Lisa Jarrett

31 July 2008

BRAND PROTECTION

What Is Your Brand?

• Entire Business Operations

• Specific products or services

• Company Names / Business Names

- No property rights Apple Inc.

Overview - Agenda

• Business Names

• Company Names

• Trade Marks

• Domain Names

• Dealing With These Rights

• Branding Scams

Business Names

• State and Territory legislation requires registration of business names other than your company or personal name

• Failure to register your trading name is an offence in South Australia

Business Names - Registration

• Requirements:

- no identical or similar business name

- no offensive words, phrases or names

- if identical to a company name - only registrable by that company and cannot be transferred

• No proprietary or enforceable rights

Company Names

• No proprietary rights

• Advantages:

- Limitation of liability

- Ability to trade under the company name

• Disadvantages:

- Compliance with the Corporations Act

- Dilution of control

Company Names - Registration

• ASIC registration

- Allows you to trade without additional business name registration – need to use “Pty Ltd” or “Ltd”, as appropriate

- Any other trading names used must be registered as a business name

- Does not prevent registration of similar company names

Trade Marks - Registration

• Ownership of your brand

- Exclusive use

- Prevention of use by others

- Legal recourse against infringement

• Broader protection than a common law mark

Trade Marks - Registration

• Must currently use or intend to use the mark in the future

• The trade mark must:

- Be capable of distinguishing your goods / services

- Not be likely to deceive or confuse

- Not be substantially identical or deceptively similar to an existing trade mark registration or application in respect of similar goods / services

Trade Marks - Protection

• Exclusive rights only in respect of specific goods and services

• Infringement occurs when a person uses a mark which is:

- substantially identical with, or deceptively similar to your mark; and

- in relation to identical goods and services; or

- in relation to closely related goods and services

Trade Marks – Words and Logos

• Word marks may constitute a single word or a phrase

• Logos are generally pictures or devices which may incorporate words

• Word marks afford broader protection over the actual name

“COKE” “NIKE”

Trade Marks – ® and ™• There is no legal requirement to use either symbol

• ® can only be used in reference to registered trade marks - s 151 of the Trade Marks Act

• ™ can be used in relation to any sign, registered or not

• Common law trade marks can be established by acquiring a reputation in a brand through use, however:

- Less protection than registered marks

- Other persons can register identical or similar marks

Trade Marks

• Registration grants proprietary rights for 10 years

• Can be indefinitely renewed for further 10 year periods

• Trade mark registration:

- will not prevent initial registration of company or business names similar to your brand

- will allow you to prevent such a company actually trading under that name

HANDS OFF!!!

Trade Marks

• It is important to:

- Use your brand, as trade marks can become vulnerable to removal for non-use

- Update your registration to keep pace with any expansion of your products or services

USE IT OR LOSE IT! - Remember: Registration must be sought country-by-country

Domain Names

• Businesses use websites for numerous purposes

• Benefits of establishing a domain name: .net

- Improved recognition .com.au .org .us

- Increasing exposure http://www.apple.com

- Brand reinforcement .net.au .info .com

- Prevention of cybersquatting and trade mark infringement

Domain Names

• Registration does not:

- confer rights against persons who register identical or similar names (eg. “.com” and “.com.au”)

- protect you against infringement of a registered trade mark which contains the “base” of your domain name

www.nike.com

Dealing with these rights

• You can infringe a mark even if you have registered that word or phrase as a business, company or domain name

• A trade mark does not protect against use of a similar sign by a person:

- Using their own name in good faith

- Using the sign in good faith to describe their goods

- Who has continuously used the sign before either your registration, or your use of the mark

• Trade marks must also be registered as a business name for you to carry on business under that brand name

Branding Scams – Domain Names

• Typically unsolicited emails or invoices

• Recent scams claim to originate from Asian-based domain name companies such as:

- “West Technology Limited”

- “Asia Network”

- “Century Net Group Stock Limited”

Branding Scams – Domain Names

• There is no such thing as an “Internet Trademark”

• Domain names are registered on a “first come, first served” basis

• Such scams should be ignored

Branding Scams – Trade Marks

• Typically overseas companies sending “invoices” for international registration of a mark

• Examples of known scammers:

- “Globus Edition SL” from Spain

- “IT & TAG” from Switzerland

- “TM Collection LLC” from Hungary

• These companies do not provide official registration or rights in any country

Conclusions

• You can best protect your brand by registering:

