Virtuoso Legal | Award-Winning Intellectual Property Law Firm.
Virtuoso Legal are a world-class Intellectual Property law firm. Our expert solicitors are experienced in all forms of intellectual property law. We have represented clients big and small, internationally and locally – for the past 10 years and we are renowned for our service.
This week marks #IPinclusiveweek (www.ipinclusive.org.uk/ip-inclusive-week) and all IP professionals are encouraged improve diversity and inclusion. We at Virtuoso Legal thought the best way to do so is to lead by example and have Philip Partington, our Director, Head of IP litigation and the London Office, write about his story in the IP legal profession from his early days as a paralegal to date.
Philip Partington talks inclusivity for #IPInclusiveWeek
I started my legal career over ten years ago as a paralegal at the “best IP firm in the North”, based in Newcastle Upon Tyne. At this time, I had a large number of friends who were also gay lawyers in Newcastle (and beyond) who were not open about who they loved. Indeed, many of those lawyers were at very large firms and perhaps were worried about their professional prospects if they “came out”.
In contrast, at the outset, I decided that if the legal profession did not like me because of my sexuality, I would take my (at that time) rough talents elsewhere and do something else; to a profession that did. Thankfully, that was not necessary. Since my training firm was small but boutique, I do not recall there being any formal “inclusivity” policy, but the partners and staff were good people who encouraged me to be myself and not fear discrimination. They always had my back and this early inclusive experience coloured my career and perception to date.
Following the completion of my training, like many young lawyers, I was determined to relocate London. For me, not only did I think it made sense professionally, but also personally. London is possibly the most inclusive and exciting cities in the world. As such, In 2012 I packed my bags and accepted a job with a IP/IT boutique based in London. This firm had been set up and grown by a leading female IP/IT lawyer and I was very much taken by her inspirational approach. My experience at this firm illustrated to me that smaller boutique firms are also more than able to provide an inclusive environment for their staff.
#IPInclusiveWeek: Philip and Liz planing the next move
A Forward Thinking Firm
In around 2015, I spoke with Liz Ward, another woman who had set up Virtuoso Legal as an IP law firm and who, at the time, was on the other side of an IP case. During that first call, I was struck with how down to earth and astute Liz came across, without the usual pompous attitude of many a partner in the industry! The case concluded, and Liz asked me to join her team and set up the London office of Virtuoso Legal. Since Virtuoso Legal was also a boutique IP firm, their inclusivity very much depended upon the individuals, rather than formal policy. As such, I recall meeting all of the staff before I joined to make sure that the rest of the team followed in Liz’s inclusive style and nature. Of course, they did and remain.
Since joining Virtuoso Legal in 2015, we have doubled in size and have been responsible for some leading IP decisions in IPEC, the High Court and Court of Appeal; next year we are even off to the Supreme Court! I genuinely do not think that we could have achieved all of this if we at Virtuoso Legal had not been an inclusive and friendly place to work. After all, people who can go to work and live as they are, are happier and more productive. In addition, especially in the IP world, clients and suppliers are often diverse and are delighted to instruct firms that reflect their values. In my view, an inclusive culture and thought in the workplace is simply better suited to addressing the myriad of problems businesses solve in the wider world.
In my view, inclusivity in the IP profession has moved at a rapid pace, even in the last 10 years. The good news is that the field of law has become one of the most diverse of the institutional professions. This is something that I have been very happy to see at Virtuoso Legal and we continue to be as diverse as the world around us and the clients we serve. Indeed, if you look at our team on our website, I don’t think you could find a more diverse bunch of IP lawyers; that is a huge strength!
All that being said, there’s always more than can be done and I implore all those reading this in the legal profession to take inclusivity seriously and translate it into their hiring and workplace practices, and not just policy. This will enable others not unlike myself, who in their early career might be apprehensive, to thrive in the field and achieve incredible things for the benefit of everyone.
Ultimately, whilst the law is an objective system which protects the rights of all in this country – it will do so much better as it continues to seek to reflect the diversity of the citizenry it serves. #IPInclusiveWeek reminds us every year, just how important this is.
The UK IPO has published its Response to the Consultation on the Implementation of the EU Trade Mark Directive 2015, which is required to be implemented into UK law by 14 January 2019.
