Trademarks are like birthmarks! Why does a Trademark matter?
It’s been a rough week for Apple, who on top of seeing their shares plummet has lost a trademark fight in China, meaning a firm which sells handbags and other leather goods can continue to use the name “IPHONE”. The decision was handed down by the Beijing Municipal High People’s Court in favour of Xintong Tiandi Technology, who are trademarked “IPHONE” for their leather products in China in 2010.
Apple had filed a trademark bid for the name for electronic goods in 2002, but it was not approved until 2013, expressed their disappointment of the decision stating, “We intend to request a retrial with the Supreme People’s Court and will continue to vigorously protect our trademark rights.”
Despite many appeals, the High People’s Court ruled that Apple could not prove it was a well-known brand in China before Xintong Tiandi filed its trademark application in 2007. Apple iPhones first went on sale in China in 2009. So was unbelievable as it may seem, apple will need to continue the fight, ‘to ensure our customers’ experience is not compromised by companies who try to profit from using [the] brand.’
Trademarks are like birthmarks. Not everyone is born with them, but most of us are! They are unique identifiers which according to the International Trademark Association are defined as, “…any word, name, slogan, symbol, device, package design or combination of these that serves to identify and distinguish a product from others in the marketplace.”
Indeed unique in nature, sometimes trademark can be sounds, colours, smells or even holograms. If someone else attempts to distribute products using something “confusingly similar” to your trademark, you have the legal right to protect yourself and stop them. It was on this basis that apple have challenged Xintong Tiandi Technology.
When you start out in business a trademark may not be the most important factor, particularly as the success of your brand at this stage may well be unknown. In order to ascertain the need for a trademark, you should ask yourself whether the sign (or name etc) for your business is an essential function. An example of this includes domain names, which can indeed be considered essential as a function for your business.
Take a listen (above) to learn more including estimated costs, and see a few tips below: –
1. Do your research – before you choose a trade mark for your business (e.g. choosing a domain name, or a name for a new product or service) it is usually sensible to conduct some kind of trade mark search to determine whether your proposed mark might infringe another’s rights. You can search UK Intellectual Property Office (www.ipo.gov.uk), the Office for Harmonization in the Internal Market (www.oami.eu), and the US Patent and Trade Mark Office (www.uspto.gov).
2. Learn a bit about Trademarks – it could help you to defend yourself if accused of infringement. For example, if the trade mark is over 5 years old and the owner of the registration hasn’t actually used the trade mark in the 5 years preceding the claim, you can seek to have the registration revoked.
3. Don’t fall into the ‘threats trap’ – If you threaten someone with proceedings for infringing a registered trade mark, then you risk being on the wrong end of a legal action for “groundless threats” under the Trade Marks Act 1994. Rather than risk it, you should always seek professional advice before accusing someone of infringing your trademarks.
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