protecting package design look and feel

Executive summary -
Consumers can only remember general impression of a packaging
General impression includes color scheme and prominent words - product name or descriptor
Lookalikes are usually free to take color schemes and descriptors
Making descriptor words more prominent makes it easier for lookalikes to steal the same look and feel with only immaterial modification.
The protected name should always be given greater prominent than  descriptor words such as the word GOLD in this earlier blog post.


Look and feel of a packaging relies on consumer memory in associating the packaging to the familiarity developed over time.  But such familiarity or recollection is not perfect - in that only the most dominant aspects get registered in the consumer memory.    Hence the term look and feel which connotes a fuzzy mental image that is registered with the customer.  Features that form part of this image includes the overall color scheme and any prominent word and/or design feature. Such features are what competitors go for creating as close a lookalike as possibly.can without infringing any rights.  


It is natural not to expect complete recollection of the packaging features in a supermarket environment or due to the product mature. 

This factor is therefore crucial in product/packaging design.

 Such association are usually  imprecise - so it could be deep blue packaging for Oreo cookies.  

But Oreo manage this risk rather well by -
-  making OREO word the most prominent element; and 
-  not having superfluous phrase such as "COOKIE AND CREAM" 

I sometimes wonder which came first OREO or COOKIE AND CREAM.

It would have been ideal if Kraft had secured trade mark registration for the color blue as applied to packaging.  But this is usually difficult to get and for good reasons - not to unduly restrict the industry on  design choices.

Why is it important to keep the packaging clean?

A lookalike has to take as many unprotected design elements as possible to achieve resemblance to the original Oreo. And if these prominent packaging elements cannot be protected, it makes it easier to create a lookalike.   Hence it is important to consider if the unprotected design elements can be dropped.

Steve Jobs had good reasons for his strict discipline of simplicity in design.   But he is looking at this from the elegant angle.

Potato chips packaging Part 2

Kettle brand chips packaging has transformed... Not necessary for the better

Before

Now


Two negatives about the new packaging -

- the KETTLE trade name is less prominent than the flavor descriptor

- it has dropped the paper packaging in place of the standard glossy packaging, looking more like a "me too" product.

The fear is an erosion of the KETTLE brand identity  due to the reduced prominence.  The glossy standard packaging will only hasten the erosion of its unique organic identity cultivated from  the use of paper based packaging and solid color scheme.

The distinctiveness of the KETTLE name is already on shaking ground and it was important to draw support from the unique paper based solid color scheme to help consolidating the identity of its product

I will be interested to see how much longer that it could fend off other KETTLE cooked chips such as LAYS KETTLE COOKED



LAYS make the exception for the KETTLE chips.  Ordinarily LAYS name is much more prominent. But the PepsiCo send happy to let KETTLE COOKED take prominence.

The Australian High Court ruled that it is not am infringement if a word use used to describe the quality or characteristic in a product - such as in this case that it was Kettle cooked.  This is lesson for all - the trade mark or brand should be fanciful word and not likely to be used to describe its quality.  As such, PepsiCo's KETTLE COOKED words on the packaging will not infringe trade mark registration for KETTLE.

 

Potato chips packaging Part 1

Potato chips - Which one is most likely to be knocked off?

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Kettle and LAYS make pretty sure that their respective trade names are prominent.  An imitation of the packaging is not likely to be able to snoop their regulars without copying  the protected trade name.

But it may be harder for RED ROCK DELI.

RED ROCK should be given greater prominence in the packaging so as to work into the purchasers memory that  the RED ROCK name is integral to the packaging.

From the marketing point of view, it got more attention that it is deli chip, but I stand corrected.  The RED ROCK part of the name does not quite register with my memory that I would be conscious next time I buy the same bag of chips.  I only remember the DELI or DELI STYLE word

If the "deli" idea is its unique selling point, then it should be separately protected.  It might get an objection that the deli is descriptive and therefore cannot be protected.

But it is worth a try in some country outside Australia. But it should give DELI separate prominence so that it is not part of RED ROCK DELI.  Really RED ROCK does not need to have DELI on its tail.  It makes no difference.

