IPO doesn’t see anything wrong with Specsavers’ trade mark (Brands & IP Newsnotes - issue 3)
23 October 2016
Specsavers has managed to get its application to register “should’ve” (as in, “should’ve gone to Specsavers”) past the examination stage at the UK’s Intellectual Property Office (IPO).
If the application successfully navigates the opposition stage, it will be registered, thereby limiting the ability of third parties to use the word “should’ve” in relation to the goods and services for which the mark is registered.
Applicants seeking to register commonplace or everyday words can face difficulties in obtaining trade mark protection. Understandably, trade mark registries are reluctant to grant the powerful monopoly rights that come with a trade mark registration in respect of such words. So it’s not uncommon to reject such applications on the basis that the marks are not sufficiently ‘distinctive’ or fail to identify the applicant as the source of the goods or services.
Whether the tide is turning remains to be seen. The ‘should’ve’ application is a timely reminder to brands that have associated certain words with themselves or their services, may be able to protect against the use of those words by competitors. Carlsberg has registered “probably”, Orange has registered “the future’s bright”, Nestle has registered “have a break” and now Specsavers is seeking to register “should’ve”. What could you register?
This article was first published in the Brands & IP newsnotes publication - issue 3.
Brand owners gain another tool in the war against counterfeits (Brands & IP Newsnotes - issue 3)23 October 2016
Brand owners will welcome a ruling from the CJEU over the summer that an operator of a physical marketplace can be an ‘intermediary’ for the purposes of Article 11 of the IP Enforcement Directive.
Can you tell what it is yet? (Brands & IP Newsnotes - issue 3)23 October 2016
Those looking to register shapes as trade marks have had a tough time of it recently. Attempts to register the shape of a Kit Kat, various bottles and a toothbrush have all recently failed in the UK and EU.
Karen Millen - lessons from an SPA (Brands & IP Newsnotes - issue 3)23 October 2016
Karen Millen, founder of the Karen Millen fashion brand has lost a High Court challenge to use her own name for homeware in the US and China.
Pay to play (Brands & IP Newsnotes - issue 3)23 October 2016
Over the last few years, the Ministry of Justice has sought to fill the gap in its funding through repeated increases to court fees.
Pretty fly for wi-fi (Brands & IP Newsnotes - issue 3)23 October 2016
Those who provide access to free wi-fi networks will be breathing a sigh of relief after the CJEU’s judgment this September that providers of such networks can benefit from protection under the E-Commerce Directive.
Hyperlinks – the saga continues (Brands & IP Newsnotes - issue 3)23 October 2016
The CJEU has issued another judgment on copyright infringement and hyperlinking; this time in relation to linking to unauthorised content.
And finally...Brexit (Brands & IP Newsnotes - issue 3)23 October 2016
Speculation about Brexit’s impact on intellectual property rights caused the UKIPO to release its guidance note “IP and Brexit: The Facts” in August.