What is real
is not external form.



CONSTANTIN BRANCUSI

Trademark portfolio development

20.06.2018


The extension of the number of new trademark registrations greatly reduces the chances for trademark owners to register trademarks that are both new and unique. So, what to do?

We currently assist one of our Clients along with its rebranding process and trademark portfolio development.

The Client, one of the most innovative online fitness platforms in Europe, crosses a whole process of rebranding and after that plans to develop its trademark portfolio in the United Kingdom, European Union, United States, Canada, South Africa, Australia, and Japan.

Many trademark owners are wondering how they could detect in time the perils threatening their IP capital from other brands … And that is the case of our Client too.

Usually, before a company launches a new brand, a new product or a new campaign, several naming possibilities are provided that, in general, contain the essence of the brand and are designed so that, if one of them cannot be registered, one can turn on one of the other alternatives.

Once the short list of names is ready, a preliminary search can be launched to eliminate proposed names that are not available or cannot be registered if they are too similar to other brands already registered. This avoids the cost of changing a brand if there is only one option provided by the company and the company has spent a lot of money on it.

To better understand the problem, here is a concrete example:

iSwatch against iWatch

When the American giant Apple filed an application for registration of the brand iWatch in the United States, he met a fierce opposition from the Swiss watch producer Swatch. The latter objected to the registration of the iWatch mark because it was too close to its ISWATCH mark and, since both marks were aimed at the same market, consumers could very easily have confused the two marks.

The UK Intellectual Property Office admitted Swatch’s opposition and forced Apple to change the name of its product to Apple Watch.

A simple basic search before choosing the name of iWatch would have allowed Apple to locate the brand iSwatch and the famous American company would have saved a lot of time and would have saved the costs of the name change.

18.09.2020

Class down, trademark up

Between August and September 2020, we faced a fairly common issue in the world of intellectual property. We have identified a similar trademark to that of one of our clients. The next step was contacting and starting the negotiation procedure with the opposing party in order to waive the protection of one of the classes, ( learn more )

14.09.2020

Registration criteria for slogans

Although many famous slogans enjoy incredible success, many others face the barrier of not being able to be registered. What could be the main reason why a short series of words cannot be registered? What is the definition of a slogan? Before finding out the reasons why certain slogans cannot be registered, we need to ( learn more )

08.09.2020

Readying your brand to go abroad

The internet’s boundless borders have paved the way for small businesses to become international. Businesses that operate online also maintain multiple platforms of operation, including a website and social media accounts, and thereby increasing visibility and access to both consumers and potential brand abusers alike. Having brand protection that spans borders and countries is becoming ( learn more )