Month: August 2022

The unprecedented hype in NFTs has opened the gate for several promising opportunities and serious considerations for the real-world trade mark owner.

 

When digital creators create an NFT (known as minting) that replicates real-world products or businesses, an infringement issue arises. The recent example of Hermè’s action against Mason Rothschild regarding the “MetaBirkin” NFTs depicting the images of Hermès’ iconic Birkin bag.

 

THE NFT SAGA
NFT is a non-fungible token, meaning it can neither be replaced nor interchanged because it has unique properties. It can have one official owner at any given time and can be used for any purpose, such as digital artwork, gaming, or a logo of any digital brand.

 

NFT is minted through `smart contract` programming, which defines the ownership rights associated with it. The smart contract is then etched into the public ledger for viewers.

 

HOW CAN NFT INFRINGE A TRADEMARK?

An NFT may feature a mark or sign similar to a registered trademark, as noted in Hermès v. MetaBirkins. It is now the biggest challenge for the NFT marketplaces that facilitate the trading of NFTs to avoid exposure to liability for trademark infringement.

 

Expansion of technologies and innovations is always challenging for the law to accommodate. Simply purchasing an NFT may not transfer trademark rights unless the smart contract has such a term. To make NFT an asset, both seller and buyer must incorporate all the essential terms in the smart contract.

 

THE JURISDICTION AND ENFORCEMENT ISSUE

The evolution and development of NFT is a challenge to the UK’s existing IP law. If NFT is traded on social media or any peer-to-peer platform with no specific target market, it may be challenging to qualify the phrase `use in the UK` to determine the target user.

 

The best solution is that the trademark owners should consider enforcing their rights in the NFT space and actively monitor infringement.

 

Brands popularly use trademarks to protect identifiers of their businesses, such as logos, catchphrases, and names. Once an element is protected under a trademark, competitors are prevented from using identical or similar elements in the same business.

 

Now, as with almost every legal principle, there is an exception to this rule. For example, in some situations, unauthorised use of a registered trademark would not be considered an infringement. One such situation is where unauthorised use is deemed ‘fair use.’

 

What is Trademark Fair Use?
Trademark fair use is the principle that the ownership of a trademark does not prevent others from using the trademarked word/symbol within its plain and ordinary meaning. To understand this principle better, consider some trademarks based on words and symbols commonly used in communication. An example of such a trademark would be ‘Apple.’ While Apple is undoubtedly a trademark of the company Apple Inc, it also refers to a popular fruit.

 

Thus, using the word ‘apple’ by a competitor of Apple Inc would not be an infringement if it is in the context of the word’s ordinary meaning.

 

Categories of Trademark Fair Use

 

There are two classes of trademark fair use: descriptive and normative.

 

1. Descriptive Fair Use

This category refers to a situation where one party uses another’s trademark to describe their products or services. This typically occurs when the trademark in question has a descriptive meaning removed from its use as a trademark. For instance, in one case, Pinstrip Inc used the word ‘pin’ to describe a feature that allowed you to pin locations on a map even though the word was a registered trademark of Pinterest Inc. However, the court decided that the trademark was used in a descriptive sense and was therefore fair use.

 

2. Normative Fair Use

This is the use of another party’s trademark to refer to the goods and services of that party. Normative fair use can occur when comparing products or indicating some fact about a product. For instance, a repair shop indicating that it repairs ‘Toyota cars’ may not be considered an infringement of the trademark ‘Toyota.’

 

In conclusion, the fair use doctrine of trademarks is necessary to ensure necessary, reasonable and good-faith uses of trademarked words/symbols are not indiscriminately regarded as infringements.

 

A trademark is basically a mark that gives uniqueness to one’s business. It is registered for a particular business. Any unauthorised usage of the trademark is seen to be a trademark infringement. There can be confusion between two or more businesses because of similar trademarks. Thus, it is quite necessary to maintain the originality of the brand and have regulations for the protection of the same. The court has the right to put an end to the duplicate trademark when they find out about the infringement.

 

In the United Kingdom, trademarks are protected under the Trademark Act 1994. Infringement of trademark according to the act:

• Section 10(1) – it is considered trademark infringement when the mark is used with a little modification and is similar to the goods and services of the authorised trademark.
• Section 10(2)(a) & (b) – a person infringes the trademark when an unofficial third party uses the trademark, which can create quite a misunderstanding with consumers of the original trademark.
• Section 10(3) – the third party, while using the registered trademark of another, gains profit from it, then the party will be liable for further legal actions.

 

 

Establishing the fact that a trademark is infringed can be done by proving the following in a court of law:

 

• The owner of the trademark is required to show that his mark has a reputation in the UK.

 

• The unauthorized usage gives an unfair advantage to the other party. Unfair advantage refers to gaining profit because of the similarity of the registered trademark which has a good reputation in the market.

 

• The registered trademark has a damaging reputation because of unauthorized usage by the other party.

 

In conclusion, it is important to register the trademark before establishing the brand.  Once you have a good reputation for your business for particular goods or services, the trademark can be infringed easily. Protection of your brand is a must. Infringement happens in almost every part of the world but how it is dealt with is important. UK law helps secure the mark against any unauthorized usage which results in a loss for the reputed brand.

When the term “proof of use,” is used, it means the evidence that shows how you are using your trademark in commerce for your goods and services in the market. Proof of use is basically used during the filing of your process of trademark registration.

 

Where is proof of use required?
There are different stages where proof of use is required during the procedure of trademark registration.

 

1. Submitting a Use-Based Application – This application is intended for applicants who are already using the mark in commerce. Applicants can provide invoices, screenshots, tax records, brochures, etc. as proof of use.

