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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.
Jordan Davies Presents Virtuoso Legal Award for Intellectual Property to Hallam Whitehead
Virtuoso Legal were delighted to attend the Leeds Beckett law graduation event at Leeds Town Hall on Wednesday the 18th of July; to grant the 4th annual “Virtuoso Legal Award for Intellectual Property”.
Trainee Solicitor, and frequent Leeds Beckett graduate Jordan Davies returned to present the award to winner, Hallam Whitehead (pictured with Jordan above).
It’s really heart-warming to be back at Leeds Beckett where in not so distant past I myself have been the recipient of commendations as a law student. Presenting the 4th annual Virtuoso Legal Award for Intellectual Property to Hallam was a bit of a surreal moment – as it’s strange to be on the other side of award giving!
Myself and the rest of Virtuoso Legal are delighted for Hallam insofar as it’s a really exciting time in an IP solicitor to-be’s career, and we look forward to welcoming him on a work placement in the near future where he will gain valuable practical IP experience.
We’re really happy to help Hallam, who is clearly a talented prospect in making that next step, and wish him all the best in his future career.”
Hallam Whitehead receives his award at the Leeds Beckett Law Graduation Ceremony at Leeds Town Hall.
At the event, Leeds Beckett celebrated the opening of it’s law clinic which will provide access to legal support for those unable to instruct solicitors through conventional routes.
Jordan was also delighted to meet Lady Black (pictured below) who was the 2nd female Judge of the Supreme Court to be called in the UK.
Jordan further commented:
One of the most critical areas of improvement required in law concerns access to justice, so it’s great to see that Leeds Beckett are leading the way with their new clinic.
Another big highlight for me was meeting Lady Black, the 2nd woman to be called as a Judge to the UK Supreme Court. Lady Black used to teach at Leeds Beckett and still lives in Yorkshire, so as another Leeds alumni based in the city, meeting her at this early stage in my legal career was truly an inspirational moment.
Overall, the experience of granting this award has left me with incredible confidence behind the pedigree of legal talent in Yorkshire.”
Jordan Davies with Lady Black, the Second Female Judge in the UK Supreme Court
Virtuoso Legal is passionate about developing and supporting the best IP talent and the Virtuoso Legal Award for Intellectual Property is one way that we do so.
Congratulations again to Hallam from all of the team here at Virtuoso Legal.
A Tale of Two Trade Marks… (with apologies to Dickens)
It was the best of times, it was the worst of times…
It was the age of wisdom, it was the age of foolishness…
It was the epoch of belief, it was the epoch of incredulity…
The famous introduction to Charles Dickens’ A Tale of Two Cities is noted for it’s contrasts.
The juxtapositions at the start of the book set the scene for two very different worlds the characters experience in between London and Paris.
It’s a book that reminds us how experiences of the same things can differ because of individual circumstances.
The same goes for the registration of trade marks and the protection of brands.
The author notes this segue, shamefully does not live up to the allegory established by referring to Charles Dickens.
Sometimes truth is stranger than fiction, and indeed, more tragic.
And so, as a cautionary tale, we present the modern-day “A Tale of Two Trade Marks”…
Book the First: The Self-made Man
Brian owns an electrician business. He has grown it from sole-tradership to 50 local employees over the past 5 years.
The company has been a big success – but Brian is looking towards the next step, taking his business UK-wide.
He thinks the quickest way to do this, would be through franchising, like the “Pimlico Plumbers”.
He has spoken to many interested people at networking events who are raring to use his brand.
This would mean bringing the brand together and then licensing it to those interested.
So Brian needs to register his trade mark.
Brian takes a look online, and contacting some solicitors trying to find the best deal.
Some seem really expensive… but there are some more modern services that look easier and cheaper.
Brian looks even further into it, he might even register it himself.
Brian uses one of the modern sites and sends in a registration for “LiveWire Electricians”.
Now that his registration is in, Brian:
orders 500 standardised uniforms and name badges (on a good deal!)
buys new decals for his entire fleet of van
changes his signage at head office, and:
paid brand specialists to get his “brand manual” ready for his franchisees
gets to work talking to and agreeing with his franchisees – the most exciting part
No detail has been overlooked.
Then Brian receives a letter.
There’s a “Live-Wire” electricians in Scotland and they already have the trade mark. They’ve opposed his registration and want him to stop using “LiveWire Electricians”, or they’ll sue.
Brian now has to, come to some kind of legal agreement with the Scottish “Live-wire” in or out of court to use the name.
