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Podcast: Trademarks and IP de-mystified with Chris McLeod from Elkington & Fife

Tom:

Welcome everyone to the Lighthouse London podcast. Thanks for tuning in. I’m Tom. We’ve got a pretty big event right now, as well as a special guest who isn’t from Lighthouse. We’re attempting the first ever three way Lighthouse conversation. I’ve got Laura here.

Laura:

Hello.

Tom:

Laura is one of our front end developers, and we also have Chris McLeod from Elkington and Fife. Hello.

Chris:

Hello.

Tom:

Thanks for coming in.

Chris:

Pleasure.

Tom:

I think it’s best to … I’ve been reading up on about what you do, but essentially you work in the realms of IP. Maybe you could give us a background of the company and what you do for them.

Chris:

Yes. Elkington and Fife is a patent and trademark attorney practise. This means that we advise clients on how to protect all aspects of intellectual property. The firm is over 100 years old. I haven’t been there quite that long, and we have two offices. Ones in London and one is in Seven Oaks in Kent. Probably about 70 staff in total. The majority of staff work on the patent side, but we also have a very strong trademark practise as well, and that’s the practise that I lead.

Tom:

Okay, cool. What kind of companies do you work with usually?

Chris:

A very wide variety. Some of my clients are single estate wine producers, and some of them very big companies like the Formula One racing company.

Tom:

I was looking through the site and I kind of like the tagline, “From the exceptional to the every day.” It sounds like you do a really broad range of stuff.

Chris:

Absolutely. The key thing is that all clients of any size have some protective IP generally. It’s trying to guide them through how they get the best protection without spending unlimited amounts of money. That’s the paradigm.

Tom:

It sounds like something that could get quite expensive. The reason for having you in today is this is something we get asked quite a lot by clients. We work with a lot of [inaudible 00:02:30] a lot of people are building bespoke tools and often in our conversations the idea of how to protect what they’re building or the brand they’re creating comes up a lot. I’m actually really happy you’re here because I never know the answer to these questions, and having an expert here is going to be … Or at least I’m going to sound a bit more knowledgeable next time someone asks.

Laura:

I suppose let’s begin at the beginning and such. What is a trademark?

Chris:

A trademark could be defined most simply as a badge of origin. To give a concrete example, if I go into a shop and buy a Mars bar, the fact that, that is a branded Mars bar tells me what I’m going to get. I don’t want something that’s healthy and full of quinoa. I want something that’s going to give me a very quick hit of lots of sugar and fat allegedly. It’s a distinguishing badge really that just helps brands distinguish … Yeah, distinguish, distinguish. It helps them to differentiate themselves from their competitors.

Laura:

Does it have to be like a … Is there anything that it has to be like a logo mark or it has to be some type of image? Is there anyway that you have to submit it in terms of this is what defines what it is as a trademark?

Chris:

The law defines a trademark in very broad terms. It can be words, colours, images, it can be sounds. For example, the roar of the MGM lion at the beginning of the films, that’s a trademark. Tarzan’s cry, which I’m not going to do today, is also a registered trademark. Smells can be trademarks. That’s quite rare but when the law changed was back in the 90’s to broaden the scope of what a trademark could be. There were some very inventive applications. One I remember was the smell of beer applied to dark flights, and that was registered. The other one was the smell of freshly cut grass applied to tennis balls, and the other one was tyres that smelled of roses.

Tom:

Tyres that smelled of roses?

Chris:

Yeah to counteract the inherently rubbery smell of tyres. They applied the-

Tom:

They’d be the only people who are allowed to have tyres that smelled of roses?

Chris:

Yeah. The issue is that it’s really difficult to have a definable scope of protection. For example, if I’m thinking I want to protect my dart flights and I need to know what smells are already out there, if the scope protection is just the smell of beer, what is the smell of beer? Is it the smell of lager, bitter, fresh beer, stale beer? The initial raft of smell applications died out pretty quickly and now they’re quite rare, but the scope is really pretty broad.

Laura:

How does this differ from other methods of IP protection from a patent or something like that?

