5 more myths about brands and designs – answered!

This article is part 2 of 2. See here for part 1.

1)      We can use whatever Google AdWords we want to advertise our own products and services – consumers can’t see them

WRONG!  Google AdWords is a keyword advertising service which allows an advertiser to pay to have its webpage associated with specific words. When the keywords are searched using the search engine, the webpage is displayed as a “sponsored link” separate from the search engine’s organic links.

It is a standard advertising strategy to purchase keywords relating to a competitor or their brands but recent case law confirms that in some circumstances, use of Adwords can amount to trade mark infringement if the use suggests there is an economic link between the parties.

Further, if you use Adwords to advertise across Europe, be aware that national courts do not apply a consistent approach and different countries have favoured the brand owner over the advertiser and vice versa. You should therefore consider your advertising strategy on a country-by-country basis before using Adwords across Europe and seek appropriate legal advice.

2)      We can’t do anything about our brand names being used maliciously on social media

WRONG!  Advertising and marketing play huge roles in the success of a business. Getting your name out there on social media is a great way to let your customers’ good experiences speak for themselves so what happens when your trade mark is used maliciously or by counterfeiters?

YouTube, eBay, Twitter, Facebook, LinkedIn and many other social media sites have procedures in place to protect your IP rights. For example, the use of trade marks as Twitter handles can amount to trade mark infringement and you can submit a complaint and request that a profile be shut down or a handle changed based on your IP rights.

3)      We can wait until we launch before we decide which designs to obtain registered protection for

WRONG (in some circumstances)!  To be registered in the UK or across Europe, a design must be “novel” which means that it hasn’t been made available to the public e.g. by displaying it on your website or exhibiting at a trade fair. Helpfully, design law in the UK and Europe provides a one year “grace period”, allowing design applications to be filed up to one year after they were made available to the public so we recommend seeking legal advice as soon as possible after (or ideally, before), the designs are “disclosed” to the public.

Beware that not all countries have a grace period (notably Australia and China) so if you’re interested in securing protection on a more global basis, you’ll need to file applications before the design is made available to the public which requires early planning and good internal communications.

You should also ensure that non-disclosure and confidentiality agreements are in place with potential suppliers and distributors so that it’s easier to take action against any unauthorised activity.

4)      The counterfeit market is too fast moving to do anything about it

WRONG!  You can register your trade marks at Customs to help stop counterfeit products entering the market.

By providing Customs with as much information as possible about your brand including how to spot fake products and explaining your use of e.g. holograms/tags on originals you increase the chances of them being able to identify and remove counterfeits from circulation.

You should also give details of your importers, exporters and any licensing and distributor agreements you have in place so legitimate products are not unnecessarily held up.

Finally, we recommend training your staff to be vigilant in spotting and reporting counterfeit products. An internal manual outlining the differences between genuine and fake goods is a great way to ensure that your employees are educated in what to look out for.

5)      We’re using our Community Trade Mark Use (CTM) in the UK – that’s enough to maintain our registration

WRONG!  Recent case law suggests that use of a CTM in a single EU member state will no longer be enough to maintain a registration and a CTM owner will have to have used its trade mark in at least two countries, if not more, to defeat a non-use cancellation action or continue to be able to enforce its rights. The situation remains unclear.

Please see a full article discussing this point in detail here.

If you require further intellectual property advice please contact the author, Alice Davies via alice.davies@gje.com.