- a business or company name reflecting your brand

- all trade mark(s) relevant to your brand for any goods / services which you trade or intend to trade

- relevant domain name(s)

Peter Campbell

ACTIVE BRAND PROTECTION

Overview

• Using Your Brand

• Monitoring Your Brand Online

• Options to Pursue Infringers

- Trade Mark Oppositions

- Online Infringements

Using Your Brand

• Once registered, you must use your trade mark as registered

• Trade marks can become vulnerable to removal for non-use

• Use the ® sign for registered marks

• Use the ™ sign for unregistered marks

The “Barefoot” Case

Active Brand Protection

• Registration of a trade mark is not enough in itself

• Active monitoring of your brand is just as important

Online Monitoring

• It is useful to monitor blogs or websites which relate to your industry to:

- ensure that inaccurate or misleading information is not posted about your brand

- identify new brands which may be similar to yours

• Trade mark monitoring services are designed to assist with “active” protection of brands

Options to Pursue Infringers

• Letters of Demand

• Trade Mark Oppositions

• Litigation for:

- Infringement

- Misleading or Deceptive Conduct

- Passing Off

- UDNDRP – Domain Names

Options to Pursue Infringers

• Letters of Demand:

- Regularly sent to third parties in respect of potentially infringing use of brands, in particular new trade mark applications.

• Litigation:

- This is only pursued as a last resort if letters of demand or trade mark oppositions are unsuccessful.

Trade Mark Oppositions

• Opposition allows a person to persuade the Registrar that a specific mark should not be registered

• Opposition must occur within three months of the day on which acceptance of the application was advertised in the Official journal

• Opposition must be based on one or more of the specific grounds allowable under the Trade Marks Act

Trade Mark Opposition - Grounds

• Any ground on which an application for registration may be rejected – s 57

• The Applicant is not the owner of the mark – s 58

• The Opponent has prior use of a similar mark – s 58A

• The Applicant does not intend to use the mark – s 59

• Use of the mark may confuse or deceive because of another mark with a reputation in Australia – s 60

• The mark contains or consists of a false geographical indication – s 61

Trade Mark Opposition - Grounds

• Improper amendment or acceptance on the basis of submissions false in material particulars – s 62

• The application was made in bad faith – s 62A

Trade Mark Oppositions – Procedure

• Notice of Opposition

• Evidence in answer

• Evidence in reply

• Hearing (optional)

• Decisions of the Registrar may be appealed to the Federal Court by either party

Online Infringements

• Brands can also be infringed online

• Many ISPs offer procedures to take down infringing content

Online Infringements - YouTube

• YouTube has a notification procedure regarding infringing content

• If YouTube is satisfied that there is infringement they may remove the content without prior notice

• The alleged offender may submit counter-notice

Online Infringements - MySpace

• MySpace.com may delete any content that it considers violates its Terms of Use

• MySpace.com requires the same notification procedure as YouTube

• No provision for counter-notice, nor a removal timeframe

Online Infringements - eBay

• The “Verified Rights Owner (VeRO) Program” allows IP owners to report alleged infringements of their rights

• Example:

- Client’s trade mark being used as a store name

- Notification to eBay

- Store name required to be removed within 5 days, or the account would be deactivated

Luke Dale

31 July 2008

Online Brand Protection

Domain Names

www.kellyco.com.au

Domain name types

• Domain names may be registered in global top level domains (“gTLDs”) or country-specific TLDs (“ccTLDs”)

• An Australian ccTLD (.au) may target Australian customers more effectively than a gTLD

.com .info

.mobi .com.au .net .net.au .org .us

“.au” Eligibility Requirements

• Australian

• Company/trading name, organisation or association name or trade mark

• Or otherwise closely and substantially connected to the registrant

.au

New “.asia” domain

• New sponsored gTLD for the Asia/Australia/Pacific region

• May improve customer service across region and enhance efforts to expand into the region

• Applications processed on a First Come First Served basis

• Registration, use and dispute resolution policies

New top level domains

• ICANN is a not-for-profit organisation that regulates Internet domain names

• ICANN will allow businesses to register new top-level domains (“TLDs”) by 2009

• ICANN will create a new dispute resolution process for objections to new TLD registrations

• Expected to be expensive

• Non-Roman characters will be available

Protecting Your Domain Name

Cybersquatting

• Registering internet domain names similar to the brands of well known companies