Chris:

A patent is, and this is a very, very broad generalisation, and I hope my patent colleagues aren’t going to hear this, but it really applies to inventions or improvements on the state of the art with regard to technology etc. For example, if you have a pharmacy, it’s called Pill, that is known to treat headaches and your research shows that it also treats conjunctivitis should we say, then that second application is something that could be protected by a patent, but it doesn’t have to be that complicated.
If you think of the work mate, which was a very popular DIY device back in the 80’s, and I think you can still buy them, that was patented because it basically simplified DIY to such an extent that it was a huge leap in helping people to cut bits of wood, etc. There’s a very broad scope on patents. There are also certain types of IP, which come into existence automatically. That would primarily be copyright. Any work which broadly could be define as artistic, so that could be a painting, a book, a sketch, a song, a poem or even just a sheet of instructions, all of these attracts copyright protection automatically. That’s a very important thing to bear in mind, particularly at the outset of a creative business that a lot of our work will benefit from automatic protection.
As long as you’ve got some type of record of it you don’t need to put it in an envelope and post it yourself. Those days are gone. If you’ve got records on your service sharing this was the date when the first version of an app, for example, was create and this is what it was supposed to do and it was going to make space travel possible in the first instance, Uber into space or something like that, then someone comes along and says, “I’m going to do Uber into space,” you can say, “Well, to the extent that I had an embodiment of that before you then I’ve got some copyright protection first.”

Tom:

With the … of natural copyright stuff you get it lasts for a certain time is that right because you always hear about songs and things that have fallen out of copyright.

Chris:

Exactly. The primary length of protection is the life of author plus 70 years. There are quite complex laws about what happens when something is applied industrially. Yes, songs do eventually fall out of copyright. I think it was Cliff Richard who lobbied for the what used to be 50 years on top of the life of the author to extend that to 70. Yes, copyright does right out and that’s why you’ll find after a certain period that there’ll be a raft of 1960’s soul complication son the original label because-

Tom:

People can now get them for free.

Chris:

The copyright is gone, yes, and books as well. When they fall out of copyright it’s a free for all.

Tom:

That’s why you get the classics for really cheap on Amazon and stuff like that.

Chris:

Yeah.

Laura:

With copyright and trademark then if I were to say I designed the nike tick that would be protected by copyright before I then made it a trademark and protected it in that way.

Chris:

Absolutely, yes.

Laura:

Maybe could you explain about what is it, how a trademark works and why you would add that as well.

Chris:

You can have protection for a trademark without registering it. Particularly in the UK there’s a common law, which is a law without a…. It’s just arisen through case law in history. The law of passing off, it goes right back to cases which involve footballs, when footballs made a tonne, and bottled drinks with a glass stopper rather than how they’re sealed today. These are cases where … In the drinks case there was one company was trading under a very similar name to another and the competitor, the second on to the market, I think snails were found in the bottle. This somehow damaged the reputation of the market leader. The case law essentially says that if I have used my, for example, the night tick for a sufficient period of time I have established what’s known as good will, and that is define as quite catch all as the attractive fore that brings in custom.
My use of the night tick say for 10 years means that I’ve got a protectable good will, and if you start using the tick say on sports wear as well you are causing damage to that reputation by causing a misrepresentation to the public that somehow there’s a connexion. That is quite a hard hurdle to get over because it’s all based on evidence. You’ve got to establish number of years use, extent of use. You’ve got to pull together a lot of evidence. By contrast, if I register the tick that gives me a monopoly right. Not a right to prevent copying. A monopoly right granted by the government for an initial period of 10 years. I can say, “Here’s my registration. It covers sports wear. You’re using a very similar tick on sports wear. That’s an infringement.”
Then you, the defendant have to say, “Well, no it’s not because I got there first,” or, “No, it’s not because the tick is really obvious.” It’s a right to prevent copying under passing off with a registered trademark, which is potentially very cheap in deed. If you do it through a reputable firm, such as us, then you could get a trademark for about £500 and that will last you for 10 years. That would be covering the whole of the UK for 10 years.

Tom:

Do the cost go up when you talk about a global trademark and that kind of thing?

Chris:

Unfortunately there isn’t yet a global trademark. That’s one we could probably collaborate on. You have got EU wide protection with a single trademark. That would probably cost around say £1500. Again, that would last you for 10 years across our present all 28 member states. That is dirt cheap as well.

Tom:

Yeah, I was expecting that to be a lot more actually.

Chris:

It came into being in the mid 90’s and was deliberately priced to make people move away from national protection, which is still available in all EU member states. But to attract people to this single EU trademark they priced it low and it’s been amazingly successful.