The new Trade Mark Directive aims to update and further harmonise existing trade mark law applying to the national trade mark systems so that the conditions for obtaining and holding a trade mark are in the main, identical in EU Member States.
In the UK that will mean changes to the UK Trade Marks Act 1994 (TMA) and related secondary legislation, including the Trade Marks Rules 2008 (TMR). Many of the articles of the Directive have already been implemented into UK law so the TMA doesn’t need a massive overhaul to be fully compliant.
The remaining changes cannot be ignored. They will be implemented into UK law by 14 January 2019, which falls before the date on which the UK will officially leave the EU (11am on Friday, 29 March 2019 – B-Day).
The changes are unsurprising to many IP practitioners as they bring into force developments which have been in the trademark pipeline for several years. What is new however, is the exact wording of the UK legislation, which is going to be covered under the brand new Trade Marks Regulations 2018.
The changes which will most impact on businesses are set out below, with a brief explanation of what they will mean in practice.
Removal of the need for ‘graphical representation’
Most importantly, the definition of a trademark under s.1 TMA will be changed from ‘any sign capable of being represented graphically’, to the much longer ‘sign capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor’. In practice this means that trademarks will no longer need to have the visual quality that they have previously required.
This will allow the presentation of trade marks in an electronic format such as an MP3 for sound based marks. It will also enable the filing of sound or moving image file formats and new multi-media trade marks that combine both moving images and sounds.
The UKIPO has said that it will publish further guidance on the filing requirements for the new mark types and acceptable file formats in the coming months.
Goods in Transit
Article 10(4) of the EU Trade Mark Directive enables customs authorities to detain potentially fake or counterfeit goods that are ‘in transit’ from a country outside the EU customs territory (i.e.where the goods are passing through the UK without being released for free circulation there – en route to a third country).
There will be a new s.10A of the TMA 1994 providing the right to prevent goods entering the UK without being released for free circulation. This is a notable change in the area of enforcement and trademark protection. Previously a trade mark proprietor was unable to take steps to prevent infringing parties from using the UK’s transport network as means by which to transport infringing goods beyond the EU’s custom’s territory.
This will apply to infringing articles which bear without authorisation a sign which is identical with the trade mark or cannot be distinguished in its essential aspects from the trade mark. Though this is an additional preventative measure that a UK trade mark holder can take, the UKIPO noted that potential further changes may be required should the UK leave the EU’s Customs Union.
Article 17 of the Trade Mark Directive introduces the principle that a trade mark proprietor cannot prevent use of a sign during infringement proceedings if his mark is liable to be revoked for non-use.
This provides a defence against infringement – the proprietor of the trade mark maybe required to prove he has been using it, and if he cannot do so, the infringement proceedings will not succeed. This will be useful in the event of over one million UK national marks being created from existing EUTMs when the UK leaves the EU. A new s.11A will be inserted into the TMA.
The primary benefit here will be the streamlining of infringement proceedings with opposition proceedings and the potential to cut down on the number of proceedings in respect of trade marks left vulnerable by non-use.
These are only a few of the changes that will come into effect with the 2018 Trade Marks Regulations. Other amendments include the narrowing of the ‘own-name’ defence to exclude businesses. This will be vital for any business which has a registered mark protecting their business name. The ‘own name’ defence has been widely used in the past by businesses but this has now been limited only to ‘natural persons’.
Undoubtedly the biggest change is in the definition of a trade mark under s.1 of the TMA. This removal of the need for a mark to be graphically represented paves the way for new forms of mark such as smells, sounds and moving images. It will be interesting to see if this results in a new wave of UK-registered non-traditional marks, especially given the increased demand for UK trade marks in the run up to Brexit.
Link Up Mitaka t/a thebigword v. Language Empire and Anor. 
What lies beyond the IPEC costs ceiling for frustrated Claimants?
Two weeks ago, we reported on our landmark win in the Link Up Mitaka t/a thebigword v. Language Empire Limited & Another  case.
For an broad overview of this case, please read here.
What we did not report, but knew, at the time was that we had sought a further breakthrough from the court – that thebigword get their costs over and above the IPEC costs caps.
