The value of trademarks like all legal matters is only illustrated when the worst happens. Until then it is difficult for an inexperienced entrepreneur to really appreciate their value. Mr Payan Tabibian is an entrepreneur, originally Iranian but with US nationality, who had an idea for a business, much like millions of other entrepreneurs around the world every day.
Mr Tabibian had an idea for a hamburger restaurant, and one of his initial tasks was to come up with a distinctive name and logo. Like millions of entrepreneurs just starting off their businesses, Mr Tabibian could not have imagined that 10 years after he thought of the Z-burger trademark, his brand name and logo would become embroiled in a legal battle worth millions.
Can I trademark smells? Can a shape be trademarked? This is recurrent question we get asked as our clients are mostly in the creative industries.
A trademark sign must be capable of being represented graphically. This means that it must be in some kind of physical form. But contemporary culture has evolved so that purely physical representation alone cannot always capture the distinction between goods and services. Sounds, and colours have also been accepted as being capable of graphic representation even though sound, for example, lacks physical form. Even tastes and personal names can now be registered as trade marks. In other words, an application for a trademark sign can be supported with evidence to prove that the mark is clearly distinctive of the origin of a good or service therefore making it capable of graphic representation. So an application for a sound can be supported with a verbal description and a musical score.
Valuing trademarks was recently the first order of business at a meeting regarding a new Internet based start-up. The usual suspects were in attendance including advertisers, marketers, investors and accountants. After the presentation, one of the investors asked the presenters, “What about the IP?”. The investor was referring to the fact that the presentation had not covered any type of proprietary intellectual property rights.
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The following 15 tips are not meant to substitute for legal advice from a suitable qualified lawyer. They are however a starting point for small and medium sized enterprises and consumers on UDRP and domain name disputes.
The 15 Tips
1.ICANN and the UDRP – Due to the international nature of the Internet a method of dealing with disputes over domain names that would apply internationally was needed. The Internet Corporation for Assigned Names and Numbers (ICANN) devised the Uniform Dispute Resolution Policy (the Policy) to allow a quick, affordable way to resolve domain name disputes without the cost and delays of Court litigation. The Policy is numbered from Paragraphs 1 to 9. In addition there are the Uniform Dispute Resolution Rules (the Rules). The Rules are numbered 1 to 21. The Policy sets out the legal rationale behind the Rules. The Rules set out the actual procedure of uniform domain name resolution. The 2 are to be read in conjunction. In addition each ICANN approved dispute resolution provider has its own rules.
5 tips domain name disputes
Here are 5 tips domain name disputes.
1. 5 tips domain name disputes – Starting point – Generally, a holder of a domain name and the holder of a trade mark to that name can have equal entitlement (except when the brand name is so established that a domain is no longer just an address).
Domain name protection lawyers give guidance on domain name disputes
The point of a trade mark
The point of a trade mark is to identify the origin of a product or service and the cornerstone of liability is confusion. Unlike in the US, in UK law a trade mark cannot be infringed by dilution only; there must be an element of confusion. Generally, a holder of a domain name and the holder of a trade mark to that name can have equal entitlement to that name (except when the brand name is so established that a domain name is no longer just an address).