Tom:

There may be that there isn’t an easy answer to one, but when should someone start considering registering a trademark?

Chris:

I think with startups money is absolutely critical, but you will find that most chartered trademark attorneys, that’s what I am, a chartered trademark attorney, through our institute your clients or indeed you could easily find a chartered trademark attorney who would give you an initial steer, probably half an hour free of charge. I would say at the earliest point possible just consider what about this project can be protected with a trademark. For an app, for example, the icon is generally going to be critical to identifying the brand. That’s something you would probably want to think about on the outset. Also, the name. If you think about something like Uber, Uber means absolutely nothing in relation to taxi style services a part from the face that Uber has used it so much.
But at the outset you’d be thinking, “Let’s go for the logo and the word Uber,” because that’s going to be critical. I think it’s something to factor in. I know at the outset things are going to be up in the air and money is going to be tight, but I’ll just say if you can get a trademark for as little as £500 then it’s something to do because if you’re trying to unravel something later on, say someone leaves and thinks, “Well, it was me who came up with the idea. I’m going to register it.”

Tom:

Oh, I see. Someone could leave and then take it for themselves if there wasn’t an agreement in place already. That’s the kind of risk you’re facing.

Chris:

Exactly. Often agreements at the outset are very, very loose. There are no contracts. It’s friends getting together to generate a new business. You fall out, someone walks away and thinks, “Well, actually I came up with it and Blogs wasn’t there so I’m going to go and register it.” The other people, they want to oppose, you get into a fight, and the trademark office or the court decides, “Well actually it was all of you and none of our’s got a separate right.” Blogs has to buy it off his mate to get him out of the picture.
The courts have had lots and lots of disputes about trademarks involving musical groups, usually ones from the 60’s, 70’s, maybe the 80’s and Bucks Fizz. Kids ask your parents.

Tom:

I know who they are. I know who they are.

Laura:

Me too.

Chris:

They’re back in fashion I hear.

Tom:

I don’t know about that.

Chris:

The fan club’s still going. They had a big dispute and some of the band were continuing to tour under the name Bucks Fizz and others didn’t like it, as you might well understand. There are lots and lots of cases where bands never at the outset dealt with the core IP, the band name. Now musicians and bands are much more business aware and they realise that there’s money to be made from the branding side. Sorting everything out at the outset is really, really important.

Laura:

I suppose that’s quite good for investors as well because as a start up you’re always looking for investments. If you got that level of protection then it could help.

Chris:

Absolutely. If you watch Dragon’s Den they’re always wanting to know, “Have you got a patent? Have you got a trademark? Have you got a design,” and particularly with private equity, which is what Dragon’s Den’s all about really, it’s injecting cash. Their lawyers want to see registered IP on the ticket. If you’ve got none, well that might be okay because it’s a computer programme or it’s all copyright protected or whatever. The more registered IP that is on the ticket the more comfort it gives to private equity because then they can take a security interest over the registered IP, which means that the owners can’t then sell it on without the bank’s interest being included. I think it’s the earlier the better, and he would say that being a trademark lawyer.

Tom:

That’s interesting though because a lot of people do ask us about this stuff. I think the assumption is that it’s super difficult, super expensive, and some of you don’t need to think about early. Hearing that, I think and even that you can get a free consultation earlier is something that’s really news to me, and certainly our story on this matter will change from now on.

Chris:

The Chartered Institute of Trade Mark Attorneys or CITMA, they also run IP clinics. You can book an appointment with a chartered trademark attorney, and again, have a free consultation and they will run through the advice on the various IP aspects of your project. I’ve done quite a lot of those myself and they are very, very useful to help people crystallise what it is they own and how they can improve their position. I think people tend to concentrate on, “Let’s get the domain name. That’s critical.” Well, it’s not really. “Let’s get the company name registered. That’s critical.” Well, likewise, it’s not.
As an example, if Mars.co.uk wasn’t registered for any reason I could register it as a domain name. If I then started selling confectionary on the website Mars would on me within 10 seconds. Well, maybe a bit longer, but I wouldn’t succeed in doing that. Yeah, you can register the domain name but can you use it, and that goes back to the trademark. It’s can you use it, can you register it?

Tom:

It use to be man years ago that people would sit on domain names for years. Going back 20 years, 10 years people would register Mars.co.uk or Mars.com and would be able to sell them for big sums of money to the corporations or people who wanted to buy them. That feels like it’s died a lot over the past few years and it feels like that might be to do with trademarks and the realm in which you go. If you can prove that you own that brand name you can actually just take the domain name. Is that correct? It’s an easier process now.

