1. Protecting your corporate identity,logos and designs in the Internet ageNiall Tierney, PartnerContego Intellectual Property, SolicitorsCopyright Niall Tierney 2012. All Rights Reserved.

2. My BackgroundSolicitor England and Wales.Barrister-at-Law Ireland.Registered Trade Mark Agent Ireland.European Trade Mark Attorney.European Design Attorney.Copyright Niall Tierney 2012. All Rights Reserved. 3. TopicsCopyright Niall Tierney 2012. All Rights Reserved. 4. Some MythsMy company registration gives me exclusive rights;My domain name registration gives me protection;I got there first with my name;I have copyright in my name;I can patent my name/logo.Copyright Niall Tierney 2012. All Rights Reserved. 5. Ways you can protectRely on un-registered (Common law) rights;Register my name and/or logo as a Trade Mark;Rely on copyright to stop others copying my logo;Register my logo as a Design;Register my product shapes and packaging as designs;Domain name registration;Register your Trade Marks as AdWords.Copyright Niall Tierney 2012. All Rights Reserved. 6. What is a Trade Mark A Trade Mark is a sign that distinguishes your goods and/or services from those of yourcompetitors. A Trade Mark can encompass anything from the brand name you use on your product,to logos, the shape of goods and the get up of packaging. The list of what may constitutea Trade Mark is not exhaustive. In some cases, it is possible to register smells, shapes and sounds as Trade Marks. A Trade Mark must be capable of being represented graphically.Copyright Niall Tierney 2012. All Rights Reserved. 7. Registering a Trade Mark in the UK In the UK, a Trade Mark registration is granted by the UK Intellectual PropertyOffice. Trade Mark protection in the UK can also be achieved by applying to register apan European (CTM) Trade Mark. A Trade Mark can be refused registration on the following grounds;Absolute Grounds;Relative Grounds; An unchallenged Trade Mark application will be registered within about four tosix months from filingCopyright Niall Tierney 2012. All Rights Reserved. 8. Types of Trade MarksShape Trade Mark Single Colour TradeMarkCopyright Niall Tierney 2012. All Rights Reserved. 9. Types of Trade MarkOlfactory Trade Mark Sound Trade MarkThe smell of fresh cut grass Sound Trade MarkCopyright Niall Tierney 2012. All Rights Reserved. 10. Absolute Grounds of Refusal of a TradeMark Trade Mark is not capable of distinguishing your goods and/or services from those of yourcompetitors; Is not capable of being represented graphically; It does not have distinctive character; It describes the goods and/or services for which registration is sought; It consists exclusively of the shape of the goods for which registration is sought; It consists exclusively of a shape which is functional; It consists exclusively of a shape which gives substantial value to the goods for which registration issought; It is contrary to accepted principles of morality or law; It deceives as to the nature, quality, or geographical origin of the goods and/or services for whichregistration is sought;Copyright Niall Tierney 2012. All Rights Reserved. 11. Relative Grounds of Refusal An application to register a Trade Mark can be challenged by the holder of an earlier identicalor similar Trade Mark that covers identical and/or similar goods and/or services. A Trade Mark will also be refused if the holder of an earlier reputable or distinctive TradeMark can show that use of the later Trade Mark, would, without due cause either:take unfair advantage of, orbe detrimental to the distinctive character or reputation of the earlier trade mark. A Trade Mark can also be refused if it clashes with an earlier unregistered right in thefollowing circumstances: There is goodwill/reputation under the earlier right in the United Kingdom; The Trade Mark being applied for will deceive consumers into believing that the goods/services forwhich registration is sought originate from or are endorsed authorised by the earlier right holder, and Use and registration of the filed Trade Mark will damage or is likely to damage the business goodwillunder the earlier right.Copyright Niall Tierney 2012. All Rights Reserved. 12. European (CTM) Trade MarkThe Community Trade Mark is a single Trade Mark registration that is effective andenforceable throughout the 27 Member States of the European Union. This means itis not necessary to seek registration of your Trade Mark in each EU Member State.A CTM is an all or nothing right. A CTM cannot be effective in some EU MemberStates and not others. However, it may be possible to convert a CTM intoapplications in EU Member States. These converted applications will retain the samedate of application as the CTM.A CTM lasts for an initial period of 10 years, but can be renewed indefinitely forfurther 10 year periods.Copyright Niall Tierney 2012. All Rights Reserved. 