Or, he will have to come up with and use a completely different brand – taking the loss on all the branded material he got made.
Either way, he likely won’t be able to use the brand how he wanted in Scotland or the North of England.
It’s frustrating because this was an area where he thought he could make the best growth.
Book the Second: The Stickler
Jenny owns a natural food company. She produces a large range of healthy snacks and drinks for people looking to stay healthy on the go.
The last 3 years have been exciting – starting from a hobby at home and growing into a sizeable business.
There’s been a bit of a learning curve but she has enjoyed the challenge and shared her story on social media.
People have connected with it and are willing her on. She’s become part of the product!
The business is now making good money and her products are loved by famous bloggers online.
It was hard to keep up with growing demand. But Jenny has made partnerships (carefully choosing who to work with!) So the pipelines are still moving.
Jenny hasn’t come close to running out of ideas, and the orders keep coming in.
What’s more, other fitness businesses want to collaborate. This includes a French business who sell yoga mats and clothing who want to pay her to come on-board.
Everything is in place to take the business to the next level. But Jenny is a bit worried about people copying her (which has started to happen).
She does some research and finds out that she can create and register her brand with a trade mark.
This will help her protect her business if people start to copy her more.
Jenny looks online to see how she can register a trade mark.
She’s going to keep it simple and call her business “Jenny’s”. It makes sense because she’s become such a big part of the brand.
There are a lot of different options to get it done, some cheap and some not so cheap!
Jenny wants to make sure that she’s going to be able to stop people copying her. She also wants to know what other ways having a trade mark can help her business.
The cheap websites don’t really tell her that much.
She decides she should probably “spend money to make money”. It’s like her food products, you can’t cut corners and put in lesser ingredients. “There’s no such thing as a free lunch after all!” And that willingness to do things the right way is what got her here in the first place.
Jenny chooses the law firm that looks like they know the most about trade marks and rings up their team.
After talking to someone on the phone, she is then put through to a solicitor. The solicitor talked to her about what she wanted to register and the protection she needed.
They said that they would have to do a clearance search to make sure that no-one else was using it.
It would also have to be not close to anything else – and she would have to avoid companies that are known to litigate a lot. Luckily, they know what to look for.
They also said to call it “Jenny’s” as a word mark might not be strong enough – and to maybe register the word as a striking visual logo. They help her make sure it’s distinct enough.
The solicitor also suggested registering it in different classes and jurisdictions. Which meant Jenny could use it to cover the yoga goods and expand into different countries, including France!
The solicitors submitted the registration. It went through first time and without opposition.
She also has some new great ideas about how to use the brand to grow her business even more.
And so, whilst Brian and Jenny are both owners of their respective trade marks.
Their business position differs greatly because of how they approached the trade mark registration process.
Jenny paid more money out right to contact experts to register her trade mark – but now is in a position where she can grow her brand and business freely.
Brian on the other hand spent less, but is in the unenviable position of having to now recover from having his trade mark opposed. It means he cannot expand his business how he hoped to – unless he spends a lot of money completely rebranding (and hopefully recouping some of his losses).
One of the most common instructions we receive are from self-filed trade mark owners.
By looking to save money at the start; they often find themselves in difficulty later.
Dealing with an opposition or defending a weak mark is taxing – both in time and money spent.
When you register a trade mark, you are laying the foundation for your business moving forward. Expert advice can ensure that you’re building your brand on solid ground.
Virtuoso Legal are delighted to welcome Gemma Wilson to Virtuoso Legal.
Gemma joins the Leeds-based after impressing on a short placement where she displayed exceptional aptitude. She will be working closely with Kirsten Toft and our IP Create and IP Protect teams.
Gemma has gained a raft of experience at a sports and entertainment law firm in Leeds before deciding to join Virtuoso Legal to further specialist in IP.
On starting her Virtuoso Legal journey, Gemma said:
I’m grateful to Virtuoso Legal for this fantastic opportunity to embark upon the next chapter of my legal career. I am excited about working within an industry-leading firm with such a wealth of expertise. I’m looking forward to working in such a supportive and collaborative environment and building on my practical skills in this unique and expanding area of law.”
On securing another prodigious IP talent, vice-principal Kirsten Toft said:
It’s absolutely fantastic to welcome Gemma to our team at Virtuoso Legal. When we look at bringing people into the team, we’re looking for a track record of exceptional work, a great attitude and most of all – a passion for IP. I’m really happy to say that Gemma has already shown all of these attributes and a lot more! From all of the team – welcome to the team, and we cannot wait to see what you do!.”