Chris:

Yeah. That’s a good summary. The dispute resolution procedures do vary depending on the domain name, but essentially you can sit on a domain name, but if you start to hold the brand owner to ransom, you say, “I want half a million quid or I’m going to keep it for my Budgie collection.” I don’t know where that came from. I don’t have Budgie, but that’s the kind of reason that people come up with for having a domain name, which appears to be directly linked to a brand or a brand owner. You can still sit on them. You can try and negotiate a price, and that’s okay, but if you’re really holding someone to ransom you’re not going to succeed and ultimately you won’t be able to use it unless you can show that it’s really legitimate.
As far as company names are concern, yes it’s important in some senses to register your company name, but again, I can register Nike Christ McLeod Limited, but I couldn’t then trade as Nike Chris McLeod Limited because of the Nike element. Again, go back to the trademark. That brings in another important point, which is you should check when you’ve come up with your name whether it’s free for use primarily and whether it’s free for registration. There is a free search that anyone can do on the website of the intellectual property office. It is quite basic. We can do more sophisticated services. If you’re looking for … If you think, “I want to call it Uber,” for example. You key in Uber you can see that whoever owns Uber has got lots of registrations. You walk away and you think of something else.
Really at the outset is a great time to do it because then you haven’t invested time, money, love your heart into this brand that everyone thinks it’s great only to find out the minute you’ve done this search, it’s not free.

Tom:

That stuff comes up loads because we deal with lots of people that’s starting new businesses, and naming your new app or website or whatever is almost impossible because every .com is gone and there’s a conversation around that as to whether that’s even important anymore, but finding a decent domain name, a decent company name that someone hasn’t used in the past is pretty tricky.

Chris:

We do a lot of clearance work for pharmaceutical companies and that’s a really crowded market. They come up with almost unpronounceable words, and we have to then spend … We’re paid for it. We go through piles and piles of trademark search reports to consider because it’s not just whether they’re identical. It’s whether they are confusingly similar, which is a great test for lawyers and courts to argue about, and then give an opinion on is there an issue here? Is the risk acceptable? It’s something that you can do yourself when you’re thinking, “Is the identical mark taken?” Beyond that, you really need some context given by someone who does it day in, day out.
Again, that has a cost, but as a rule we will always tell people up front what the cost is going to be. We won’t just say, “It’ll cost this. I’ve done it. Here’s my bill.” That’s not the way to generate future business. But it’s important to consider, “Can I use it and can I register it?” Can I use it is probably question number one. If everyone loves it and you’ve got investment coming in they’re going to say, “Have you checked whether you can use it?” If you say, “Yes, we have and we’ve registered,” then job done.

Laura:

Are there any common mistakes or things that people should think about or avoid when they’re going for this process or any tips you can give them?

Chris:

Always engage your trademark lawyer.

Laura:

Good advice.

Chris:

I do mean that. My best example would be in relation to UK trademark applications. It’s possible for anyone to file their own UK trademark application and other applications. It’s an online form. It’s really user friendly. You can pay with a credit card. Once UK applications are published they go into an electronic trademark journal so people can check that and see, “Is it too close to my mark, my client’s mark? Do I want to threaten opposition?” In the trademark journal, which we look through, you see lots and lots of applications filed by unrepresented companies or individuals where the mark or the scope of protection is clearly not what they wanted to achieve.
They might have drawn the logo and then taken a picture of it with their iPhone and then uploaded it. Their protection would be for a very rough and ready version of the logo, which is probably not what they wanted to achieve. If they’ve done it with a proper jpeg, high resolution, that would be what they want. But also the classification of products and services is really quite arcane. It’s 44 classes. Think of it like a filing cabinet and you think, “Where do sweets go? Okay, that’s class 30. Where do restaurants go? Okay, that’s class,” whatever, “40 something. 43,” but you’ll see that people might just go for the production of confectionary and put it in class 43, when what they actually wanted was the confectionary itself in class 30. It’s thinking, “I will save money by doing it myself,” and then getting it wrong or not totally right, and then when they come to try and enforce or get investment on the back of having registered rights they’ll realise that actually they cut corners.
The other thing is not filing for example the trademark application in the name of the right person or company. You might think, “Well, Fred’s asked me to do it. I’ll do it in my name. I’m the head of IT.” Five years later the head of IT’s left. You realise the application is owned by the head of IT and he now lives in the Amazon and doesn’t speak to anyone and you can’t get a hold of him because he doesn’t got a phone. That’s a ridiculous example. I think you should always think if we’ve got a limited company and if it’s a holding company with subsidiaries file it in the name of the holding company. That’s most likely to still be there whatever happens below there, and that’s probably where all the rights should exist.
If it’s a partnership then file it in the name of all the partners.