13. International Trade Mark Registration(Madrid Protocol) Allows Trade Mark owners to protect their Trade Marks on an international basis by filingone application with the World Intellectual Property Office (WIPO) in Geneva,Switzerland. A Madrid application must be based on a Trade Mark application or registration from thehome country of the applicant and it must be filed through the owners national orregional Intellectual Property Office. An applicant for a Madrid application simply has to designate the other countries of eitherthe Agreement or Protocol where protection of the Trade Mark is required. Designated countries have 18 months to notify WIPO of any objections to the applicationfor protection otherwise protection is automatically granted. The renewal, transfer and licence of an International registration can all be managed bymeans of submitting a single application with WIPO.Copyright Niall Tierney 2012. All Rights Reserved. 14. Trade Mark registration outside theUK Most countries maintain and run their own national Trade Mark registers. Some countries co-operate in running a single register, e.g. the BeneluxTrade Marks Register (Belgium, Luxembourg and the Netherlands). The majority of countries throughout the world are members of The ParisConvention 1883. This means that all Member States must treatapplications filed by non nationals in the same way as those filed by its ownnationals. In the European Union (EU), the criteria under which Trade Markapplications are examined have been the harmonised by the Trade MarksHarmonisation Directive 207/2009, e.g. a devoid of distinctive characterobjection can be raised in any EU Member State.Copyright Niall Tierney 2012. All Rights Reserved. 15. Enforcing a Trade Mark registration A Trade Mark registration gives its holder the exclusive right to use the Trade Mark inrelation to the goods and/or services for which it is registered in the territory where theTrade Mark is registered. A Trade Mark registration allows its holder to prevent the unauthorised use of:- An identical sign in relation to identical goods. An identical sign in relation to similar goods/services where use would give rise to a likelihood ofconfusion (including a likelihood of association). A similar sign in relation to identical and/or similar goods/services where use would give rise to alikelihood of confusion (including a likelihood of association). An identical and/or similar sign in relation to similar and/or dissimilar goods/services where use would,without due cause, take unfair advantage of, or be detrimental to, the distinctive character or reputationof the Trade Mark.Copyright Niall Tierney 2012. All Rights Reserved. 16. Un-registered rights Passing off In the United Kingdom, the holders of both registered and un-registered Trade Markscan seek protection under the Common law tort of Passing off. Passing off can be relied on if: A misrepresentation has been made in course of trade by another person to customers or prospectivecustomers of the aggrieved party. The misrepresentation is calculated to deceive others into thinking that the offending sign is that of theaggrieved party or is licensed/authorised by the aggrieved party. The misrepresentation is such that it has damaged, or is likely to damage, the goodwill/reputation thatthe aggrieved party enjoys under his name.Copyright Niall Tierney 2012. All Rights Reserved. 17. What is a design ? A design constitutes the appearance of the whole or part of a product which results fromfeatures such as lines, shape, contours, texture. A design can also include the materials of the product itself and/or its ornamentation. Product - Any industrial or handicraft item, including inter alia parts intended to beassembled into a complex product, including packaging, get-up, graphic symbols andtypographic typefaces, but excluding computer programs. A complex product is a product which is composed of multiple components which canbe replaced permitting disassembly and re-assembly of the productCopyright Niall Tierney 2012. All Rights Reserved. 18. Requirement for a valid designFor a design to be valid in Europe, it must:1. Be new, i.e. no identical design has been made available to the public:a. in the case of an un-registered design, before the date of claimed protection.b. in the case of a registered design, before the date of application for registration2. Have individual character, i.e. if the overall impression it produces on an informeduser is different to designs that are already known:a. in the case of an un-registered design, before the date of claimed protection.b. in the case of a registered design, before the date of application for registrationCopyright Niall Tierney 2012. All Rights Reserved. 19. Types of DesignsMotorcycle helmet Product packagingCopyright Niall Tierney 2012. All Rights Reserved. 20. Design Right - UK Design Right is unique to the United Kingdom. Design Right is a form of un-registered protection. Design Right gives automatic protection for the internal or external shape orconfiguration of an original design. Design Right does NOT provide protection for two dimensional designs such aspatterns. Design Right lasts from either: 15 years from the date of creation of the design, or 10 years from the date the design was first marketed.Copyright Niall Tierney 2012. All Rights Reserved. 