EU Trademarks

[Brown and Boris]

Is it right that you cannot Trademark a word in common use under EU trademark law?

I trademarked two words in the UK last year but a client is now telling me that the EU Trademark people won't allow you to do this.

[AlexB]

It depends on the words and what they are to be registered for. If they are descriptive of the product/services themselves or what they do (or is deceptive) then registration is unlikely - basically if there is a good reason why the word should be free for all to use then you shouldn't be able to get it registered. So you couldn't register "Orange" for fruit, but for mobile phone services it isn't really a problem.

Many of these problems can be overcome by providing evidence (if you can) that the word is only associated with your company, but for common words such evidence is unlikely to exist.

You say you trademarked two words - I assume that this means that the UK IPO has registered them without raising "lack of distinctiveness" objections - since the UK IPO should apply the same standards as the Community Trade Mark system then there should be no problem. If you are worried then it's probably best to speak to your trade mark attorney.

Alex

[Brown and Boris]

AlexB said:

It depends on the words and what they are to be registered for. If they are descriptive of the product/services themselves or what they do (or is deceptive) then registration is unlikely - basically if there is a good reason why the word should be free for all to use then you shouldn't be able to get it registered. So you couldn't register "Orange" for fruit, but for mobile phone services it isn't really a problem.

Many of these problems can be overcome by providing evidence (if you can) that the word is only associated with your company, but for common words such evidence is unlikely to exist.

You say you trademarked two words - I assume that this means that the UK IPO has registered them without raising "lack of distinctiveness" objections - since the UK IPO should apply the same standards as the Community Trade Mark system then there should be no problem. If you are worried then it's probably best to speak to your trade mark attorney.

Alex

Thanks Alex

Basically I registered the UK trademark under two classifications(software and printed matter I recall). I then licensed the product for sale across the world and the licensee tried to register the EU trademark. I provided them with a discription and it is a very precise classification. I thought perhpas they had got the wrong end of the sticj but it sounds about right. One for their lawyers to sort I think.

[JuniorD]

Brown and Boris said:

AlexB said:

It depends on the words and what they are to be registered for. If they are descriptive of the product/services themselves or what they do (or is deceptive) then registration is unlikely - basically if there is a good reason why the word should be free for all to use then you shouldn't be able to get it registered. So you couldn't register "Orange" for fruit, but for mobile phone services it isn't really a problem.

Many of these problems can be overcome by providing evidence (if you can) that the word is only associated with your company, but for common words such evidence is unlikely to exist.

You say you trademarked two words - I assume that this means that the UK IPO has registered them without raising "lack of distinctiveness" objections - since the UK IPO should apply the same standards as the Community Trade Mark system then there should be no problem. If you are worried then it's probably best to speak to your trade mark attorney.

Alex

Thanks Alex

Basically I registered the UK trademark under two classifications(software and printed matter I recall). I then licensed the product for sale across the world and the licensee tried to register the EU trademark. I provided them with a discription and it is a very precise classification. I thought perhpas they had got the wrong end of the sticj but it sounds about right. One for their lawyers to sort I think.

Why are the licensees applying for the CTM? Shouldn't you be doing that yourself?

[XB70]

JuniorD said:

Brown and Boris said:

AlexB said:

It depends on the words and what they are to be registered for. If they are descriptive of the product/services themselves or what they do (or is deceptive) then registration is unlikely - basically if there is a good reason why the word should be free for all to use then you shouldn't be able to get it registered. So you couldn't register "Orange" for fruit, but for mobile phone services it isn't really a problem.

Many of these problems can be overcome by providing evidence (if you can) that the word is only associated with your company, but for common words such evidence is unlikely to exist.

You say you trademarked two words - I assume that this means that the UK IPO has registered them without raising "lack of distinctiveness" objections - since the UK IPO should apply the same standards as the Community Trade Mark system then there should be no problem. If you are worried then it's probably best to speak to your trade mark attorney.

Alex

Thanks Alex

Basically I registered the UK trademark under two classifications(software and printed matter I recall). I then licensed the product for sale across the world and the licensee tried to register the EU trademark. I provided them with a discription and it is a very precise classification. I thought perhpas they had got the wrong end of the sticj but it sounds about right. One for their lawyers to sort I think.

