Let's Face(book) the music and dance

MARK Zuckerberg, the multi-millionaire founder of Facebook, is facing a trip to the courts to fight over the trademark for his popular internet site.

Former classmate Aaron Greenspan says that the term "facebook" was in common use across the Harvard campus where the website was started. As such, he says, Zuckerberg had no right to trademark it back in 2005. Mr Greenspan, who runs a business selling a variety of software, wants to use Facebook in a title of a book he's writing.

No masterpiece

ANOTHER troll story, this time from the US. A small, Pennsylvania-based patent company Rembrandt is suing 14 US businesses, among them some of the best known corporations in America.

Rembrandt claims it owns the rights to part of the technology being used to facilitate the digital TV switchover. It wants millions of dollars in royalties from companies like Walt Disney Co's ABC, General Electric Co's NBC Universal, CBS Corp and News Corp's Fox Broadcasting for patent infringement.

Now the American Antitrust Institute, a non-profit advocacy group, is asking federal regulators to bar Rembrandt from enforcing its patent. The Government may be persuaded, as it has ploughed $1.5 billion into the switchover, giving $40 coupons to every home in the US.

Stripping out the stripes

THE question of when is a trademark not a trademark can now be answered by adidas, which would say: “When it is two stripes and not three.”

Tired of lookie-likey, value-priced sports gear from the likes of C&A, H&M and other manufacturers, the German manufacturer took the matter to the European Court of Justice, pointing out that similar designs often feature two vertical, parallel stripes of equal width.

Judges dismissed arguments that stripe motifs should be free to be used by anyone, reported Earth Times. Instead, they found that by consumers establishing a link between the two designs it was enough to cause confusion.

It was the end of a 10-year-plus battle. Anne Putz, adidas spokeswoman, told Bloomberg: “We do not seek to prevent the use of decoration, but the use of striped markings that confuse consumers.''

Google ‘trademarking’ creates “free for all”

INTERNET giant Google has caused howls of online outrage with its announcement that it will allow companies to bid for sponsored listings of rival brands.

Until now, if a user entered “Bloggs Logs”, for instance, it would be given the link to the website of the company of the same name, However, under the new rules, which are expected to come into effect on May 5 and mirror those already in existence in the US and Canada, Frances’ Branches could now bid for that sponsored link and have users divert to its website instead.

It led swiftly to calls for industry watchdogs to oppose this development. TTGLive reported that Google UK director Matt Brittin believes the change would give users “greater choices”. But he added that companies would not be allowed to use competitors’ brand names in adverts.

But Kane Pirie, Travel Republic finance and operations director, said: “Google’s move is a most unwelcome development and it will create a free-for-all with everyone bidding on everything.”

However, not even a week after the Google announcement, a court case began in the US that could bring an end to its plans. e-consultancy.com reported that Computer repair company Rescuecom is suing the internet business for allowing its competitors to purchase adverts that appear when somebody searches for "rescuecom", a trademark.

Trademark and patent attorneys already believe that the case could have considerable ramifications for the future of online trademark law if Google wins. If it doesn’t, the case could become a long, drawn-out affair.

Here be trolls

IT’S a nightmare scenario for small businesses. You’ve set up on your own, the tills are ringing and the company is beginning to pull in a profit. Then a letter arrives through the door, accusing you of trademark infringement and threatening to stop you operating unless you pay a lot of money to the trademark’s owner.

The practice, according to BBC Scotland, which caused chaos in the US, has now hit our shores. The owners of two juice bar businesses in Glasgow, one of them the city’s Young Entrepreneur of the Year, were contacted by John Blanchard, of Never Give Up Ltd, who claimed they owed his company a licence fee running to tens of thousands of pounds.

The BBC investigation found that Never Give Up has attempted to register trademarks for around 34 different juice-related names, at least four of which belong to existing juice companies, at the government's Intellectual Property Office in Newport.

However, most of them, including the two Glasgow businesses, are still in the application stage, and Mr Blanchard doesn't even own them yet.