Tom:

You sometimes hear, as often from Silicon Valley, and I’m looking at companies like Apple [inaudible 00:28:16] trying to innovate and also dominate a market, but they’re trying to patent something that you would think is stupid to patent. This isn’t particularly an example of a stupid one, but I remember hearing that the scroll wheel in an iPod is something that Apple owns and you can’t use that on your product, or maybe just the idea of a touch screen phone is something they try and patent at some point. Does that happen a lot and do you find maybe not what you’re involved in, but are there lots of patent that get attempted and then laughed out of the building?

Chris:

Yes. I think particularly in the US they try to protect anything. I think Amazon famously tried to patent the one click purchase.

Tom:

Yes, they did, yes.

Chris:

I believe that they failed. The UK has a more prescriptive view, but certainly Apple would be looking to try and stop, for example Samsung, from having the swipe or any kind of any aspect … Apple and Samsung had a massive fight about iPads, and essentially what they were arguing about was design protection for the tablet shape with a glass screen. It’s ongoing. Obviously they are massive competitors and their phones have leaked from each other all the time, but really big companies will invest a lot of money in IP to try and ring fence.

Tom:

You mentioned all these different type of stuff before, smells and whatever that you can have protection over. Is there stuff coming up do you think will change how you approach your job?

Chris:

If we set aside Brexit, because that’s the subject of my next 15 podcast, then the definition of what a trademark can be is about to be broadened considerably. At the moment it has to be, as I mentioned in relation to the smell marks, it’s got to be capable of what’s known as graphical representation. You’ve got to be able to fix it, not on a bit of paper, but on a searchable database so that I can tell when I look at it what it’s meant to cover. That is going out of the window. It looks like trademarks are going to be able to cover things like holograms and even more nebulous things than that because they don’t have to be graphically represented.
As dinosaurs like we are as lawyers we’re still catching up there, it’s pretty hard to imagine given that despite the possibility of sound marks, etc., most marks are generally … Well, shape are relatively common now, so bottle shapes, pill shapes etc. Most marks are going to be words, pictures, logos or some kind of combination. It’s still fairly traditional.

Tom:

Not wanting to open a can of worms, but is Brexit going to effect EU legislation that you talked about before?

Chris:

The UK will have to extricate itself from the EU trademark. That’s looking inevitable at the moment. The Chartered Institute is lobbying government to ensure that for business the process is not too expensive. It’s how do we unravel 128th of the EU trademark and put it on to the UK trademark register. That’s probably not that high on Theresa May’s priorities at the moment. I think Easter egg’s and national trust are probably higher up there. It’s certainly an issue for anyone who owns an EU trademark because they paid to obtain that monopoly right. They have the right not to use 128th by virtue of the UK exiting, the EU, but it’s one that we’re trying to help the government work out the best way of resolving. Yeah, could be a lot of-

Tom:

Wasted space.

Chris:

A lot of work for trademark lawyers, which is I suppose a good thing.

Tom:

Cool. I think that’s probably a good place to wrap up. I’ve learned loads. Thank you very much for coming in and teaching us a lot about how this stuff works.

Chris:

My pleasure.

Tom:

Where can people find out a bit more about you and the business online?

Chris:

Our website is it elkfie.com that’s E-L-K-F-I-F-E.com. The Chartered Institute of Trade Mark Attorneys you will find if you Google CITMA, C-I-T-M-A. From there you’ll be able to find a chartered trademark attorney in your area, and then ask them for some free advice. Don’t say I sent you.

Tom:

Of course. Everyone should go and get on that definitely. Thanks for tuning in. We’ll have some more podcast coming up soon. If you want to see some more content, blogs and all that kind of stuff go to wearelighthouse.com/blog. You can follow us on Twitter, all the social channels at We Are Lighthouse. Until next time, see you then.