The IPEC: A Streamlined Court and a Costs Conundrum
For those of you unfamiliar with the Intellectual Property Enterprise Court (IPEC), it is a specialist court set up to hear IP related issues in a streamlined, faster and cost-effective way.
One of the main features of the court is that a litigant’s costs exposure is limited to a maximum of £50,000 (for a trial on liability) and £25,000 (for a trial on quantum) with each stage of litigation being assigned a recommended cap. This is the context within which we prepared to apply for indemnity costs outside these caps at the hand down hearing. The scale of the task was immediately apparent.
Crucially, the nature of the case in question, including the unreasonable obsfucatory conduct of the defendant during litigation, thus inflating costs; meant that our client would ideally be awarded costs beyond the ordinary boundaries set out by the court.
IPEC cases are divided into two trials (1) on liability (“has the defendant infringed?”) and (2) on quantum (“how much damages you are owed as a claimant”).
For starters, it is rare that cases even reach the quantum stage. Parties tend to agree on damages and costs once liability is settled to minimize further cost exposure. In addition to that, the IPEC has previously religiously stuck to the caps and there was scant case law to support our position. In fact, neither party’s lawyers were able to find a case in the IPEC where the scale costs had been disapplied.
A Careful Strategy on Costs
This challenge meant we had to approach this issue in a carefully crafted way. If you have read the report on the main judgment (see link above) you will remember that the Defendants in this case were found to be uncooperative to the point of obstructing the course of justice. We argued that many of the costs we incurred were a result of the same conduct. For example, we were forced to issue an application for a specific disclosure and go to a hearing for the same due a disagreement with the Defendants about how disclosure was conducted, and whether we were able to inspect some of the documents disclosed.
HHJ Melissa Clarke, after hearing submissions from both parties, agreed. There is a Rule 45.30 of the CPR does contain an exception to the capped costs scale for “an abuse of process”. Counsel for the Defendants argued that each particular uncooperative act of the Defendants (such as the specific disclosure issue, or the attempts to blame third parties) were not an abuse of process but were part of a normal course of defending the proceedings.
The Judge agreed that some of the acts of the Defendant were not an abuse of process and that as such CPR 45.30 may not apply. However, as she had stated in her previous judgment on quantum, the instances in which the Defendants had indulged in “dishonesty and obfuscatory” were so numerous that she chose to use her general discretion and broad powers in relation to costs provided to her by CPR 44.
Keeping in mind the capped cost
of £25,000 in the IPEC for an inquiry, HHJ Clarke ordered the Defendants to pay
£98,260 plus interest of £1446.98.
This was a rare case – the facts
of the case, particularly in relation to the Defendants’ conduct, was fairly
unique. This may be why the Judge chose to apply her general discretion on
costs rather than the specific exceptions to the fixed costs in the IPEC. Her
thought process is best highlighted by the following paragraph:
“I did not make this decision lightly. I accept and understand that the costs cap is a key feature and benefit of litigation in IPEC, and that certainty about the application of the Scale Costs Scheme is extremely important to facilitate access to justice for litigants in lower value intellectual property claims. However, where there is an abuse of the processes of the court, as Lord Diplock guides us, the court has a duty to identify it. If the court does not protect the integrity of the court processes to ensure that it meets the overriding objective to deal with cases justly and at proportionate cost, who will?” (at paragraph 24).
In addition, IPEC litigants may
want to take note:
“Litigants in IPEC must understand that conduct which amounts to an abuse of the processes of the court will cause them to lose the benefit of the protection that the Scale Costs Scheme gives them.” (at paragraph 25).
To conclude, such a case as Link Up Mitaka t/a thebigword v. Language Empire Limited and Anor., wherein the other side demonstrate obfuscation and opacity in their conduct, requires incredible patience to navigate to a satisfactory result.
It is, however, encouraging to note that the HHJ Clarke and the IPEC, in such instances, will employ discretion freely to ensure that Claimants who are frustrated and financially laden by evasive defendants can be adequately remunerated.
Such demonstrates that rules within the court cannot be abused by actors who seek to obstruct the course of justice.
“One Billboard in Bedford, Massachusetts” – How, when and is it possible to infringe a highly reputable trade mark outside its jurisdiction through the Google AdSense programme?
