but in fact designs work so that it can be used across all product areas.

The Lord of the Rings European Design logo

Trade marks are far more prolific. Saul Zaentz has 180 applications or registrations listed in the European trade marks as found on the official database.

These include the titles of the three Hobbit films in French, German, Spanish and Italian as well as in English, and a few wordings in Dutch. Hence for example EL HOBBIT: UN VIAJE INESPERADO for the first film and LE HOBBIT: HISTOIRE D'UN ALLER ET RETOUR for the third film. For some reason the full title of the second film has not been applied for.

This EU-wide system was only used by the company from 2011 onwards, well after the “Ring” films began to come out. There are a number of British registration, the oldest being HOBBITS,  made in 1961 for knitted articles of clothing (and, curiously, originally in the name of Bear Brand Limited, a Liverpool manufacturer).

The EU marks include obvious wordings like GOLLUM, SARUMAN and GANDALF; also some of the dwarves; and numerous place names such as RIVENDELL, MORIA and GONDOR.

Various product areas are listed for them such as, for ONE RING TO RULE THEM ALL, Classes 14 (jewellery), 16 (includes stationery), 20 (place mats), 25 (clothing) and 28 (toys and games). There are 45 classes in the Nice Classification and it is required that applicants both use them and list within them the goods and services for which they intend to use the mark – this can be fascinating reading ! The registration for SAURON for example includes Class 25 where the only use listed is "Costumes" -- interesting, as surely he's never really seen in the books and films ? 

There’s also THE LORD OF THE RINGS: MIDDLE-EARTH DEFENSE which I gather is a game that can be played on an app.

The trade mark show below was, however, withdrawn and not registered. Perhaps because of conflict with their earlier design registration ?

EU trade mark for Lord of the Rings logo

These EU trade marks can be found on the official database by asking for Zaentz as owner.

 Owners of rights often go to considerable lengths to defend what they consider to be their rights. In 2010 Saul Zaentz opposed the US registration of Mithril in Class 30, which includes jewellery, on the grounds that it was a word from the Tolkien books and that they had already registered it for other classes of products. The opposition was successful.

More controversially, the company has also asked a pub in Southampton, England to change their name from The Hobbit, and a website name incorporating the word “shire” was asked to stop doing so in 2004, although shire is a well known English phrase by itself and also occurs in Hampshire, Devonshire, etc.

04 December 2012

Brand Beckham: designs and trade marks registered by David and Victoria

David and Victoria Beckham have in effect turned themselves into brands, and evidence for that can be found in designs and trade marks registered in their own names or by Beckham Brand Limited.

This is smart use of the intellectual property system to commercialise their images and names – they’ve spent plenty of time in the public eye getting known in the realms of music, football, advertising and fashion.

The latest accounts for Beckham Brand Limited give a turnover in 2010 of £5.6 million, with a profit of £3.5 million before tax, a useful margin. David and Victoria were both named as directors, their occupations being given as “pro footballer” and “musician” when appointed in 2004. Each own a third of the company, with XIX Management UK Limited having the remaining third.

I got this data from the Fame database, one of many accessible for free by British Library registered readers.

The earliest use of the intellectual system I can find by them is in 1999, when David Beckham applied for Smokey Beckham in the UK trade mark system for potato crisps. I like the pun on “bacon”.

Three other UK trade marks are registered in his name, and one by Beckham Brands Limited. There are none by Victoria Beckham (or Adams, her maiden name).

23 Community Trade Marks have been applied for “Beckham”, a mixture of the company or their own names, through the OHIM website since 2000 (not all are currently still registered). This is a cheap way to protect a brand across the entire EU. They include David Beckham’s own signature, as shown below:

David Beckham signature trade mark
 The names David Beckham and Victoria Beckham have both been registered for 11 of the possible 45 trade mark classes of business products and services. Another is a logo registered by Victoria Beckham, applied for in 2002:

VB and cat trade mark logo
Several of the marks relate to David Beckham’s football academy, but there is also Intimately Beckham, Intimately Yours and David Beckham Bodywear. If properly looked after these trade marks can be protected forever for those classes.

Turning to designs, for something’s look, in 2007 a series of 17 related designs were applied for as Community Design 00798467, also through the OHIM office. This included the design shown below, with the initial V between a d and a b, with presumably the d being the mirror image of the b representing the initials for Victoria Beckham. Or is d for David ?

DVB Victoria Beckham design logo
The series includes star logos and items (bags ?) with star logos or the logo shown above in different positions, or simply plain. The title for each one is simply “Ornamentation”, with no need to describe what products are involved, as the look covers all possible products. They may, perhaps, be available to see on the Victoria Beckham website. As designs, they have a limited life before being available to others (a maximum of 25 years).