Welcome to the team, Gemma!
If you would like to speak to Gemma or any of our award-winning team, call:
Amazon is, of course, a massive marketplace for sellers (it accounts for roughly 66% of commerce in the US, which is incredible). Because of that it’s the place to be if you’re looking to sell goods online.
Where there is a big marketplace – there’s also a big opportunity for bad actors to look to take advantage through counterfeiting and infringement.
Because of this it’s important to Amazon to tackle the protection of brands on their platform. The Amazon Brand Registry plays a big part in helping the company to fulfil this promise; by giving them a system to take down counterfeits and infringers who piggy back off someone else’s reputation.
So if you’re selling on Amazon, it’s important to know how to list your products on there and protect yourself from bad actors by using of the platform’s most powerful tool.
What the tool does is make sure that the owner of a trade mark (for example “Ray-Ban”) are the only people who can sell these products on the platform. This means that owners of a brand (via a registered trade mark) can sell safe in the knowledge that other people won’t use their brand for profit.
I met the Amazon Brand team in Seattle recently and discussed the Amazon Brand Registry and other IP matters with them further. In the USA they are now beta testing a system called “Transparency” which is an effective track and trace labelling system that allows not just the tracing of product whilst in their hands but additionally permits the end users to authenticate the products they’ve bought.
The Amazon team also expressed an interest in allowing patent owners to register their IP and permit patent protection via Amazon – which would be an interesting next step. Frankly however, as an expert IP practitioner, I can tell you that this suggestion is fraught with far more problems than the registration of brands through trade marks!
All this aside, talking to the Amazon team had me thinking about the main things people need to know before entering the world of Amazon selling and particularly how to get the benefit of their brand registry. So here are the 9 key considerations for businesses looking to sell goods on Amazon.
9 Key Considerations for Brands on Amazon
So, what are the top tips from an IP expert when it comes to getting maximum protection for your brand on line?
1. Get a Robust Trade mark
Firstly, you need to have a registered trade mark. Once you have this you then need to go through the process of verifying with Amazon that this trade mark is valid.
Some trade marks have limited value as they’re not registered to obtain the required protection.
Logo marks don’t always protect brand names. Sometimes brand owners have not registered their mark in in the right classes, or they have allowed the brand to be removed from the trade mark register for non-use.
2. Protect Yourself Where You’re Selling
You will need trade mark protection for wherever you’re selling your goods.
If you only have a UK mark, then you can only protect it in the UK, even though you may have a big market in France or the USA.
Amazon, of course enables you to sell world-wide – so you need to be savvy about growing your protection alongside your profits.
Overseas protection can be expensive, but the right advice will help you to obtain optimum cover at a price within your budget.
Avoid self- filing trade marks overseas at all costs. Some say this can be done, but our experience is that the vast majority of people not only get it wrong but lose significant sums in doing so.
3. Logo or Word?
You need to think about whether you should register your brand as a word marks or a logo mark – or both!.
The Registry allows you to search against both to ensure that no one is copying you. With both items registered, you can usually protect your name and your logo so that if someone just copies your well known and carefully designed logo with a similar product but uses a dissimilar word, then you can still enforce your rights.
A good mark for Amazon will protect the most important brand attribute that is likely to be copied by counterfeiters.
4. Don’t be too Descriptive!
Brands which are descriptive, such as “shoe cleaner”, for shoe cleaning products are usually refused by the trade mark registry.
Typically the best brands avoid words which have anything to do with the thing they’re selling.
For example, Apple works for computers and technology because apples that you eat have nothing to do with technology (they’re kind of the opposite).
However, there are often ways that experts such as ourselves can obtain cover.
Though if you have a descriptive brand, you’ll find it much harder to enforce if someone infringes it.
5. Clear the way
Before applying for a trade mark, it is very important to do a professional search.
Whilst it is possible to do quick and cheap searches for identical marks, a full clearance search must be done professionally using specialist databases.
An expert will provide you with not only similar marks, but also provide a proper steer in relation to whether infringement is an issue and how likely it is that a business with a similar mark will oppose your application.
Beware! Many so-called trade mark clearance searches don’t do this important follow-on. Without it you run a much higher risk of having your trade mark opposed and knocked out before you’ve even started.selling.
6. Don’t be afraid to spend money
One of the biggest myths about registering your brand is that an expert will cost a fortune.