 

2. Filing an Amendment to an Alleged Use Application – An amendment to an alleged use application is a document that proves your use of a trademark in commerce. The alleged use was filed after the intent to use the application. The requirement of this application is that it can only be filed before the completion of the review of the application by the registrar.

 

3. Submitting a Statement of Use: A statement of use essentially proves your intent to use the mark. You will be required to submit your proof of use within six months after getting notice of allowance.

 

4. Renewal of Registrations – Most trademarks have a 10-year lifespan. They are required to be renewed through this application. The proof of use is to be the continued usage of the trademark for their goods and services.

 

Proof of use in the United Kingdom
According to UK law, the trademark offices or the courts won’t initiate an enquiry into whether the trademark has been used. Instead of this, the applicant for the trademark is to send in the application for the further legal process. The proof of use or evidence should be relevant to the territory of the UK. Simply put, the evidence should be significant.

 

In conclusion, proof of use is taken up as evidence to prove the intent of the use or usage of that mark in commerce. This is quite a necessary part of the application while registering a trademark or renewing it.

Logos are an essential element in businesses. They contribute so much to brand recognition that companies understandably invest a lot to have logos that stand out. Given just how important logos are, it is necessary to protect them to ensure they are not copied or duplicated.

 

The critical question then is: what is the best way to protect a logo? Logos can qualify for protection under both trademark and copyright. It is, therefore, necessary to explore the rights and limitations of trademarks and copyright to determine which form of protection is most appropriate.

 

Copyright
One critical fact to note regarding copyright and logos is that not all logos qualify for copyright protection. For example, logos constituted only by designed text are likely not copyrightable. This is because copyright protection does not cover design, colours, and names. However, if your logo contains original artistic elements, these specific elements qualify for copyright protection.

 

Also noteworthy is that copyrights have a finite lifetime regardless of whether they are works of individuals or works created for hire.

 

Trademark
Unlike copyright, most logo forms can be trademarked as long as they are distinctive and are used in commerce. Also, trademarks can protect names and short phrases used in logos which is not the case with copyright. For commercial purposes, trademarks offer more protection for logos. For instance, once your logo is trademarked, competitors cannot use identical logos or variants of the logo that are confusingly similar in the same kind of business.
This way, trademarks help protect your brand identity and ensure that third parties cannot take advantage of your brand’s popularity. Furthermore, trademarks can last indefinitely, as long as they are renewed as when due.

 

How should you protect your logo?
From all that has been highlighted, it is clear that trademarks offer the more appropriate protection for logos. Nevertheless, where a logo qualifies for both trademark and copyright, there can be some utility to pursuing both forms of protection.

Stepping on Mars is the next giant leap that humanity is prepping for. Sam, a scientist, has invented a device called the Protocet, essential for developing cryo-chambers. He and his team prepared write-ups and created a logo for his new website. Sam wants to register his Intellectual Property.

 

Trademark: Sam has a name and logo for his invention. Both of which are unique. Thus, anything that distinguishes one undertaking from another is capable of constituting a trademark. The Madrid Agreement (1891) provides contracting nations with a single and efficient international trademark registration form. It eliminates the need for filing and prosecuting separate registrations in multiple countries.

 

Copyrights: Under copyright law, anything you express through your artistic or literary work is protected. You do not have to file an application for exclusive rights to your work. The protection is conferred when it is created. Copyright law is governed by the Berne Convention (1886) at the global level. It protects the works and rights of artists and authors. Ideas may not necessarily be original but their expression must be original. The term of protection during the lifetime of the writer or artist is fifty years.
These are the three main constituents of Intellectual Property Rights.

 

Patent: An invention of a new product or a process of manufacturing a product is protected by patent law. The agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) recognises these three as the essential elements to conferring patent rights on an invention i.e., an invention should:

• Be new
• Involve an inventive step, and
• Be capable of industrial application.

 

A patent is an exclusive right granted for a limited period of twenty years. So, Sam’s invention, “Protocet,” is protectable under patent law because it is an invention that is new and capable of industrial application.

The UK’s trademark regulations follow those of other EU nations. Strong preference is given to registering a trademark in the UK, although an unregistered trademark that has been in use for a long time and accrued its own goodwill is considered. Trademark laws in the UK are governed by several laws, such as the Trademarks Act of 1994, the Trademark Rules of 2008, and the EU Trademark Regulations. Additionally, multiple trademark conventions are available.

 

Getting a trademark registered in the UK

 

There are three ways to receive registered trademark protection in the UK:

1. An application for a UK trademark registration submitted to the UKIPO.
2. A request for an EU trademark registration submitted to the EUIPO; and
3. A WIPO application to obtain an international registration naming either the UK or the EU was submitted.

 

According to the laws in the UK, the symbol ® can only be used after the logo or the mark of the company if the company has a fully registered trademark with the registration certificate along with the number of the registration. After registration, the company can simply use the ® symbol without any threat of third parties using it or abusing it. The UKIPO, which is the UK Intellectual Property Office, will consist of the record of the trademark of the company and declaring that the company is registered. People presume the symbols ™ and ® are compatible or the same, however, these symbols transmit very distinct meanings.

 

 

 

In the nutshell, for the registered trademarks, the symbol ® is used for the word, phrase, logo, service or product, but the company itself has to be registered to use the symbol ® on the other hand, if we talk about the symbol ™ it has been used for the identification of a particular company, association, business or also an individual, which means the product of that company has the pending registration. Therefore, the pending registration symbol ® cannot be used.