21. European (RCD) Design An RCD is a unitary design registration that is effective and enforceable throughout the27 Member States of the European Union. The RCD Register is run and maintained by OHIM (aka the Trade Marks and DesignsRegistration Office of the European Union). An application to register an RCD is not examined to assess whether it meets the legalcriteria for registration. However, to avoid third party challenges, an RCD must bevalid. To be valid, an RCD must be novel and have individual character. An RCD can be registered for up to 25 years provided a renewal fee is paid every 5years.Copyright Niall Tierney 2012. All Rights Reserved. 22. European (RCD) Design contd/... An RCD gives its holder the exclusive right to use the design throughout the 27Member States of the European Union and to prevent its unauthorised use by thirdparties whether by deliberate copying or by independent creation of a similar design. It is possible to file multiple designs in one application. It is also possible to keep the RCD confidential for a period of up to 36 months from thedate of filing.Copyright Niall Tierney 2012. All Rights Reserved. 23. Country by Country DesignRegistrations As with Trade Marks, most countries throughout the world run and maintain their ownnational Design Registers. Some countries also offer limited un-registered protection for designs. To be protected in some countries, designs must have some aesthetic feature.Generally, functional designs are not capable of protection. To be registered, most countries require that a design must be new, although theinterpretation of this requirement varies from country to country. In some countries designs can also be protected under Copyright law, although certainqualifications may apply.Copyright Niall Tierney 2012. All Rights Reserved. 24. Enforcing my design The holder of a Registered Design has exclusive rights to use it throughout the relevantterritory and to prevent third parties from both deliberately copying and independentdevelopment of a design with the same overall impression. Protection of a Registered Design extends to all products, e.g. if your registration isregistered in respect of toys, you can prevent the use of a design of the same overallimpression on biscuits. The rights in a European Registered Design (RCD) can be enforced in any of thedesignated Design Courts throughout the European Union. The holder of an un-registered Design can only prevent the deliberate copying of theprotected design and protection only lasts for three years from when the design was firstmade available.Copyright Niall Tierney 2012. All Rights Reserved. 25. Licensing Trade Marks & Designs By licensing the use of its Intellectual Property Rights to other parties, a business cansecure an additional and regular source of income. Licensing of Intellectual Property may also facilitate increased market penetration. Registered Intellectual Property Rights are generally easier to license than un-registeredrights. Licences involving Intellectual Property should always be in writing. It is also possible for Intellectual Property rights to be sub-licensed. Intellectual Property licences can be exclusive or non-exclusive. Intellectual Property licences can also be Sole, i.e. only the Licensor (the IP owner) andthe Licensee can use the IP. Licenses involving Patents, Designs and Trade Marks can be recorded on the relevantIPR Registers. Failure to record a Licence may mean that the Licensees rights will not be recognised inthe event that the Licensor transfers the IPR to another party.Copyright Niall Tierney 2012. All Rights Reserved. 26. Internet useRegistration of a domain name as a Trade Mark.Disputes over Trade Marks and Domain Names.UDRP Procedure.Use of Trade Marks and Designs on the Internet.Banners & Metatags.Google AdWords.Copyright Niall Tierney 2012. All Rights Reserved. 27. Domain names and Trade Marks It is not possible to register a domain name address as a Trade Mark, e.g. www.primebroker.com. The TLD part of a domain name (.com or .uk) is considered devoid of distinctive character. It might be possible to register a domain name if it has added graphical features. No two domain names can be identical. e.g. it is not possible to have two separately ownedwww.nike.com domain names. Domain name registration is on a first come, first served basis. It has become common for others to register the trading name or trade mark of a well known companywhich is then offered back to the brand owner. Also common for people to register domain names which are similar to well known brands/trade marksin order to attract attention to a website this activity is better known as Cyber-squatting.Copyright Niall Tierney 2012. All Rights Reserved. 28. Disputes over domain names andTrade Marks Disputes over .com and .net domain names are heard by ICANN (Internet Corporation forAssigned Names) under the Uniform Dispute Resolution Policy Procedure (UDRP); Disputes concerning ownership of .co.uk or any .uk domains are heard by Nominet; Some countries like Ireland (.ie) have adopted the UDRP procedure to deal with disputesover their own ccTLD domain names; Disputes can also be heard in court,e.g. BT v One in a Million (1999); Potentially the registration of a domain which clashes with an earlier registered Trade Markmay give rise to a claim of Trade Mark infringement; Where the domain name is identical to the earlier Trade Mark, the owner of the earlierTrade Mark will need to show that the goods/services supplied under the domain name areidentical to those covered by the Trade Mark registration.Copyright Niall Tierney 2012. All Rights Reserved. 