Most trade mark experts will give you an accurate estimate of costs early on and help you avoid the much higher costs of dealing with oppositions or rebranding if you can’t use the mark at all.
Experts can also provide you with strategic advice that will prove invaluable, especially if you encounter problems or where your brand is very valuable to you.
This kind of advice at the advent of a brand is invaluable and can save untold amounts down the line.
7. Nip Trouble in the Bud
If you do register a trade mark and you find someone copying you then enlist specialist help from the start.
Trade mark infringement and passing off are complex areas of law. Get them wrong and you can lose your trade mark or even worse be sued by someone else first.
When it comes to protecting your brand it is better to be proactive than reactive. This allows you to determine your next move, and not have it determined for you by the other side.
8. Stay Vigilant
They say that “the price of peace is constant vigilance”. So the cost of keeping your brand safe and keeping your prime place in the market is to constantly monitor it.
There are a number of people now (including us) offering a brand watching service that covers online trade. These constantly review new listings on marketplaces including Amazon – allowing you to address these before a serious amount of damage is incurred.
9. Don’t Rely on The Police to Sort it Out
Counterfeiting is a criminal activity.
The first line of defence may be civil proceedings, but some clients resort to other actions such as private criminal prosecutions to bring people to book.
Don’t rely on trading standards, HMRC or the police to take enforcement action.
Their teams are busy and their budgets and time for pursing these kinds of criminals are limited.
Instead, look for specialist advice in the area and factor in brand protection into your model as you see your revenues grow on Amazon.
This will ensure that you’re always able to keep your trade marks top of the pile – and reclaim lost profits that would otherwise land in infringer’s pockets.
So when it comes to selling on Amazon, yes it is fantastic to present your brand and products to a worldwide market.
But there is no such thing as a free lunch!
You have to make sure that you protect yourself from those that would be happily piggy back off your brand.
The best way to do that is to register with the Amazon Brand Registry.
And to do that, you need a good trade mark (or trade marks) which cover what you’re looking to sell – where it is going to be sold.
There is an initial cost in doing this – but it should also be something that you factor into your budget as you become more successful selling on the platform.
If you do that, you’ll be selling your branded good on Amazon happily for many years to come.
June was a month filled with IP intrigue. As the world of business got to grips with the new GDPR and trade secrets regimes – there were a range of other headlines that piqued the interest of IP professionals and the general public alike. Of particular note were two decisions – the first relating to the infamous Louboutin “red sole” trade mark – and the second to do with who is liable to pay for injunctions online (e.g. blocking websites.) Without further ado – here’s a round-up of all of June’s news.
World of IP Round Up: The Big Ones
Louboutin Walking Tall after CJEU Decision
There are some trade marks which have an aura of infamy in IP circles Whether it’s the shape of a Kit Kat, the stripes on Adidas’ trainers or (as in this case) the red sole of a Louboutin stiletto shoe. These trade marks represent some of the most interesting case law and perhaps some of the most interesting applications of IP law. In cases such as these, there remains the question – is such a thing enforceable as a trade mark?
After much ado across a range of different jurisdictions the CJEU court determined that Louboutin’s trade mark was valid – because whilst it in practice refers to a colour applied to the distinctive sole of a shoe – it is only registered as a colour (and only seeks to protect this colour). In theory this grants Louboutin an incredible amount of protection when it comes to shoes with coloured soles. We looked at the ramifications of this in our post here – but it was (like the shoes) all the rage in the news cycle.
In the UK ISPs Can Say “You Want this to Go Away? You Pay!”
Another massive decision was handed down this month in the UK’s Supreme Court. Jeweler Cartier had challenged BT and other internet service providers that it was unfair for victims of infringement to have to pay to take down websites where counterfeits were being sold – for example.
The Supreme Court decided however that, given that the majority of sites where digital piracy was taking place were already restricted, that it would be disproportionate for ISPs such as BT to suffer the costs of taking down sites where infringing activities were taking place.
Finally, never have any businesses commanded as many column inches over an IP dispute as the perpetual patent ruckus between Apple and Samsung. Both companies, as hotbeds of innovation, have been duelling over patents that underlie their popular smartphones for the last seven years – whilst end users looked on bemused.
Finally a “ceasefire” of legal bombardment has been agreed between the warring companies – bringing to rest a disagreement borne of Steve Jobs’ indignation at the Korean giants’ devices and software.
Case Study: Louboutin walk tall after “red sole” kicked back and forth in the CJEU
Never has a pair of shoes caused so much consternation in the courtroom as Christian Louboutin’s red soled stiletto.
