Trademark in brief
Organisations spent time and energy is invested in the development of a new brand. This is to ensure that that time and energy is not wasted on the wrong name. It’s equally important that, at an early stage of brand development, thought is given to the question whether the developed brand, the creation or the design can be protected by means of a trademark registration.
In principle, almost everything can be protected as a brand. ‘Everything’ can include: words (and any special style of writing), drawings, letters, numbers, shapes, packaging design, colours and family names. This protection can be applied for and granted individually (linked to a person or company) or collectively (as a hallmark for different parties). These different symbols must, however, meet certain conditions; otherwise a trademark application for registration can be refused.

Why a trademark application may be refused
Several reasons abound why an application may be refused. For example, non-distinctiveness of a proposed trademark, too simple or perhaps even too complex, it is descriptive or a generic term, a trademark can also be refused if it is in conflict with common decency or public order. Deceptive symbols are not accepted either. Geographical names will be refused in certain cases, as well as flags or state emblems. These restrictions once again underline the fact that solid legal advice at an early stage of brand development can prevent disappointment and cut costs. K would be pleased to advise you about the legal possibilities of trademark development and offers several instruments to optimise the means of registration of your new trademark.

Trademark defined?
We often see them everywhere. But what exactly is the definition of a trademark? Legally, a trademark is any sign, symbol or external appearance that distinguishes a product or service from competing products or services. A trademark has different functions, but in particular it provides brand recognition, identification and distinctiveness for consumers. The definition of a trademark, as described above, is actually quite broad. In everyday practice, there are various types of trademarks, such as:
• Brand names
• Logos
• Shape marks
• Sound marks
• Colour marks

Examples of brand names include Toyota or McDonalds, while famous logos include the apple mark of Apple. A design may also be a trademark, such as the Coca-Cola bottle. But those aren't the only types of trademarks. Colours can also fulfil the function of a trademark (for instance the yellow of Yellow Pages), as can letters or abbreviations (BMW), figures (X5), a family name (Louis Vuitton) and even smells and sounds.

Distinctiveness – how does it matter?
In trademark law, the distinctiveness of the trademark occupies centre stage. The name of the product or service must be distinguishable from similar products or services of competitors. Trademarks and brand names must not be confusing therefore. The greater the distinctiveness, the stronger your brand will be. And the stronger the brand, the better your chances of taking action against trademark infringers or copyists. If you would like to know more about strong and weak brands and why it is important to protect them, please contact KellysIP at info@kellysip.com.

Trademark search: checking availability
After you have invested a lot of time, resources and money into the development of your trade names, before you can register your selected names, it is wise to investigate the trademark availability (via a trademark search). Trademark search provides you with a quick and easy answer to the question as to whether you can use your chosen trade name(s) undisturbed.

Everyone is looking for a unique place in the market in order to be successful and maximize. In order to test the uniqueness of your trademark you will undoubtedly use a search engine like Google or any search engine. This would be a good start, but it's not enough to be certain that your trademark can be registered. A similar or comparable trademark may already have been registered but not yet launched into the market. Only a trademark search will provide you with a complete overview of your options.

KellysIP trademark search examines all relevant trademark registers, can look for identical or similar trademarks and may be accompanied by appropriate advice from our consultants. Our experience will also help to highlight potential conflicts that you may not have considered

Mitigating risk
You will save money and time by performing a trademark search at an early stage of the development of a new trade name. What if a third party (with prior rights) objects to your trademark registration? It could mean that you have to stop your production process, remove all your products from the shelves and start to develop a new brand from scratch. The risks and costs associated with this can be enormous. With a KellysIP’s trademark search, you can mitigate these kinds of risks.

Examination after trademark registration
If no objectionable prior rights emerge from a trademark search, the procedure for registration of the trademark can commence. Following trademark registration, it may also be useful in some situations to investigate further. For example, index search may produce useful information about the trademark rights of third parties, in relation to the trademarks that they have registered. It is also possible to examine whether a third party is using its trademark correctly.

