What is real
is not external form.”
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.
As of July 2018, we are handling a case regarding the banking industry. Our client is a private equity US firm which has completed the acquisition of a subsidiary bank from a giant group in this field. They intend to rebrand the business and step by step to reach the objective to strengthen the Eastern ( learn more )
Shortly after the Brexit vote, its effects on the UKIPO (UK Intellectual Property Office) and EUIPO (European Union Intellectual Property Office) started to be noticed. The impact is going to be even bigger on some EU IP rights once the Brexit will actually be enforced, only if by that time no other arrangements will be ( learn more )
Wide known fact: When an owner has a pending trademark application is entitled to market goods and services bearing the brand that is still to be registered. However, he can meet the situation in which the registration could not go smoothly. For instance, if conflicts are arising with earlier marks, then the brand might not ( learn more )