It’s been a successful year so far for Bison Rivers with a refreshing increase in interest in protecting trademarks and designs from new and existing clients. Contentious work continues at the forefront of our work, with some welcome changes to the format of Witness Statements in proof of use requirements in the UK, which reduces the burden on Opponents.  

You may receive official looking requests for payment from various unrelated agencies who charge very high rates to renew trademarks, often long before they are due for renewal. Frankly, this is bit of a scam!

If you have instructed Bison Rivers to deal with your trademarks then the only requests for payment relating to any stage of your application or a trademark renewal will come from us.

Trademarks have to be renewed every 10 years. We will send you an invitation setting out the renewal fees 3 months in advance of the deadline. An important part of maintaining the rights in a brand is to review the extent of coverage you have of your trademarks and designs. As part and parcel of the services we provide we will review the protection you have to ensure it is relevant to your current situation.

If you receive unsolicited mail of this nature and have any queries about it then please send it to us and we will advise you accordingly.

This month, as part of our ongoing feature, we are considering Succession for Companies and Groups of Individuals.

When you start a business where do you envisage it ending up? Many businesses are developed with the principle aim of selling, when the time is right. Family businesses, on the other hand, may remain for generations under the control of various family members.

Succession is something that needs to be considered regularly and plans made to ensure that the business is protected for the future.

If a company is sold, the IP rights in its trademarks will generally pass to a new owner as part of the sale. The transfer requires a formal assignment of the rights and the transfer should be recorded on the UK and Community Trademarks Registers within 6 months, in order to ensure that the rights in the marks can be implemented and are not damaged.

If a group of individuals owns the trademarks then consideration needs to be given to what will happen if one or more people leave the business. A written agreement signed by all of the owners should be in place as soon as possible after the business starts trading. We strongly recommend that any agreement should be professionally drawn up. All too often disputes arise over who owns what in a business that turns sour, or an individual unexpectedly dies. A solid agreement can prevent argument and provide a clear resolution to disputes.

Next month we will be looking at Succession where a Company appoints a liquidator.

As businesses develop it is important to review regularly the protection you have for your trademarks. The style of mark that is protected evolves and significant changes can leave a trademark owner In the position of not being able to implement rights in their trademarks.

It helps us to advise you if we are up to date with the developments in your business. We are offering a free review of your trademarks throughout March and April.

Call us on 01223 208 600 to arrange a convenient time to meet or talk, or email enquiries@bison-rivers.com to arrange a call back.

In 2001 Shenzen Proview and Proview Electronic Co. Ltd registered IPAD as a trademark in a number of countries including China for computers and associated goods. In 2009, Taiwan Proview assigned the “iPad” trademarks to Apple in various countries including China.

The head of the legal department for Proview Electronic Co and Shenzen Proview was the same person. Acting on power of attorney from Taiwan Proview the head of the legal department executed the assignment on their behalf. The assignment between Taiwan Proview and Apple is not legally binding on Shenzen Proview as there was no evidence that the head of the legal department was acting on behalf of Shenzen Proview.

The court held that Shenzen Proview is the rightful owner of the trademarks. Subsequently various claims have been lodged against Apple and its distributors in China. Amazon, www.gome.cn, www.suning.cn and www.360buy.com have seemingly stopped selling iPads in China because making these goods available in China can be an infringing act. Shenzen Proview has filed a request to prevent iPads being imported or exported and customs may seize Apple’s iPads.

Apple has appealed to the High Court but it is widely anticipated that a settlement will be reached.

We are also preparing for and looking forward to another year of working with the International Trademark Association’s Young Practitioner Committee, supporting up and coming IP professionals.

It is fundamental that the ownership of trademark rights is sorted out in order to protect the trademark assets as well as their owners. The name that appears on the register will be that of the trademark owner and any contentious matters relating to the trademark will generally need to be initiated or defended by the owner. There are different types of trademarks that certify standards or are used by a collective group. Careful consideration therefore needs to be given to identify who, or which entity, should own the rights.

Who can own a trademark?

• A company;
• A company, which holds and administers the assets but is separate from the trading entity;
• A partnership;
• A charity;
• An association whose members use the same trademark to distinguishes their goods and services from those of other undertakings (collective trademarks);
• An organisation whose members use  a trademark for goods and services that are certified by the owner of the mark to be of a certain quality or standard (certification trademarks);
• An individual, or group of individuals.

Next month we will be looking at “Succession”.

v HELLA

In a dispute over a Community Trademark Application for “HELL” for energy drinks by Slovakian company HELL ENERGY Magyarország Kft. the owner of the earlier trademark HELLA successfully opposed its registration. In an appeal, the General Court wouldn’t swallow the argument that the consumers of the HELL energy drinks were by and large teenagers, more receptive to the purported effects of the non-alcoholic energy drinks and were more attentive in distinguishing the marks at issue. Being ‘hip’, ‘cool’  and ‘partygoers’ doesn’t seemingly assist in distinguishing between brands and the Court found there was likelihood of confusion on the part of the public in the EU.

Call us on 01223 208 600 to arrange a convenient time to meet or talk, or email enquiries@bison-rivers.com to arrange a call back.