Whilst footwear has always been a bit of a battleground for brands (with a host of recent cases proving this point ) Christian Louboutin’s “red sole” has reached a level of IP infamy hitherto unmatched.
Christian Louboutin is a French fashion designer, born on the 7th of January 1964. During his early career, he had become known for designing elaborate women’s shoes and eventually become Roger Vivier’s  apprentice. After much success and aplomb – freelancing at Chanel and Yves Saint Laurent – Louboutin set up a boutique in Paris in 1991. Since this time, the famous Louboutin stiletto-heeled shoe have become ubiquitous across red carpets and boardrooms worldwide.
Synonymous with the Louboutin stiletto heel (and the brand overall) is its red sole. This was first introduced in 1993, as per Christian Louboutin’s recollection:
My sketches were not reproduced exactly as I had designed them and I couldn’t figure out why. The two-dimensional sketch was so powerful on paper, but when we turned into a three-dimensional object, it was somehow lacking energy. Frustrated after having tried different things to liven up the design, I spontaneously grabbed my assistant’s red nail polish and painted the sole. I instantly knew that this would be a success!”
Soon, every Louboutin shoe would adopt the red sole and it would become the designer’s calling card. Generally, this now takes the form of a single leather piece of leather affixed to the bottom of the shoe.
The red (specifically, Pantone 18-1663) sole is protected as a trade mark in several countries, and has become an incredibly strong brand asset for Louboutin and, as is typical, the subject of a range of trade mark infringement proceedings.
Many of these infringement proceedings have been predicated upon the validity of the trade mark – which is the subject this post.
Within the portfolio of legal action around this trade mark were proceedings brought by Louboutin, based on their Benelux trade mark, against Netherlandic shoe retailer Van Haaren. The alleged infringing article was their “5th Avenue by Halle Berry” – which as you might expect was also red-soled women’s shoe.
In the process of litigation, The District Court of the Hague proposed to ask the European Court of Justice (CJEU) a range of questions to identify whether the trade mark could be considered valid.
This led to the key question being posed:
Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive C 1 (‘Form’, ‘vorm’ and ‘forme’ in the German, Dutch and French language versions of the Trade Marks Directive respectively) limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?”
Louboutin’s Trade Mark
As such, the key to the case was whether Louboutin’s Benelux trade mark (above) for their red sole was covered by the prohibition of the registration of shapes “which give substantial value to goods”.
The question sought to find out whether the concept of a three-dimensional “shape” (including volume, contours etc.) include other properties – in this case, colour.
Had this been found to be the case – Louboutin’s trade mark might have been ruled invalid. Interestingly, the Advocate General Spuznar’s opinion led some to believe that the mark would stuck off – stating a trade mark combining colour and shape may be declared invalid or revoked if previously granted.
In a press release on the 12th of June 2018, the CJEU stated:
In today’s judgment, the Court takes the view that, since the trade mark directive provides no definition of the concept of ‘shape’, the meaning of that concept must be determined by considering its usual meaning in everyday language. The Court points out that it does not follow from the usual meaning of that concept that a colour per se, without an outline, may constitute a ‘shape’.
Furthermore, while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product.
In the present instance, the mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration.
The Court also holds that a sign, such as that at issue, cannot, in any event, be regarded as consisting ‘exclusively’ of a shape, where the main element of that sign is a specific colour designated by an internationally recognised identification code.”
As such, the court found that a colour without an outline cannot qualify as a shape.
Whilst the depiction of the shoe in the registration provides an outline (and thus a shape) to how the colour is applied to the goods – the trade mark did not seek to protect the shape, but simply demonstrate the part of the product to which the protected colour is applied.
The application, in fact, explicitly states that it does not seek protection over the contour of the shoe.
Furthermore, as the registration covers a specific Pantone colour – the sign is viewed as not consisting “exclusively” of a shape.
As such, Louboutin’s Benelux trade mark remains valid and in force.
Why Is This Important?
There are a number of reasons why this outcome can be seen as a significant one – not only for Christian Louboutin, but the wider field of non-traditional trade marks and their enforcement.
1. Colour Marks and Monopoly Rights
Trade marks are monopoly rights, which grant their rightful owner exclusive use of the sign in the designated classification and jurisdiction.
It’s noted that the scope of colour marks, when compared to a word or logo, is quite wide.
This is because the criteria for determining infringement is based only upon similarity within the abstract concept of colour. Thus, it is much more difficult to determine when infringement has occurred.