• Intending to sell registration to the company or others at a premium

• Can cause loss or diversion of customers

Uniform Domain Name

Dispute Resolution Policy

• Legal framework for the resolution of domain name disputes• Complaints must satisfy:

• Domain name identical or similar to trade mark• Registrant has no legitimate interests in domain name• Registered and used in bad faith

• UDNDRP gives examples which indicate bad faith• Complaints made to WIPO or other approved provider

auDRP

• Modified version of UDNDRP which takes into account “.au”-specific policies

• Main alterations:

• Complainants are required to establish eligibility

• Applies to cybersquatters registering business names

• Registration or use in bad faith is sufficient

Legal proceedings

• Alternative to administrative procedures

• Less expeditious and more expensive option

• Main causes of action available

• Trade mark infringement

• “Passing off”

• Misleading and deceptive conduct

Trade Mark InfringementBy A Domain Name

• An action must satisfy usual requirements

• Registering a domain name containing a registered trade mark will not, without more, constitute use as a trade mark

• Injunctions may be granted for threatened use that is calculated to infringe

• Use of trade mark for the purpose of making domain names more valuable may constitute infringement

Passing Off

• Deceptively misappropriating a trader’s reputation/goodwill

• False representation

• Suggestion of affiliation or sponsorship

• Therefore deceived or confused consumers

• Thereby caused damage to the trader

British Telecommunications plc & Others v One in a Million Ltd (1998) 42 IPR 289

• Passing off and trade mark infringement • Against several major UK companies• False representation amounted to passing off• Cybersquatting• Trade marks were infringed• Court ordered injunction to prevent the threatened infringement• Registrant restrained from use of domain names and ordered to relinquish them

CSR Ltd v Resource Capital

Australia Pty Ltd

• RCA registered domain names

• Anyone would assume that CSR was owner of domain

• Constituted misleading and deceptive conduct

• Not sufficient to constitute trade mark infringement

Establishing A Strong Internet Presence:

Search Engines

Implications for your brand

• Creating a more prominent brand

• Makes your brand more accessible

• Puts your brand at the forefront of consumer’s thoughts

Sponsored Links

• Additional search results presented distinctly

• Attains prominence without achieving a high ranking

• “pay per-click” basis

• Ranking determined by auction-type process

• Effective in increasing a webpage’s traffic

• Web services companies assist sponsored links use

• Google Adwords

Meta Tags

• Page description, keywords and other information

• Used by some search engines to classify web pages and rank search results

• Decreasing effect on search results

• Using a competitor’s trade mark in your meta tags may amount to trade mark infringement

• Provides ability to control how a website is described by some search engines

Sponsored Links

Online Risks

Phishing

• Attempting to acquire information via electronic communication by fraudulently purporting to be a trustworthy entity

• Can result in financial loss and damage to brand reputation

Domain Tasting

• Using the five day “grace period” to test a domain name’s marketability

• Exploited by registering and deleting numerous domain names within the grace period

• Registrants profit by displaying advertisements

• “Domain Kiting” involves cancelling within the grace period and immediately re-registering

Domain Tasting

• Using the five day “grace period” to test a domain name’s marketability

• Exploited by registering and deleting numerous domain names within the grace period

• Registrants profit by displaying advertisements

• “Domain Kiting” involves cancelling within the grace period and immediately re-registering

Growing Brands in the Digital AgeJohn ChaplinGavin Klose

The world has changed

US Media Consumption and Spending, 2007

Onlinemedia

consumption

39%

Online advertising

spend

3%

Internet & American Life Project, Pew, Dec 2002

47% 38%

Find it hardest to give up TV

Find it hardest to give up internet

Internet & American Life Project, Pew, Dec 2007

Find it hardest to give up TV

43%

Find it hardest to give up internet

45%

Use

Love

Fail

Find

Brand

Love

Fix

Find Use

We believe in making a difference

http://www.virgin.com/AboutVirgin/WhatWeAreAbout/WhatWeAreAbout.aspx

Bank of America

Apple

Love

Fix

Find Use

Trust in Advertising, Nieslen, Oct 2007

Trustrecommendations

78%

Trustadvertisements

14%

tripadvisor.com

Love

Fix

Find Use

Love

Fix

Find Use

Fix

amazon.com

QANTAS

Jet BlueJet Blue

SPW

Growing Brands in the Digital Age

Use LoveFind Fix

fusion.com.au

Luke Dale

31 July 2008

BRAVE NEW WORLD:

Businesses & the Web 2.0 Environment

Web 2.0

What is Web 2.0?