This blog is the second part of our series following our successful landmark ruling in the matter of Argos Ltd v Argos Systems Inc in the Court of Appeal.
For our full review of the case and to see our full range of blog posts click here.
What’s in a Reputation?
If you are lucky enough to have a famous brand, for which you have a trade mark, the law in the UK and Europe usually affords you far greater protection than if you are lesser-known.
Due to their notoriety, would-be infringers try to seek out such big-brands to imitate more often, hoping to ride off the coat tails of the reputation those brands command. As such, there are provisions in both UK and European trade mark law (by way of Article 9(2)(c) of the EU Trade Mark Regulation) which provides protection for brands with a famous reputation.
Where an unauthorised third-party uses a similar mark, and such use (1) causes damage to the reputation or the distinctive character (dilution) and/or (2) takes unfair advantage of the reputation in the trade mark, the Regulation and European case law deem that the trade mark owner must be compensated.
This is regardless of whether the third party uses the mark in relation to similar goods or services to the trade mark owner – as is the typical complaint of more ordinary trade mark litigation proceedings.
Brands with a certain level of repute (e.g. Apple), as such, find themselves capable of enforcing their trade marks more broadly than within their registered categories.
Such was the nature of the complaint brought by Argos Ltd., the UK high-street retail outlet against our client Argos Systems Inc. a small US-based software company based in Bedford, Massachusetts.
Argos Ltd. (UK) v Argos Systems Inc.(US) : The High Court Case
Now let us turn to the case at hand. No one can dispute that “Argos” is a brand with a reputation, certainly within the UK. In fact, in the Court of Appeal, the Appellant dropped allegations on infringement in an Article 9(1)(a) or (b) context, and only appealed in relation to reputation, in particular on the point of taking of unfair advantage.
A short reminder of the salient facts of this case are:
Argos UK own the EU trade marks for the word “ARGOS”;
Argos US bought the domain name www.argos.com, in 1992;
many UK web users type in www.argos.com accidentally believing it would take them to Argos UK’s website (actually www.argos.co.uk);
Argos US do not market any goods/services to the EU market but placed Google AdSense adverts on their website that may have been seen or clicked on by EU visitors;
Argos US did make some profits from the Google AdSense program.
The case on unfair advantage was lost by the Claimant at first instance in the High Court.
Deputy Judge Spearman in that case decided that while an advantage may have been accrued by the Defendant (namely, revenue from the AdSense impressions and clicks), this advantage was not necessarily unfair.
This decision was reached on several factual bases, including that Argos US had nothing to entice EU visitors to its website, and that the AdSense program signed up to by both parties was a commercially reasonable activity that benefited both.
The Appeal: A question of reputation and unfair advantage
In the Appeal, the Appellant’s primary argument in relation to unfair advantage was that the Respondent had enjoyed an economic advantage by using AdSense adverts on their www.argos.com domain and that it necessarily followed that any advantage should be “unfair”.
This was derived from the unqualified principles of “unfair advantage” as were set out in L’Oreal v Bellure (i.e. “advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly”).
LJ Floyd was careful not to criticise L’Oreal but stated that taking such a literal meaning from it would be to ignore the additional principles set out in Whirlpool Corp v Kenwood Ltd and Specsavers International Healthcare v Asda Stores Limited.
Both those later cases were decided on the basis that something more was required for an “unfair” advantage, and that it mattered whether the use of the mark was “without due cause”.
He also pointed out that L’Oreal was a case where there was an “image transfer”, i.e. that the average consumer would see the defendant’s use of the mark. This is to be distinguished in cases such as this one or Interflora, for example, where while there was unauthorised use of a trade mark – the end-user would not see such use or perceive it as trade mark use.
In that legal context, LJ Floyd decided to uphold the first instance Judge’s findings. The Respondent’s use of Argos UK’s trade mark (through the combination of its use of www.argos.com and the AdSense ads) was not “unfair” due to the factual findings of the first instance judge.
Interestingly, LJ Floyd regarded that the mere fact that Argos US were making money by using the www.argos.com domain name and subscribing to the Google AdSense program did not deem the conduct “unfair”.