When considering infringement of a word mark might review more definitive elements of the sign such as similarity in: look, phonetics and concept. In this case, the court would simply look at the application of a colour to the sole of a shoe.
As such, one might ask, at what point does a colour become dissimilar from Louboutin’s registered mark? Would a stiletto with blue sole be considered unique? In this way would an analogous mark be considered similar?
Furthermore, these questions may then extend to similar marks on dissimilar goods e.g. sporting apparel or other theoretically infringing examples.
It remains to be seen how Louboutin will enforce its trade mark, and whether it will test the theoretical outer limits of the scope of protection it may offer or avoid the risk of overexertion.
2. Valid (but only because of the small print?)
Finally, the judgement is particularly interesting insofar as it remains valid because of the detail of the registration – which concerns only the colour and its application to a certain area of a product.
It has been determined that the sign as registered is not a colour and shape – which is effectively prohibited as a registered mark.
In effect however, it could be argued that in practice that this is what the mark is – in so far as functionally this is what the trade mark protects in practice. It is simply just not present within the detail of registration or critical view.
Therefore, it might be seen that Louboutin enjoy many of the benefits of what is – in all but registered detail – a prohibited sign (though of course, the litigation would have to navigate this detail in each case which might be an Achilles heel to any of Louboutin’s arguments).
However, to the lay person, to whom this sign is intended to reach, these arguments are irrelevant.
Crucially, this stance may set a precedent for others looking to achieve a similar level of protection over their product category.
Summary: is the mark reasonable?
It remains that non-traditional signs such as Louboutin’s “red sole” colour mark are a double-edged sword.
Whilst, in theory, the scope of protection is high allowing the company to exert its rights across its product category – this comes at a price.
The broader scope of protection results in a wider net of infringement to navigate – and which rely upon intrinsically indeterminate criteria of similarity in the abstract field of colour. This can be expensive to enforce, and the imprecision of the mark’s limits means that it will always be, in some regards, contentious.
For an industry stalwart such as Louboutin, this is perhaps beneficial, as it allows a market leader to maintain its hegemony through selective enforcement. This is especially so as Louboutin’s and the mark’s reputation – further buttressed by this litigation – likely categorises it as “well-known”. Therefore, the designer is potentially able to enforce the mark very broadly.
In spite of the academic position, the perception of the sign in the minds of the general public can not be understated. The “soft” power of the mark of its perception in the market extends beyond the “hard” power of how it might be enforced – which in itself is remarkably broad in its potential scope. in light of this judgement, threat of potential litigation grants Louboutin an incredible competitive advantage in the deployment of the mark across their product category (and potentially even wider). Companies planning to create shoes with coloured soles may think twice; all the while Louboutin benefit from an increasing brand cache and freedom in their design.
Thus, the question as to whether the mark is reasonable lies outside of it’s registered scope – and in the operational effect the mark will have within its marketplace which is furthermore contingent upon Louboutin’s enforcement strategy. Thus, Louboutin’s in-house counsel are likely to have seen the last of the “red sole” conundrum – and that with such marks there will always follow endless litigation to determine exactly what rights can and should be enforced. For that reason, for most, such a mark would be more trouble than it is worth. However, for a market leader like Louboutin this is likely a price that they’re willing to pay.
Trainee solicitor (and fashion law enthusiast) Jordan Davies commented:
This case is interesting based on the long stranding history of Louboutin and the highly coveted, but seldom allowed colour trade mark. Stiletto shoes have always been the cornerstone of the brand and therefore, it could be said that the brand will therefore benefit from a combination of shape and colour although that is not explicitly registered. However, give that the Louboutin range spans much further than skyscraper heels, the colour of the sole is much more valuable to the brand than the indirect benefit of any combination mark. It will be interesting to see how far Louboutin will push the boundaries of the registration and I, like many others, have my popcorn ready for when the drama continues to unfold.”
Tesla Inc.’s journey began 15 years ago when it was founded in 2003 in San Carlos, California, United States.
Co-founders Martin Eberhard and Marc Tarpenning developed an all-electric two-seater car propelled by alternating electrical current (AC). This led them to the belief that electric cars had the capability to become a scaleable and necessary future for human transport.
They decided to start a car company calling it ‘Tesla Motors’ (which would later become Tesla Inc.).
A year later, on the 24th April 2004, Tesla Motors received the Series A funding efforts from Elon Musk the CEO of SpaceX – a company Musk had founded earlier in 2002. After initially performing the role of chairman – Musk would become heavily involved in the company from 2008 onwards as CEO.