Registration of trademarks: essential for trademark protection
The registration of your trademarks is vitally important since a trademark registration gives you the exclusive right to use the trademark (or, rather, to stop others from using it). The registration of your trademark is an important first step towards protection of your trademark. It provides you with an important means for taking action against third parties that attempt to use the same trademark or a similar one. The registration of your trademark gives you a unique position in the market and optimum trademark protection.

The import of registration and goods classification
To make it easier to register your trademark, it is advisable to perform a trademark search in advance. The search will find out whether the trademark already exists and whether you can make undisturbed use of your chosen brand name. When registering a trademark, it is important that you carefully consider the areas for which you want trademark protection. It is important to register your Intellectual Property in all countries where you produce or offer products and services.

The manner of trademark registration should also be carefully considered. After all, protection can only be invoked for what has been registered. The registration thus determines the scope of protection for the trademark. It is not enough to determine the countries for which you want a trademark registration; you should also consider for which products or services you want to register your trademark.

Trademark protection
With a trademark search as a compass, a clear description of your market and the correct classification, you will lay an important basis for your trademark registration. A trademark is then created by means of formal registration. If a trademark is not formally registered, it is not protected as, if you do not register your trademark in good time, others can use it and even register it themselves. After all that effort, time, energy and money, it is crucial that you are permitted to use your own trademark.

Trademark watch service / preventing infringement and misuse
Registration alone is often not enough. Besides the registration of your trademark, it is also important that the trademark is ‘watched’. You will have to actively monitor and watch your trademark(s) to prevent others from infringing them. The registration of a trademark is a good first step towards protecting your Intellectual Property; trademark watch is a useful tool for indentifying infringements and misuse of your trademark in a timely manner such as:
- Early detection for opposition
- Investigation by KellysIP

In today’s world where internet has created a whole new marketplace through which products and services are bought and sold. For companies, the internet provides an opportunity to react to a larger market and the ability to reach a target audience more easily. But, the internet is also used by those who want to use or abuse your name or trademark; for example, by selling your products with your brand without your permission. Sometimes, these products are real (for example, by means of parallel imports), but often they are counterfeits. Online marketplaces or auction sites, such as eBay, are also frequently used.

We have developed a system in which we constantly monitor against misuse of our client’s trademark or trade name.

What is Trademark Infringement
The registration of a trademark right is only the first step in a longer process of protection and enforcement. For some trademarks, this process will be relatively simple and straightforward but, for many trademark owners, it will be a complex journey, as they seek to distinguish and uphold their trademark rights against counterfeiting, passing off or trademark infringement by third parties.

Choose your trademarks wisely: The more distinctive and novel the brand name you select, the more likely it will be that your trademark will be awarded protection by the relevant trademark register

Opposition procedure
Due to similarities in the brand names chosen for trademark applications, conflicts may arise between trademark owners and applicants. Unless a trademark applicant has conducted a thorough trademark search before seeking to register a new mark, there is a strong likelihood that their chosen mark will be similar or confusingly similar to a mark that has already been registered in their (or a similar) class of goods.

While the trademark register will assess the application according to its criteria for trademark registration, the onus falls on the trademark owner to identify and object to any attempted new registration that might infringe its existing rights through opposition procedure.

It is crucial that the opposition is formally submitted within the prescribed period.

Logos can be infringed too
If you have registered your logo as a trademark then you can also take action against any unauthorised use or misuse of that logo, however, caution should be taken by brand owners against possible negative PR issues in pursuing such a strategy.

Trademark infringement and litigious actions
Trademark owners don’t just need to monitor and act against infringing actions by third parties; they may also find that trademark infringement and passing off actions are brought against them too. This could be for a number of reasons; for example, they did not undertake a thorough trademark search before registering the mark or they have recently extended their use of the trade name into a new market or product area, in which a conflicting trademark registration already exists.