The unsolicited traffic to Argos US’s website was causing major bandwidth issues for some time, and Argos US were not obliged to find the least damaging way to solve these problems. Indeed, they were entitled to profit from signing up to a normal commercial activity such as Google AdSense.
The decision seems to reinforce precedent such as Specsavers and Interflora. It also seems to make reasonable and practical sense.
If it was decided that the advantage taken was necessarily unfair, it would have meant a party in the same position (where they unknowingly and in a completely different territory operate a website at a domain name which uses all or part of an EU trade mark) would not be able to access the Google AdSense program as they would be liable to trade mark infringement on another continent if they did.
As such, the result sets a remarkable precedent as it pertains to use of the Google AdSense programme – and others like it in the future.
VIRTUOSO LEGAL SCORES
COURT OF APPEAL SUCCESS IN ARGOS VS ARGOS
Virtuoso Legal’s IP Protect litigation team, led by Philip Partington, have secured a further landmark ruling in the Court of Appeal in the case of Argos Limited (“Argos UK”) vs Argos Systems Inc (“Argos US”), successfully defeating Argos UK’s appeal.
You may recall that in 2017 the team at Virtuoso Legal defeated Argos UK’s claim against Argos US for infringement of its trade marks and passing off in relation to Argos US’s use of the ARGOS name on its website at www.argos.com. Please see our earlier blog here.
The case was all about Argos US’s use of a Google Ad Sense
programme on its website at argos.com.
As commented upon by the trial judge the proceedings raised “issues which are both novel and of potential
wider importance, not least relating to the operation of Google advertising”.
In 2017, Argos UK appealed against the trial judge’s decision
arguing that he had erred when considering the unfair advantage arguments and
that Argos US should be found liable for trade mark infringement.
In particular, Argos UK pleaded that Argos US gained an
advantage by using of Argos UK’s reputation without paying compensation. Based
on CJEU’s decision in L’Oreal v Bellure,
Argos UK stated that this was proven due to the fact that Argos US was making
money out of Argos UK’s reputation. Argos UK also argued that there was
diversion of trade from Argos UK due to the American company’s use of ads. A
link was argued that would have re-directed the lost traffic back onto Argos
Argos US, represented by Virtuoso Legal, argued that the First Instance’s judge findings were correct. The visitors who would accidentally end up on Argos US’s website would have no difficulty in appreciating it as a software business and identify no connection with Argos UK’s retail business. Therefore, the use of the sign will not cause the customers to do anything further and it will not change their economic behaviour. While the ads were a benefit for Argos US, they also brought a benefit to Argos UK as they would direct the visitors who ended up accidentally on the website back to Argos UK’s website.
After a careful analysis of both parties’ submissions, the Court of Appeal decided to uphold the trial judge’s decision and dismissed the appeal. In particular, it was decided that:
Argos US did not seek out the unwanted internet
traffic which arrived at its website, and it had no power to prevent it;
Argos UK also benefited from Argos US’ as it restored
misdirected customers to Argos UK who might otherwise have lost interest;
participation in AdSense is a normal and
commercially unobjectionable activity;
when considering the both parties’ businesses, the
income stream derived from it by Argos US was small.
on arriving at the website even moderately
observant customers would see it had nothing to do with Argos UK.
In conclusion, the result is a thumping success for Argos
US, who were represented by our expert IP team. The decision is of “wide
importance” as it approves the precedent for online advertising set out in the
High Court and will certainly be seen with a sigh of relief from Google, as it
further clarifies, legitimates and solidifies its Google AdSense programme.
When I joined Virtuoso Legal in 2015, Argos vs Argos was one of the cases I took charge and I immediately viewed it as a case where we could steer our client to victory.
During the course of the proceedings, we successfully defeated Argos UK at two interim applications in relation to their disclosure, obtaining substantial costs awards in our client’s favour. We then went on to defeat Argos UK at trial, with a further substantial costs award in our client’s favour. In total, Argos UK had paid well in excess of £330,000 in costs to our client.
Despite this, Argos UK sought to challenge the (in my view) the very reasoned decision of the trial judge and, thankfully, the Court of Appeal has now dismissed that appeal and we expect that Argos UK will be ordered to pay our client’s costs of the appeal.