Why are the licensees applying for the CTM? Shouldn't you be doing that yourself?

Good god man, get that stopped IMMEDIATELY.

Also make sure that the licence agreement covers the IP rights and permitted use.

Drop me a line if you want

[Brown and Boris]

XB70 said:

JuniorD said:

Brown and Boris said:

AlexB said:

It depends on the words and what they are to be registered for. If they are descriptive of the product/services themselves or what they do (or is deceptive) then registration is unlikely - basically if there is a good reason why the word should be free for all to use then you shouldn't be able to get it registered. So you couldn't register "Orange" for fruit, but for mobile phone services it isn't really a problem.

Many of these problems can be overcome by providing evidence (if you can) that the word is only associated with your company, but for common words such evidence is unlikely to exist.

You say you trademarked two words - I assume that this means that the UK IPO has registered them without raising "lack of distinctiveness" objections - since the UK IPO should apply the same standards as the Community Trade Mark system then there should be no problem. If you are worried then it's probably best to speak to your trade mark attorney.

Alex

Thanks Alex

Basically I registered the UK trademark under two classifications(software and printed matter I recall). I then licensed the product for sale across the world and the licensee tried to register the EU trademark. I provided them with a discription and it is a very precise classification. I thought perhpas they had got the wrong end of the sticj but it sounds about right. One for their lawyers to sort I think.

Why are the licensees applying for the CTM? Shouldn't you be doing that yourself?

Good god man, get that stopped IMMEDIATELY.

Also make sure that the licence agreement covers the IP rights and permitted use.

Drop me a line if you want

The contract is a long one, for a specific version of the product and I have two other trademarks registered for its use for other versions.

The contract shows the IP as mine, and I have the UK trademark on their licensed version which is not part of the contract (not sure they realise that). I don't want the EU trademark because my legal advice was that there were 'passing off' risks which they have agreed to handle and compensate me for if there is a challenge. As a large multi-ntaional they feel the risk is low enough in usinmg the name in Europe, I am less comfortable so they are welcome to it!

[JuniorD]

Brown and Boris said:

XB70 said:

JuniorD said:

Brown and Boris said:

AlexB said:

It depends on the words and what they are to be registered for. If they are descriptive of the product/services themselves or what they do (or is deceptive) then registration is unlikely - basically if there is a good reason why the word should be free for all to use then you shouldn't be able to get it registered. So you couldn't register "Orange" for fruit, but for mobile phone services it isn't really a problem.

Many of these problems can be overcome by providing evidence (if you can) that the word is only associated with your company, but for common words such evidence is unlikely to exist.

You say you trademarked two words - I assume that this means that the UK IPO has registered them without raising "lack of distinctiveness" objections - since the UK IPO should apply the same standards as the Community Trade Mark system then there should be no problem. If you are worried then it's probably best to speak to your trade mark attorney.

Alex

Thanks Alex

Basically I registered the UK trademark under two classifications(software and printed matter I recall). I then licensed the product for sale across the world and the licensee tried to register the EU trademark. I provided them with a discription and it is a very precise classification. I thought perhpas they had got the wrong end of the sticj but it sounds about right. One for their lawyers to sort I think.

Why are the licensees applying for the CTM? Shouldn't you be doing that yourself?

Good god man, get that stopped IMMEDIATELY.

Also make sure that the licence agreement covers the IP rights and permitted use.

Drop me a line if you want

The contract is a long one, for a specific version of the product and I have two other trademarks registered for its use for other versions.

The contract shows the IP as mine, and I have the UK trademark on their licensed version which is not part of the contract (not sure they realise that). I don't want the EU trademark because my legal advice was that there were 'passing off' risks which they have agreed to handle and compensate me for if there is a challenge. As a large multi-ntaional they feel the risk is low enough in usinmg the name in Europe, I am less comfortable so they are welcome to it!

Shouldn't you be the proprietor of any CTM with the contract stipulating that the licensee indemnifies against or coughs up for any legal or passing off issues?

[Astacus]

woo hoo IP feeding frenzy...can I join in?