Trademark law
There are laid down rules at every national Trademark Act, which avails producers and owners with tools to protect their brand names. It is no doubt that brands are increasingly the tool that entrepreneurs use to communicate their business message. But beyond that, brand does more to include image enhancement, quality and some brands even represent a particular generation (lifestyle). Trademark law thus provides essential tools for companies as a shield against possible infringers. These tools enable brand owners to operate freely, so that their Intellectual Property can come to full maturity. It provides opportunities to take action against parties that infringe upon such rights or want to take advantage of your brand name and your efforts to be successful.

Our services under this subject covers:
- Trademark filing (new applications and renewals)
- Clients’ portfolio management
- Preliminary advice
- Conduct of clearance search at the Registry
- Takeover
- Recordals (Assignment, Merger, Change of Name / Address)
- Restoration
- Watch Services

If you would like to know more about strong and weak brands and why it is important to protect them, please contact us or Email: info@kellysip.com.

Our services covers
- Filing of new Patents / PCT Applications
- Attending to Annuities
- Portfolio Management
- Takeover
- Recordals (Assignment, Merger, Change of Name / Address)

What is a Patent?
Patent is a monopoly right granted by a national or regional patent office to an inventor who has created something new, useful and non-obvious; e.g. an innovation in the pharmaceutical sector that results in a new headache pill or a new technology used in computer hardware. Obtaining a patent to cover an invention or new technology enables its creator to prevent others from using, selling, manufacturing or otherwise copying the innovation without permission for a limited period (generally 20 years, subject to the payment of maintenance fees). In return, the patent owner discloses details of the innovation behind the invention as part of the patent application, thereby ensuring that the technology enters into the public domain where it can be used freely once the patent expires.

The idea of patent is to provide the patent owner a legal means to prevent others from exploiting the protected invention. It is also crucial for inventors to obtain a return on the investment in research and development that led to the creation of that new technology. In general, patents will also help to prompt further innovation in the sector, as rival companies seek to develop their own solutions or technology to retain their competitive edge.

What patent is not:
Patents do not protect an ‘idea’; it is the tangible description or realisation of that idea (e.g. drawings, prototypes or records of the research) that allows an idea to become an invention that is capable of protection. Only products or processes that contain or possess new functional or technical aspects can be patented. It can an entirely new product, an enhancement to an existing product or a new or improved process.
Similarly, an invention must fulfill certain criteria of patentability. This can differ according to the country or region in question but, in general, will include the need for the technology to be:

• ‘New’ – does the invention already exist (e.g. has it already been created by another inventor)? Has the inventor already disclosed the innovation (e.g. through publication) anywhere in the world before the application date. If so, it will not meet this criteria of novelty.
• Obtained as a result of the activity of invention (‘inventive step’) – this requirement will generally have been fulfilled if, when comparing the invention to what is already known, the innovation would not be obvious to someone with experience and knowledge of the subject matter of the invention.
• Capable of industrial application – the invention or new technology must be capable of being used in a current technical application, so that it can be made or used in some kind of industry, i.e. it must have a practical application.
• Most national patent systems also restrict or block from patenting, discoveries in certain areas; e.g. scientific theory and mathematical methods; computer programs as such; new animal or plant varieties; and methods of treatment and diagnosis.

Patents are territorial rights: their grant and enforcement and is governed by national laws and the rights conveyed varies from country-to-country. It’s not possible to register a ‘global’ patent right for an invention; however, you can file a national right and extend that right into other territories, subject to certain criteria and deadlines.

A patent is not a right to practice or use the protected invention; instead, it provides the right to exclude others from doing so. As such, the emphasis is on the patent owner to monitor for misuse and to enforce the right via infringement action where misuse is found.

A patent is an item of (intellectual) property and, like any other property right, may be sold, transferred, licensed, mortgaged, given away or simply abandoned.

Step 1: Is the invention patentable?
In order to obtain a patent, the invention has to fulfil a number of conditions of patentability. It must be new, inventive and capable of industrial application; in other words:

• The invention must not be publicly known, either in use or published, anywhere in the world (novelty);
• The invention, improvement or development must not be obvious to someone working in the same technical field, starting from the closest known technology (the prior art); and
• The invention or new technology must be capable of being used in an existing technical application, so that it can be made or used in some kind of industry, i.e. it must have a practical application.