Overall, it is most unfortunate that Argos UK has pursued our client in this way in relation to adverts which were removed by our client many years ago. However, our client, who is a US company, must be given a great deal of credit for placing their faith in the justice of the UK courts.”
Jonathan Fox, President of Argos Systems Inc said:
I am grateful for everything Philip Partington and the rest of the group at Virtuoso Legal has done for us throughout this case. Everyone at the firm, along with Mr. Jaani Riordan and Mr. Martin Howe QC, worked tirelessly to get to where we are, and they certainly deserve all the credit.
The Royal Courts of Justice is quite an impressive institution, and I have the utmost respect for the judges and their decisions. There is obviously a lot of thought and care taken by the judges to ensure fair and correct decisions. It goes without saying, I am very thankful that, in this case, they were in our favour.”
A number of posts looking into the legal detail of the judgement will follow this post in the coming hours and days.
Huawei are a communications technology company headquartered in China. They are based out of the Chinese industrial innovation centre of Shenzhen, Guandong.
the company has produced a broad range of telecoms equipment, networking and associated
services since its inception in 1987. In recent years, the company has become
more prominently known for its consumer products.
Notably, the company
overtook Apple as the 2nd largest seller of smartphone products worldwide
in the third quarter of 2018 and looks set to continue to expand its global
An infamous barrier to this expansion is the current embargo on Huawei products (and smartphones specifically) in the United States where carriers do not support the phone – allegedly due to political pressure.
It is unavoidable to not note that Huawei is a Chinese company that has benefited directly from government support in the past as a “national champion” and – as a consequence of China’s policy to closely support domestic business – is viewed by some in the US as a Chinese state actor.
Despite this, the brand is establishing a significant level of support around the rest of the world as its consumer products receive highly positive reviews.
With this being said, it is a critical moment for Huawei which, as a distinctly Chinese brand, now (like many other burgeoning Chinese brands) begins to communicate its core values more broadly to a Western and global audience.
It is within this unique context that this edition of Brand Breakdown looks at Huawei’s trade marks and the deployment of their brand assets in the UK.
Breakdown: The Trade Marks
Huawei have several trade marks registered in the United Kingdom through a set of different entities. Aside from registrations for particular products, their principle registrations include their a logo that also includes the name of the company [UK00002403001] and their logo on it’s own [UK00002421758] see below).
Interestingly, the solitary logo was registered a year after the logo and text combo – which is indicative of a desire for additional protection beyond the scope of the first registration.
Both of these are registered in classification 9 which denotes computer hardware, software and (broadly speaking) digital communications technologies. To the untrained eye, this specification may seem narrow in that it neatly covers the principle offerings of the company – and nothing more.
Messages, Meanings and MarketsLogo (and word mark)
Huawei’s logo (below) at first glance resembles: a flower, the rays of the sun, a tree with outstretched leaves or perhaps a clam or seashell.
As such, from a glance the visual impact of the logo has a fundamentally “natural” expression – and furthermore it’s sense of “reaching out” is inherently hopeful.
The softness of the shapes as they emerge from the negative space in the centre infers a benevolent growth, (compare this with Maersk‘s “spiky” logo for example). The structure that the negative space grants the composition provides both a symmetry and balance to the overall visual expression.
In addition to this, both the logo and the logo plus name include a circular gradient that creates a 3-D effect which is read by the eye as a light coming from above.
UK00002421758 Logo Mark, registered on the 12th of May 2006
In actuality (and minus the inferences above) the logo is based on a flower.
In Mandarin “Hua” can be translated as “petal” or “luxury/lavish”. “Wei” is synonymous with “action” or “achievement” also.
As such – the inferences taken at first glance are reinforced, if not focused with this understanding of what the company name means in the company’s native tongue.
This is “lost in translation” issue is something many consumers face when being exposed to any global brand outside of its domestic context (and language). And the logo does much to express these concepts without words.
UK00002403001 Logo and Word Mark, registered on the 3rd of October 2005
Knowing the meaning behind the name however, elements such as:
the “flower in bloom”-like design
the “light coming from above”
the balanced symmetry within the design and individual “petals” in the the process of “bloom”
Are each cast in a fresh light – representing Huawei’s ethos of sustainable and natural innovation and development.