Initially, the company focused on the niche sports-car market with the production of the Tesla Roadster. This car which acted as proof of concept and has since led to a focus on producing an affordable mass market sedan in the form of the “Model 3”.
15 years on, Tesla has grown considerably and in 2014, Morgan Stanley called it “the world’s most important car company”.
Tesla now not only builds all electric vehicles but is also actively involved in scalable clean energy generation and storage products which support this aim (e.g. Musk’s SolarCity). As such, the company, whilst producing electric vehicles is also an active pursuant of systemic and infrastructural changes that will usher in a more sustainable future for human transport.
Since being founded, the company has risen to a market capitalisation of around $48 billion and the brand’s moves continue to draw daily attention.
Brand Breakdown: The Trade Marks
At the heart of Tesla Inc.’s brand in the UK are three registered trade marks. There is the word mark ‘TESLA’ (mark EUIPO005678479 in class 7,9 and 12), its “badge-style” logo (mark EUIPO005678602 in class 7,9 and 12) and a graphical version of its word mark (mark EUIPO008741225 in class 12).
The first two marks protect Tesla’s principle assets, in machinery (class 7), electrical and scientific devices (class 9) and vehicles (class 12). Where as the mark graphics of the word mark only protects their identity of their assets in vehicles (class 12).
Analysis: Messages, Meanings and Markets
When looking at a brand, a distinction should be made between:
the products and services offered under a mark; and,
the broader meanings the brand promises customers for buying these products and services
In the case of “Tesla” there is some what of a difference between the products that it produces (electric cars and the infrastructure for them to be adopted en masse) and the meanings the brand produces that coincide with this.
Let’s take a look…
‘TESLA’ word mark
The co-founders used the name ‘Tesla’ to pay homage to Nikola Tesla (1856-1943), the Serbian-American inventor and electrical engineer.
According to a post from Tesla’s website:
‘Without Tesla’s vision and brilliance, our car wouldn’t be possible. We’re confident that if he were alive today, Nickola Tesla would look our 100 percent electric cars and nod his head with both understanding and approval’.
Nikola Tesla, was a pioneer in electrical engineering and developing the alternating current (AC) which would be subsumed by Thomas Edison’s direct current (DC) in the “War of the Currents”. This “war” famously leading to Edison bizarrely zapping an elephant in efforts to prove that AC was unsafe (even though DC would have had a similar lethal effect).
As a historic figure with a “rags-to-riches-to-rags” story, Tesla, whilst misunderstood in his time, is now regarded as a genius noted for especially eccentric out-of-the-box thinking.
Bearing all of this in mind – the name offers the company some favourable significations:
As with the man, the company’s primary driving-force is electricity – there are few other names the company could have chosen that would communicate this as clearly
Like their namesake – Tesla Inc.’s mission is to disrupt hegemonic market actors (e.g. the automotive sector) as an underdog through prodigious innovation. Note: the company is not called “Edison” which would signify a more “establishment” than “underdog” or disruptive outlook.
Tesla’s Logo Mark EU005678602
Tesla’s logo mark consists of a graphical representation of it’s word mark (as below) a “T”-shaped graphical glyph on a crest. This crest also has a “3D” gradient applied to it. This “T” appears (minus the badge and word) appears on each Tesla car as it’s crest or emblem.
Many in the past have theorized what the “T” might resemble. This mystery was solved when Musk stated in 2017:
“Similar to SpaceX, the T is like a cross section of an electric motor, just as the X is like a rocket trajectory” – 19th of Jan 2017
This was demonstrated by a respondent to Musk’s message who shared the image below found on an earlier Quora post theorizing about the logo.
Notably, this is not something that would be immediately obvious to the public upon viewing – who would simply see a stylised “T”. Thus it’s more of an “easter egg” for electrical engineers and enthusiasts.
To the lay person however, the stylisation of the “T” glyph however, carries some implicit meaning, as it can be seen to display both animalistic e.g. like a fang, or claw; or futuristic qualities.
The overall inference that can be taken from either of these (and that it is in fact based on the cross-section of an electrical motor) is a sense of dynamism.
Any way you read it, this connotation of dynamism goes naturally with the brand in its actions as a corporate entity as we as in the products the company sells.
Visual word mark
Tesla’s Visual Word Mark EU008741225
Finally, Tesla Inc. has a registered visual representation of it’s word mark.
Unlike the logo “T” glyph this has solely “futuristic” connotations.