To meet the standard of novelty, the invention must not already exist nor must the inventor have publicly disclosed it (e.g. via publication) prior to the date of the initial patent application. This requires inventors to uphold strict disclosure, confidentiality and secrecy practices, particularly if they work with external partners.

As part of the patent application and drafting process, your KellysIP consultant will generally undertake a patent search prior to filing any new application in order to identify any conflicting applications or prior publications (e.g. earlier patent applications, published scientific papers or publications in trade journals, etc). These results will indicate the likelihood of the new invention meeting the condition of novelty, i.e. is the technology or innovation for which protection is sought already in the public domain?

Step 2: Drafting and prosecuting the patent application
A patent is obtained by filing a written application at the relevant patent office. This includes a description of how to make and use the invention and must provide sufficient detail that another person knowledgeable in the field would be able to carry out the invention. It can also make use of the common knowledge in the field. Some countries have additional requirements, relating to how and what material needs to be provided. If in doubt, inventors should speak to a patent attorney or review the guidance available on national patent office websites.
After the application has been filed, it will be reviewed by examiners at the relevant patent office. The time that this will take does vary by country; however, once completed the inventor (or applicant) will either be granted the patent outright or, more likely, will receive a list of objections – or oppositions – that will need to be responded to before the patent will be approved for grant. This is known as (pre-grant) patent prosecution. Patent owners may also face post-grant oppositions, during which a third party may formally dispute the validity of a granted patent.

Once granted, a patent will be subject to maintenance fees (also known as renewal fees or annuities). These fees must be paid on a yearly basis in most countries in order to keep the patent in force.

Step 3: Extending patent protection into foreign markets
Patents are territorial rights: their grant and enforcement is governed by national laws and the rights conveyed can vary country-by-country. It’s not possible to register a ‘global’ patent right for an invention; however, you can extend a national right into other territories, subject to certain criteria and deadlines.
Patents are not static rights; they need regular review and maintenance if you are to maximise the value of your IP and retain a patent portfolio that is in line with your commercial aims. Broadly, patent portfolio management takes two forms:

• the regular payment of patent renewal fees (or annuities) which are necessary in most jurisdictions to maintain granted rights; and,
• the proactive management of patent portfolios (and the innovation and technology that the patents have been filed to protect), via regular auditing, title updates/recordals and other related services.

For further information about our Patent services, please contact us or Email: info@kellys-ip.com

Our services covers:

- Filing of new designs
- Attending to Renewals
- Preliminary advice
- Takeover

Designs Worthy of Protection
The success or not of a design is tied to its design. But, while considerable attention is often paid to the creative aspects of design, its legal protection does not receive the attention that it often deserves. This imbalance could impair your business's financial opportunities.

A design is not only an expression of creativity. It is also a critical aspect of a product that you want to make money from. To facilitate a healthy future for that product, it is important that its design is protected. Design is everywhere. Whether it is an innovative new coffee maker, the design of a new pram or the appearance and functionality of a new phone, the law protecting designs and models can offer a solution for the optimal protection of designs.

In practice, the importance of protecting designs, based on Industrial Designs law, is often underestimated. This is a pity because a lot of time and money is invested in the development of a unique and identifiable appearance. And it is precisely with your design right that you can increase return on investment.

Optimum protection is essential
As far as the development of a product is concerned, consideration is usually first given to the registration of the technical invention (by means of a patent) or protection of the design by means of copyright. Designs and models law can, however, offer excellent opportunities for protecting the unique design of a product. This will allow you to take action against third parties who introduce very similar products on the market. As an organisation it is therefore important to take the design of your products very seriously. The same applies to designs as for all other areas of Intellectual Property: you want your products to be recognisable and distinctive in the market and want to commercially exploit your product without anyone else being able to make off with your success. At a time when counterfeiting is rife, the optimal protection of the design of products is indispensable.

