Burgers, new opportunities and a warning — let Sparqa Legal run you through some of the recent developments in trade mark law that may impact SMEs.
Taking a bite out of the Big Mac
Supermac’s, an Irish fast food chain, humbled McDonald’s last month in what Supermac’s Managing Director Pat McDonagh described as a ‘David versus Goliath’ dispute before the European Intellectual Property Office (EUIPO).
McDonald’s were the owners of the EU trade mark ‘BIG MAC’. However, following litigation from McDonald’s that prevented Supermac’s expanding outside of Ireland lest people confuse the two restaurants, Supermac’s filed an application for revocation of the BIG MAC mark.
If you register a trade mark for a class of product or service, but fail to put it to genuine use in the way envisaged by your application for a period of five years, the entire registration may be cancelled. This is precisely what Supermac’s argued in their revocation application. McDonald’s had registered BIG MAC under various classes of goods and services, but were unable to prove to the EUIPO that they had in fact used the mark for any of the products or services under those classes. Their mark was therefore cancelled.
Burger King took recent delight in this, launching a menu in Swedish stores that served meals such as ‘Like a Big Mac, But Actually Big’ and ‘Burger Big Mac Wished It Was’.
So what are the take-away points here? (Sorry).
Crucially, don’t register your trade mark in class areas that you will never use the mark for. If you have one trade mark registered in two classes, non-use of the mark for one of the classes could invalidate your entire application.
It is also important to keep evidence that clearly demonstrates how you have used your trade mark so that, if challenged, you can prove that you have in fact used your trade mark in the manner registered.
Let’s get digital
The UK Intellectual Property Office (IPO) has, as of January 2019, opened up a wider variety of permissible electronic formats for trade marks to be registered in. Previously, you had to be able to draw or somehow visually represent your trade mark on paper (known as graphical representation), but now it is now possible to register a trade mark in a range of formats, including:
- 3D shapes in OBJ, STL, X3D, JPEG, GIF, TIPP, and PNG file formats.
- Figurative marks (eg a logo such as the Alfa Romeo badge), patterns, or colours in JPEG, GIF, TIPP, and PNG file formats.
- Sounds in MP3, JPEG, GIF, TIPP, and PNG formats.
- Motion mark or hologram in MP4, JPEG, GIF, TIPP, and PNG file formats.
- Multimedia in MP4 file format.
- Word mark in text format (ie typed as part of the online form — if the text is stylised you would register a figurative mark).
This means that where before you would have had to register an advertising jingle as the composite musical notes, you can now simply register the sounds as an MP3.
Expired but not forgotten
Before approving trade mark applications, the UK IPO will check the list of trade marks and inform you if there is a potential conflict with an already registered mark. As of January 2019 however, they will no longer be informing applicants of potential conflicts with expired marks.
A trade mark will become invalid if it is not renewed within a year of expiry. However, if the owner of an expired mark successfully renews it within that year-long period, then any conflicting marks registered while the renewed mark was expired will be invalid.
It is therefore important that, when you do your own check of similar marks prior to submitting an application, you consider recently expired marks as well as active marks.
For more information on registering a trade mark in the UK, EU or internationally, visit www.sparqa.com.
This article was published on 06/02/2019 based on information as of that date. The material contained in this article is for general information purposes only and is not intended to provide legal advice.