Trademark and patent trolls have become such a problem in the US that corporations like Google have taken expensive legal action to curtail their activities. Typically, a troll will register the name of a business already in existence and then demand money to lease or sell it back.

Trolls may not be on safe ground when engaging in this kind of practice, as companies that trade under the name for a considerable period are responsible for building the reputation of the trademark – something the courts will take into consideration.

However, says Dr Gillian Whitfield, Astrum managing director, the safest option is to register the trademark when the company is formed. “You can apply for it, and use the ‘TM’ mark even while it is in the application process,” she said.

“While many troll cases have been thrown out as worthless, you have to ask yourself if you have the time and the resources to fight this case. Better safe than sorry.”

Milking it for what it’s worth

Most innovators will know that they need to protect their creations, but how does the process work? Arella Creations, which has patents pending on its Topster design, tells how its design went from the drawing board to the high street.

IT WAS 2005, and Steve Thomas’ three-year-old daughter Ella was drinking milk “like it was going out of fashion”. The harassed father found himself making multiple trips back and forth to the kitchen, tearing the tops off plastic bottles, slopping milk all over the side, down the front of the bottle, and making a mess in the fridge.

His irritation focused on the pouring part of the process and, “having always been creative”, he began experimenting with tape and funnels, eventually settling on a design for the Topster, an easy-to-use device that answered Ella’s demands as well as providing a solution for a wide range of users.

Some two-and-a-half years later, Steve formed Arella Creations with co-director Michael Farr, who also works as a lawyer in Cardiff, while Steve still works at Nationwide’s head office in Swindon. Since the start of this year, it has sold 8,000 pairs of Topsters, supplying them through a deal with high street chain Lakeland.

“After all this time, it’s great to see people buying it,” said Steve. “We have a website, and we’ve been getting some great feedback. One customer said the Topster really changed her life. It essentially turns your milk bottle into a jug, with loads of benefits. I’ve found that once you start using it, you never want to go without.”

Ella, who is six, now fetches her own milk, as does Steve’s arthritic mother-in-law, who previously faced extreme difficulties in making a cup of tea while her husband was at work. Now the Topster has given her back a degree of independence.

Steve and Mike - whose two children Andrew and Rebecca, along with Ella, gave the company its name - knew that the design would need protecting. After shopping around for patent attorneys, they settled on Newport-based Astrum, run by Dr Gillian Whitfield.

“Gill was fantastic,” said Steve. “I never knew there was such a thing as patent attorneys, but once I did, I knew I had to get one involved in what we were doing. Mike went to see one or two and I saw a couple in Bath, but they didn’t seem very interested. It was like sitting in a doctor’s waiting room.”

Mike said, “We heard of Gill through the Wales Innovators Network. What I really like is that she is passionate about our product. She’ll happily drop documents off at the Patent Office (in Newport) at 11pm to make sure we make a deadline. She’s given us European protection on the design. It’s very important for us that she believes in what we’re doing, and that she’s coming on a journey with us.”

Arella Creations currently produces two colours – blue and green, for full fat and semi-skimmed. There are plans for a red version, to denote skimmed, and a black and white Friesian cow design. This may lead on to some character designs.

Although Topster is manufactured by a plastics moulder in Gloucestershire, with whom Arella Creations can place orders of any size, Steve and Mike both admit that distribution is the biggest challenge currently facing the business.

Steve said, “I think the potential for Topster is pretty big. There are 24.5 million households in the UK. If we put our product into 10% of them, which isn’t a big percentage, that would mean a significant amount for us. I’d like to see Topster sold in supermarkets, right next to where the milk is. Then you can go in, get your milk and get your Topster at the same time.”

- Topster retails at £2.99 for a packet of two. Visit www.lakeland.co.uk or www.thetopster.co.uk for more details.

- Astrum is currently in the process of registering the Topster trade mark. For more details on how you can protect your designs and branding, visit www.astrum-ip.com.