Huawei’s old logo (above) was redesigned in 2006.
Huawei’s old logo (above) featured many of the aspects present in the 2006 redesigned version we see today. But other elements are notably absent.
The current composition is more balanced, in that the text contains the consistent capitalisation, weighting and kerning (the old logo is notably “lopsided” with it’s capitalised “H” counternanced with a lower-case “i”.)
Further to this, the visual concept of the flower, and the “hua-wei” concept, is more definitively expressed – with a less linear sense of upward movement.
Bearing this refinement in mind and without the linguistic aspect, Western consumers will engage with a brand through its other expressions and touch-points. (Though it’s notable that the lack of descriptiveness here means that “Huawei” as a word mark is more distinctive in the UK than it would be in China. )
Regardless the logo, despite the lack of comprehension of the etymology in the Western world, represents these values in abundance.
Why register the logo on it’s own as well?
It is notable that Huawei are principally protected in the United Kingdom with two trademarks, one purely graphical – and the other including their brand name.
One might ask why register the logo on it’s own, after it has been registered in the first instance with the name as well.
Here we might surmise that in the first registration the most distinctive aspect which denotes origin is – as you might expect – the name of the company that accompanies the logo.
As trade marks function principally as a designation of origin, the name within this particular configuration overrides the graphical “flower” as a denotation of the same.
As such, within this registration the protection that is afforded to the graphic element is secondary to it’s most distinct part – and would mean that registrations of similar marks (albeit minus the text) would have been more difficult to address.
As such, the supplementary registration make sense as this would protect the graphical brand asset in its solitary configuration.
Why only one category?
Upon reviewing the registered trade marks that Huawei have in force in the United Kingdom, it was also surprising that they had registered their principal marks in so few classifications.
Whilst class 9 is wide-reaching in its coverage it is not common for a brand the size of Huawei to limit it’s registrations to its single core offering. In most cases, for example, a large brand will also seek protection in additional supplementary classifications – to protect clothing and other peripheral areas of interest.
Associate solicitor Lakmal Walawage comments on this unique approach to the company’s registration:
Sometimes you see trade mark applicants make applications with a very wide specification, in order to obtain the widest coverage and leave room for future growth and expansion into other markets. This may seem like a fool-proof strategy, particularly if you are planning for this growth to happen quickly. However, this approach may also leave the trade mark vulnerable to cancellation for non-use (at least in some classes), and may cause the owner to incur significant cost in dealing with such actions. It may also leave you with a diluted brand and without one with a strong foothold in any particular market.
An alternative strategy may be to focus your application on one mark, and really carve your space out in that particular market. Taking the Huawei example – the mark is registered only in class 9 as they are primarily a manufacturer of computers and mobile phones. Instead of expanding the specification to include for example networks solutions services (which they also seemingly offer in the UK – as per their website), they have instead focused on making two applications – one for the logo with the word element HUAWEI and one without the word element. One might imagine that their global reputation would allow for defence of similar marks in other categories – on account of registering both distinct elements.
It is also notable that the registrations are black and white – and as such that they claim no colour. By making the applications in this way, Huawei have obtained protection over both the word “HUAWEI” and the Logo such that others in the market will not be able to use a similar logo, even with a different word or brand, or in a different colour. The scope of protection afforded here may be more useful than in relation to the above, scatter-gun applications, given the lack of vulnerability and the potential for brand growth and recognition. By employing this strategy, Huawei may be carving out a bigger space in their core market, than spreading their resources over their ancillary services.”
Breakdown 003 Huawei – Summary
Huawei’s burgeoning success worldwide provides an interesting litmus test for high-end Chinese brands who will soon become increasingly prominent outside their borders in the coming years.
This comes as a result of China transcending it’s prior reputation in manufacturing goods for others, and producing impactful world-wide brands of their own.
Whether or not companies like Huawei seek to localise their brand for Western markets, in order to make sure that contextual aspects are not lost in translation (as might be seen here) remains to be seen.
Regardless, it seems that the focus at hand for Huawei is to produce products that speak for themselves and provide a novel character for their brand in new territories.
Fundamental to this are Huawei’s trade marks which, as the cornerstone assets of their brand, will be what a new generation of consumers will look for when seeking their cutting edge products.