Finally, seven trade marks have been applied for through the US federal system, a selection of those protected in Europe.

These include That extra half an inch, which initially puzzled me – it sounded very saucy – but it turns out that Victoria published a book called That Extra Half an Inch: Hair, Heels and Everything in Between back in 2007. I must have missed its publication. The trade mark covers a vast number of products and services listed (as required) in great detail, such as “live fashion shows by a famous individual or professional entertainer”.

05 September 2012

Minesoft’s Tmquest database for US trademarks

The British search company Minesoft has introduced a free database for searching US trade marks (trademarks, US style), Tmquest.

I found this to be a delight as I have long found the official US database very awkward to use, with unsatisfactory hit lists.

Tmquest has a simple search page, with suggested wording offered as you type in the letters. With some exceptions (mainly early?) the hit lists display logos, date, the Nice Class defining product or service area, and company name. None of this is true of the official site. The results can be sorted by using a tab at the bottom of the page. 

I will certainly be using Tmquest from now on. I would, however, check the official site for additional information on any hits that looked important in my search, and in certain special circumstances to find additional hits.

Minesoft itself is well know for its search tools for patents such as the priced Patbase® database.

04 June 2012

The craft of making tea

The art and craft of tea making is a very British obsession and tea is very big business.

According to Euromonitor’s GMID database (available in the BL Business and IP Centre) we drank our way through no less than 112 million tonnes of tea in 2011. The importance of the industry is also reflected in the intellectual property it generates.

Exploring the British Library’s intellectual property collection reveals the enormous range of IP assets which have been built up over the years by demand for our national drink. Goblin devised the Teasmade® (a registered trade mark for “Time controlled electric apparatus for making tea”) back in the 1930s. You can see a detailed description of the machine in the patent Apparatus for making hot beverages. This charming illustration is among the drawings.

Teasmade patent drawing

It also refers back to an earlier version of the Teasmade® by the same inventor, William Thornton.

The Teasmade brand is of course now famous and, after disappearing for a while, the device is back on the shelves again. Apparently the first name put forward by the chairman of the Goblin board was “Cheerywake”. Fortunately he was outvoted!

As trade marks are not supposed to describe the product or service “Tea’s made” might have had a problem – but by now long familiarity with the name would make any challenge difficult to mount. Goblin Teasmade was registered in 1938 (now just Teasmade®).

Trade marks and registered designs have been used to protect the “concept” behind some familiar marketing campaigns for tea . The “tea folk” depicted below, much used as cartoon characters in TV advertising, were registered by Tetley in 1991. Each has a specific role – Morris is the (all important!) inventor.

Tetley tea folk trade mark

More recently, Unilever has been promoting its PG Tips brand with a series of TV advertisements featuring comedian Johnny Vegas and a monkey (voiced by Ben Miller). “Monkey” is the subject of a British registered design (shown below) which is owned, surprisingly, by Comic Relief .

Comic Relief image of monkey

Unilever also introduced the triangular, “Pyramid” teabag for its PG tips brand back in 1996. Their publicity describes it as “revolutionary”, and states that “with more space inside it acts like a miniature teapot, giving the leaves more room to move.”

Molins, a Midlands company that specialises in machinery for preparing food or tobacco, devised technology for filling the triangular sachets described in their European patent application Apparatus and methods for producing packets.The drawing below is one of eight illustrating the process of putting the “filling material” (tea leaves, presumably) into the packaging.

Molins tea packing patent drawing

It is interesting that tea experts claim triangular bags do not mean a better cup of tea, just a quicker one.

Even the box in which the same tea bags are sold is an IP assest protected in this case by British design 2035706, as shown below. Clearly, when it comes to tea, intellectual property has it covered from every angle. Pyramid tea bags package

04 May 2012

Guide to intellectual property in the fashion industry

London's Centre for Fashion and Enterprise has put four guides to aspects of intellectual property and the fashion industry up on the Web.

They all have the title Intellectual property and the fashion industry and are on trade marks; design rights; copyright; and licensing. They date from March 2012.

These are practical guides to carrying out business in the industry, with real case studies to illustrate strategies -- hence mention of Jimmy Choo and Vivienne Westwood, for example. They look very useful. My only small quibble is that the mention of "design rights" could be confusing as "registered designs" and "design rights" are two separate rights that can be used to protect the appearance of things, while the brochure covers both.

The Business & IP Centre here has a Fashion Industry Guide listing valuable sources, mainly in reports held on paper or in subscription databases, which can be used by its readers.