(This feature first appeared in the South Wales Argus on April 1, 2008)

Don’t pop those corks just yet

THERE were great celebrations in a small part of France recently as notoriously strict Gallic wine lawmakers for once decided to say “oui” to proposals to extend Champagne country.

OK, so it’s only 40 villages in the Rheims area, and it was preceded by decades of internecine feuding. But it’s less a right to grow and more a licence to print money, as the other 319 champagne-producing communes (village districts) are struggling to keep up with the rocketing worldwide demand for fizz – some 339 million bottles last sold year, with the UK only second to the drink’s home country as the biggest consumer.

But is it a good move for the brand in the long term? It all depends on whether this decision sets a precedent. Suppose demand continues to rise, will this put more of France under vine? Of course, there’s a finite limit to ‘the right conditions’ such as flinty soil, but every time the area is extended, the brand becomes diluted.

Some of you, who remain less than impressed with Gallic snobbery, may be thinking “good”. But any business that wants to protect their brand value can learn a lesson from the way that the French have shielded one of their finest exports.

Think about it – no matter how many times a wine expert tells you that certain supermarket Cava is superior, you’ll still buy a bottle of Bollinger or Laurent Perrier for that special occasion, and you’ll happily pay more.

Blessed are the cheesemakers?

Recent trademark battles over Parmesan and Pashmina have once again highlighted the need to protect trademarks, argues Dr Gillian Whitfield, Managing Director of Astrum

IT’S hard not to be seduced by the romance of a great of small Italian cheese makers battling the might of the German government, just as it is difficult not to raise a smile at the thought that all the trouble has been caused by Parmesan cheese.

But this recent European Court of Justice case, which supposedly concluded in triumph for the Italians, once again highlights why companies must protect their trademarks from the very start of trading.

It is the latest in a long line of food wars. We now know that Parma Ham, like Parmesan, must come from the Parma province, champagne must come from Champagne, and Newcastle Brown Ale must come from Tyneside. However, it does not necessarily follow that Cheddar cheese has to be made in a specific part of Somerset.

Why is it that Parmesan succeeded where Cheddar failed? Well, as with so many European rulings, it isn’t that straightforward. While Parmigiano Reggiano must come from only one side of the Alps, the victory was only a partial one for the cheesemakers who, unlike those exhorted in Monty Python’s Life of Brian, probably feel a little less than blessed at the moment.

The highest court of law in the European Union also decided that Germany, which had been prosecuted by the EU for failing to protect Parmesan’s protected designation of origin, or PDO, was under no obligation to go after manufacturers that contravene this ruling.

The Italians appeared philosophical about the matter. "The glass is half-full and half-empty," Igino Morini, spokesman of the Parmigiano cheesemakers' group, opined afterwards. "Germany has been acquitted, but the court has recognized that the term Parmesan can only be used for Parmigiano Reggiano."

Law is often practical in its findings, and the Parmesan case had a ring of something slamming hard shut long after Dobbin had cantered off to the meadow. The same applies to Pashmina. India and Pakistan have for decades disputed the Kashmir area where it is found. Now the latter is objecting to the former’s application for a Geographical Indicator Patent.

Let’s hope that the judge remains pragmatic, as both countries are on to a hiding to nothing over this issue. They are both around 10 years too late, as Pashmina has become a regular item in Western fashion circles for some time now.

Both Newcastle Brown Ale and champagne are protected by geographical indicators, while Cheddar is not. Scottish and Newcastle was able to demonstrate that its special brew could only be made with water from the Tyne, while the protective cartel of champagne producers also effectively argued that climate, soil and other local factors played their part in producing a distinctive grape.

It’s the champagne producers who provide the lesson for companies in Newport and Gwent that want to safeguard their distinctive trading positions. The best defence against other companies attempting to trade off the back of your reputation is to trademark your business from the very start. Don’t believe those people who will tell you that there is nothing that can be done against infringement from emerging economies like China – worldwide protection awarded here will work there, too.

Trademarking is common sense. No business can countenance the thought of inferior products or services being associated with its name. Only that way will you be truly blessed.