Designs and Models: What are they?
From a legal perspective, the protection of a product concerns the look (design) of a creation or a part thereof. This can include many characteristics, such as its colour, lines contours, the shape, the texture or the material. But, to be eligible for protection, a design has to be new and have its own individual character.

Design plays a leading role in a product’s recognisability and, therefore, success. It is a key characteristic of a product that can help you to distinguish yourself in the market. In most jurisdictions, two types of design can be protected under designs and models law: drawings and models.

Design Protection: specific criteria for the design
You are innovative and constantly invest in the development of new products. The ultimate success of your products is partly determined by their design. To be successful, it is important that the design of a product is optimally protected. Designs and models law can offer a solution.

To be eligible for protection, the design of the product must comply with a number of conditions. The design must be new and have an individual character.

The new and individual character criteria explained
’New’ in this case means that no identical drawing or model has previously been made available to the public.
The individual unique character is a slightly more complicated criterion. An individual character is established by the question whether a so-called informed user could distinguish between the new model and a similar model. In other words, would the so-called informed user confuse the design of the new product with one that has been previously made available to the public.

Assessing individual character
When assessing individual character from a legal perspective, you must also consider the degree of freedom that the designer has when developing the drawing or the model. The less freedom the designer has, the sooner there could be a new model with an individual character. The functionality of trousers or a chair, for example, is the same for everyone. The context is the same for everybody, so the distinguishing character has to lie in other specific elements.

For further information about our Designs services, please contact us or Email: info@kellys-ip.com

At a time when competition is increasing in most industries and from different countries, it is often the strength of the brand that determines the value of the organisation.

A brand is a ‘sign’ that distinguishes the goods or services of a company. In practice, almost all trademarks are registered as a brand name or symbol, such as a name and a logo. Brands are mainly used to differentiate the organisation and its products and services from the competition. Trademark law is a specific area of expertise in which it is important to know the rules of play.

Each country has its own specific rules. Alongside national trademark registers, European and international regulations in the field of trademark law are important. After all, if you are active outside your home country, it is essential that your trademark rights are well protected there too. In practice, there are several options open to you.

For further information about our Brand Development services, please contact us or Email: info@kellys-ip.com

Why do I need to pay renewal fees?
In most jurisdictions, renewal fees (or annuities) must be paid in order to keep granted patent rights in force, although the exact formalities and timeframes can vary country by country. For example, in some territories, such as the UK, patentees are required to pay an official fee on grant of a patent, followed by a renewal fee every year. For other rights, such as the European Patent (EP) right granted by the EPO, renewal fees are payable annually on pending applications, and then to the various patent offices post-grant. In the US, renewal fees are payable at 3.5, 7.5 and 11.5 years from grant. Missing a renewal deadline can have severe consequences; potentially resulting in the loss of a right.

For this reason, it’s generally advisable for companies with a portfolio of patent rights to employ the services of a specialist third-party to ensure that rights are renewed and maintained..

Portfolio management: why audit your portfolio?
Without regular audits of an active patent portfolio it can be easy to lose sight of the rights and innovation and technology that it contains. For example, are core patent rights and technology fully protected? Have the rights been correctly maintained (e.g. by registering any changes in address or other title updates?) Are you renewing patent rights for technology that you no longer need or use? Could any of those rights be licensed or sold for profit? A patent portfolio audit analyses the rights in your current portfolio, examining the strength of those rights and their usefulness to your business.

For further information about our Portfolio Management services, please contact us or Email: info@kellys-ip.com

For further information about our Preliminary Advice services, please contact us or Email: info@kellys-ip.com

For further information about our Takeover services, please contact us or Email: info@kellys-ip.com

For further information about our Recordals services, please contact us or Email: info@kellys-ip.com

For further information about our Restoration services, please contact us or Email: info@kellys-ip.com

For further information about our Watch Services, please contact us or Email: info@kellys-ip.com