Tuesday, 10 July 2007

Lots in common, some things different - UK/USA trademarks

by Pauline Amphlett
Principal - Brand Guardians IP

If you wanted to pick an obvious difference between intellectual property (IP) in theUK and USA you could start with the spelling of ‘trade mark’. In the UK it’s two words, in the USA it’s written as ’trademark’. You also receive a much more lavish trade mark certificate from the USA, with resplendent, gold embossed eagle. 
Cross border treaties and practice to facilitate trade have existed for centuries. International treaties too have underpinned intellectual property rights, many emanating from the Swiss based World Intellectual Property Organisation (WIPO). This means that there are many similarities in registering a trade mark in other countries. 

There are however, some differences. 
For trade marks there are two major differences in the USA: 
• The requirement to file evidence of use of the mark. 
• The need to be very specific as tot he goods and services in the specification. For instance seeking to register a mark for ‘software’ would not be specific enough, whereas ‘software for processing financial transactions’, or ‘software for the operation of X-Ray machines’ would be acceptable. 

Whether seeking to use a new name or identity in any country the starting point before using it is to check what’s already registered. Given that there are six million US trade marks you need to know what’s out there already and take professional advice. 

We’ve seen a significant rise in the number of US trade marks being filed by our clients over the last ten years (the rise applies to other countries too). It reflects the opening-up of trade, developments in manufacturing, the rise of the service industry, the worldwide web and social change. The increased demand has not just come from larger businesses. Our clients operating in sectors like IT, financial and business services, recruitment and food and drink have been particularly keen to secure ownership in the USA. 

One relatively recent development for both the USA and UK was them becoming signatories to the International Trade Mark, administered by the World Intellectual Property Organisation (WIPO). This presented another opportunity to make the process of apply for trade marks in a large number of countries easier and cheaper. With the Community Trade Mark also being a signatory to the International Trade Mark the savings can be considerable. 

When the Community Trade Mark (one application covering all EU member states) was introduced in 1994, the level of take-up surprised OHIM the body administering it. The number of applications overwhelmed the office. What had not been foreseen was the level of applications from US companies, around 65%. There was a certain amount of gold-rush mentality (not just from US owners) to get there first, to secure a mark. Many US owners recognise the importance and value of securing trade marks in the UK and across EU. 

We encourage clients to take a short, medium and long-term view of their trade marks. This is cornerstone of setting the Intellectual Property Strategy and creating enduring names and brand identities. The key thing is to ‘search before you use’. Doing so informs your decisions and makes for a smoother ride in this unpredictable world.