29. Disputes over domain names andTrade Marks The best known case involving a dispute over domain names was BT v One in a Million (1990). One in a Million had registered numerous domain names which were virtually identical to theTrade Marks of a number of well known companies, e.g. BT and Marks & Spencer. One in a Million then offered to sell the domain names back to the owners of the TradeMarks. Court held that One in a Million had created instruments of fraud. Mere registration and maintenance in force of a domain name which leads people to think it isconnected with somebody elses trade mark will be considered an instrument of fraud.Copyright Niall Tierney 2012. All Rights Reserved. 30. UDRP ProcedureUsed by World Intellectual Property Organisation (WIPO)..com or .net domain names can be cancelled where:1. identical or confusingly similar to a trademark or service mark in which the TMowner has rights;2. Domain name registrant has no legitimate rights in the domain name;3. Domain name has been registered and is used in bad faith, namely:a. Acquiring the domain name for the purpose of selling, renting or otherwise transferring to the owner of the earlier trademark;a. Preventing the owner of the trade mark from using it as part of a corresponding domain name;a. Registering the domain name for the purpose of disrupting the business of a competitor;a. Using the domain name to attract business away from the website of the Trade Mark owner.Copyright Niall Tierney 2012. All Rights Reserved. 31. Use of a Trade Mark on theInternet Protection of Trade Marks and Designs are limited to the geographical territory where protection hasbeen obtained. UK or European (CTM) Trade Marks cannot be used to stop use of an identical or similar Trade Marksay, in Australia. The mere fact that websites can be accessed anywhere in the world does not mean, for trade markpurposes, that the websites are used everywhere in the world. Crate & Barrel case An American owner of a UK and European (CTM) was unable to stop use of anidentical sign by an Irish based website as it could not show use in the UK. Euromarket case defendant had deliberately targeted UK market through his Hong Kong based websitewhich was in English. Also currency for paying was GB Sterling. Court held there was infringement. If you wish to deliberately attract non-UK business from a UK based website, it is wise to run a TradeMark search in the target country to ensure you do not infringe any domestic Trade MarksCopyright Niall Tierney 2012. All Rights Reserved. 32. Banners and Metatags Reed Executive vReed Business Information caseDefendant used the word Reed in the following ways: metatags leading to their totaljobs.com website; in banner advertising on search engine home pages linking to their totaljobs.comwebsiteCourt held neither use infringed Reed Executives Trade Mark registration for REED because:1. There was no visible appearance of the word REED in the banner advert2. Even if use of a word as a metatag was deemed to be trade mark use, there would be noinfringement in the absence of consumer confusion.Causing a site to appear in a search result does not necessarily suggest any connection withsomebody else.Copyright Niall Tierney 2012. All Rights Reserved. 33. Google AdWords Google AdWords allows advertisers to buy keywords which has the effect of promoting themselvesin Google searches. The same keyword can be purchased by any number of parties. In a recent case Marks & Spencer purchased Interflora as a keyword. Search for the word Interflora resulted in a sponsored link to the M&S website that sells flowers; Court held use of an AdWord only infringes if it has an adverse effect on the function of anothers trademark, i.e. to guarantee the origin or quality of the trade mark owners goods/services. Given that Interflora is so well known, most consumers would have realised that there was noconnection between Marks & Spencer and Interflora. Marks & Spencer case has now gone back to English High Court for final determination.Copyright Niall Tierney 2012. All Rights Reserved. 34. Summary & Tips Always register your domain name as a Trade Mark; A Trade Mark registration will assist you in preventing others from registeringconfusingly similar Domain Names; Register your most important Trade Marks as a Domain Names; Register your most important Trade Mark as an AdWord; If you have a UK based website that actively targets customers in another country,always check to see if nobody else in that country has an identical or confusingly similarTrade Mark; If nobody else in your target markets are using or have registered Trade Marks whichare identical or confusingly similar to yours, register your Trade Mark in that newmarket.Copyright Niall Tierney 2012. All Rights Reserved. 35. Useful links & information UK Intellectual Property Office European Trade Marks and Designs Office World Intellectual Property Office Nominet UDRPCopyright Niall Tierney 2012. All Rights Reserved. 36. Thank youANY QUESTIONS?Copyright Niall Tierney 2012. All Rights Reserved.