This is achieved through use of negative space and the assembly of a set of standard graphical components – namely equally weighted vertical lines, and horizontal lines with hewn edges.
Each glyph is composed of identical elements, save for the “S” which features an inverted horizontal element at the bottom (this was likely chosen to create a sense of visual balance across the entirety of the configuration).
The subtle way that this comes across as futuristic at a glance is because:
Use of negative space expresses the glyphs without any extra adornment
The use standard elements subtly signify a machine-based generation and configuration (e.g. as if “punched out” or machined rather than handwritten e.g. Ford)
Digital “feel” of these elements in particular. Edges are softened but still of standard width and hard edges are not omitted entirely (e.g. on the “S” “L” and “A”)
All of these factors are consistent with a minimalist aesthetic – which itself has become implicitly associated with utopian futuristic associations.
Few in the automotive sector opt for such a futuristic feel with their brand elements. And those that do (e.g. Honda, Lexus and Audi) do not follow this aesthetic as closely as Tesla do.
Brand Breakdown 002 Tesla – Summary
The sum of all of this is a high degree of congruity between Tesla’s registered trade marks (brand assets), it’s products and broader business activity. (And not to forget Elon Musk’s personal brand and activity – which is inextricably linked to the fortunes of all his ventures).
The brand message reinforces the actions of the company (and vice versa) – which is the most favourable way to build brand value and reputation. Note this is why bad news, or company activitythat goes against the propositiondriven by the messaging can be a big blow. Which is why companies do everything they can to protect and fulfill the promise set out by their brand.
As such, Tesla may be seen as an exemplar of a company whose brand elements are strong – but who also “walk the walk” when it comes to presenting an exceptionally dynamic and futuristic brand.
I think it’s safe to say that May 2018 will be a month that we all remember for quite some time!
For us at Virtuoso Legal, this meant a few things:
1. The deadline for the law that shall not be named in this newsletter unless absolutely necessary…
2. A trip to INTA conference in Seattle where I was delighted to catch up with the best in our business
3. Our end of year!
So lots to talk about!
Let’s get started.
Liz in America
It was brilliant to head over the States this month and attend the INTA conference.
A couple of really interesting topics particularly caught my eye which we’ll be writing about in the coming months – so keep an eye out for that.
Trade marks, certification marks and protecting geographic origin
The new protections coming into place for luxury brands
New thinking on how to prove infringement online (the need to keep up)
What was perhaps more of a treat was meeting up with other professionals from around the world and “talking shop” – as well as bringing a slice of the Royal Wedding over the Atlantic
(Thanks to Clare from Hetties’ Tea Rooms for helping us with the very special commemorative tea and biscuits pack!)
It really was a great experience and has given myself, and by extension the firm, lots to think about in the coming year.
For those with a more visual appetite, I have included a few choice photo shots from my time there at the end of the newsletter.
Are you ready?
Now enough about the past – it’s time to look to the future.
Are you a business owner (or know a business owner) who’s looking to expand their operations overseas now or in the future?
This is truly one of the most exciting times in business growth – but also involves treading into a lot of unknown territory.
As such we’re delighted to announce a FREE event in London on the 14th of June where we will be speaking alongside business expansion experts Blueback Global and LSS Relocation.
The event will cover:
How IP can be used to build momentum in a new market
How to set up an international entity, and the details you must know
How to correctly manage sending employees to other countries
Our very own Philip Partington will be presenting. Following the talks there will be time to network with other businesses looking to go global.
So if you’re looking to expand now – or have plans to do so in the future this is not one to be missed, really!
For more details about the event and to reserve your place – click the button below.
May also had a couple of articles for your next coffee break…
How To Expand Your Business Globally: 3 Key Considerations
Before announcing our big event with Blueback Global and LSS – I asked Martin to take a quick look at what it takes to expand a business globally. Not surprisingly, this post looks at the three main areas that will be covered by our speakers at the event!
Virtuoso’s World of IP Round Up May 2018 | GDPR and INTA
Finally, amongst all of the happenings this month there was a raft of big news in IP. Martin’s round-up this month provides an overview of what happened at INTA, some of the considerations still floating around GDPR and some other big news that, relatively speaking, went under the radar this month.
We are delighted to have wrapped up another financial year with some incredible growth – and cannot wait to lay down the plans to make Virtuoso Legal a bigger and better force for good in IP as we move into the next year.
Hope you all have a fantastic month – and remember, we’re just at the end of the phone if you need help with anything.
Bye for now!
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