• Creating applications and services based upon the unique features of the Internet

• Using Internet-based technologies and web design to:

• enhance and develop collaboration amongst users

• increase creativity

• enhance information sharing

Virtual Worlds

What is a “Virtual World”?

• 3-D, computer based simulation of real world

Example

• Google’s “Lively” - recently launched

• Cross-compatible with Web 2.0 applications

• Avatars

Second Life

• Created by Linden Lab

• Unique economic, cultural aspects

Picture Copyright 2008, Linden Research, Inc. All Rights Reserved

Picture Copyright 2008, Linden Research, Inc. All Rights Reserved

Picture Copyright 2008, Linden Research, Inc. All Rights Reserved

Picture Copyright 2008, Linden Research, Inc. All Rights Reserved

Picture Copyright © 2007 New Business Horizons Ltd

Picture Copyright © 2007 New Business Horizons Ltd

Picture Copyright 2008, Linden Research, Inc. All Rights Reserved

Picture Copyright 2008, Linden Research, Inc. All Rights Reserved

Picture Copyright © 2007 New Business Horizons Ltd

Picture Copyright © 2007 New Business Horizons Ltd

Second Life & Intellectual Property Rights

• Terms of Service grant intellectual property rights to users

• Platform of choice for a virtual world presence

• Australian participants – SBS, ABC, Telstra, UniSA

• Global brand owners

Picture © 2008 CNET Networks, Inc. All rights reserved.

Picture © 2008 CNET Networks, Inc. All rights reserved.

Picture © 2008 CNET Networks, Inc. All rights reserved.

Picture © 2008 CNET Networks, Inc. All rights reserved.

Picture © 2008 CNET Networks, Inc. All rights reserved.

Picture © 2008 CNET Networks, Inc. All rights reserved.

Picture Copyright © 2007 New Business Horizons Ltd

Pictures Copyright © 2007 New Business Horizons Ltd

Picture © 2008 CNET Networks, Inc. All rights reserved.

Picture Copyright © 2007 New Business Horizons LtdPicture © 2008 CNET Networks, Inc. All rights reserved.

Picture Copyright © 2007 New Business Horizons Ltd

Picture Copyright © 2007 New Business Horizons Ltd

Picture Copyright © 2007 New Business Horizons Ltd

Picture Copyright © 2007 New Business Horizons Ltd

Second Life Economy

• In-world currency: L$

• real-world $ → L$

• L$ →US$ (LindeX) (L$266 ≈ US$1)

• Intellectual property rights expansion of Second Life economy

• Estimated GDP 2007: US$700 million

• 4th quarter, FY07/08 – L$27 million traded on LindeX

Business Opportunities in Second Life

• Unlimited

• Marketing/promotional activities

• events/activities at Second Life presence

• e.g. promote real product/brand

• in-world advertisements

• Revenue-generating activities

• Anshe Chung

Business Opportunities in Second Life

• After-sales service & product research

• e.g. Cisco Systems’ virtual hospital

• Traditional business purposes

• Second Life Grid – meetings, training, simulations, recruitment, distance education, etc

Pictures © 2008 CNET Networks, Inc. All rights reserved.

Presence in Virtual Worlds – Issues & Risks

• Control difficulties

• Currency devaluation

• Terms of Service & administrator actions

• Intellectual property issues

• unauthorised infringement – difficult to address

• notify administrators

• infringement of third party rights

Using Web 2.0 Technology to

Promote Business

Web 2.0 & Promoting Your Business

• Social networking sites

• Terms of Use

• Example: MySpace

• Promotional purposes ok; commercial use prohibited

• Uploaded content - licence granted to MySpace

• Warranties

• regular IP audits

Using Web 2.0 Content in Business

Using Third Party Web 2.0 Content in Your Business

• Terms of Use

• Example: Wikipedia

• Text

• Use & reproduction ok if GNU Free Documentation Licence/additional terms complied with

• Reproduction vs. combination with businesses own content – different requirements

• Modified content – available to the public

• Images

• made available under different licences – review terms

Conducting a Web 2.0 Business

Conducting a Web 2.0 Business

• Terms of Use

• eligibility requirements

• fees

• permitted uses

• intellectual property

• privacy

• Third party rights

Kelly&Co.Rob KennettLisa JarrettPeter CampbellLuke Dale

kellyco.com.au

FusionJohn ChaplinGavin Klose

fusion.com.au