 This risk is real with house brand products from supermarket jumping on the bandwagon with their DELI style chips and copying also the recipe names -

The following packaging also supports my thesis that the protected brand should enjoy prominence relative to descriptive statements of the product

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DEEP RIDGED as a principal product feature should not enjoy prominence relative to RUFFLES.   DEEP RIDGED is probably not protectable.  So I am curious about WALKERS TM claim over DEEP RIDGED.

COTTON ON BODY - brand extension case study

It is usually difficult to judge whether a branding strategy is right or not in the early stages of a launch.

But in the case of COTTON ON BODY,  there are several no-nos -

a.  The main brand COTTON ON is st risk of being eroded.

b.  With all the money to launch a new product, they squandered the opportunity to develop a truly independent brand or product line.   They could have called it BODY by COTTON ON and over time be ready to cut the apron string by dropping "by COTTON ON".

c.  COTTON ON has not clearly thought out a independent brand when this brand extension is re-jigged into BODY by COTTON ON.    Any trade mark lawyer worth his salt would advise that BODY is too generic that is capable of protection - no trade should be given exclusive use over a word like BODY.  Just for discussion sake, a stronger spin off brand could be BODY LINE by COTTON ON.  Or may be something riskier like BODY ON by COTTON ON.

d.  The emphasis given to an unprotected element BODY in this design is going to haunt COTTON ON in the future -

A competitor wanting a free ride on the investment of COTTON ON BODY could come up with a look alike - replacing COTTON ON with BUTTON UP.  This is a real possibility in neighbouring Indonesia country where trade dress protection is non existent.

logo mark selection -Three things to note

The logo must be capable of verbally articulated - e.g. Ferrari's prancing horse Apple Inc's apple logo, McDonald's golden arches, Starbucks' siren.  Sleek designs count very little if it cannot be articulated easily as a way of convenient reference.

The logo should not be common in the business concerned such as using cow logo for diary product.  One reason why Apple is such an enduring brand is because it is such an improbable name in the computer industry.

The logo design should not be so overly complicated that it becomes difficult for members of public to commit to memory, consciously or sub consciously.  In a way, this point is connected to the first point - it is easier to connect a mark to memory if the logo can be readily referred to verbally

Definitions of brand related terminology

Here's my attempt at defining brand related terms (more refinement required but I hope you get the general idea) -

Brand equity refers to the view that a brand can be regarded as an asset capable of generating or contributing to the generation of revenue.

Brand value - that the brand is worth something.

Brand loyalty -  customer preference or affinity for a particular brand over others built up over time comprising quality such as trust or promise of a certain standard or image.

Brand management has its roots in Procter & Gamble in the 1930a.  It was an idea from Neil McElroy to set up "brand team" to be in charge of one brand. It is a business organization idea of defining team based on product line instead of along functional level.

The brand team manages all aspect of that product line such as shipment, advertising,  local adaptation.  They  take full responsibilities for that product line.  Because of its success, the idea is emulated by many companies with multiple brand on their portfolio.

Goodwill - in legal speak -  under certain English law tradition,  a property right that arises from promotion of a brand or packaging; such that another party can be stopped from riding on the goodwill attached to the brand or packaging.  Goodwill does not depend on trade mark registration.  The legal terminology for misappropriation of goodwill is passing off.  Legal Nazis will insist that goodwill is not the same as business reputation.

Trade dress - a legal concept that protects the look and feel of a packaging.  In Australia or the U.K., the analogy would be goodwill/passing off.

Trade mark - in its most basic form - an indicia of trade origin - at this level - it could include a name, logo, color scheme such as color green associated to British Petroleum, shape of packaging such as the Coca-Cola bottle.   But it is unusually harder to claim right to exclusive use to a single color or shape.

Brand protection - a corporate function in protecting the brand against imitation - identical copy or lookalike.  The former is usually referred to as counterfeitirng.

Investment wasted on word that cannot be protected

This picture demonstrates how the efforts of your promotion can be appropriated by lookalikes and leaving you without legal recourse.

 Nescafe GOLD product line is probably one of its most popular instant coffee product range.  But GOLD as a mark is too generic for protection.   It cannot be exclusively claimed by anyone. 

GOLD is quite clearly unprotected, but Nescafe chose to make the word more prominent than the tradename Nescafe on its label.
Over time, consumers looks to GOLD as the lead indicator for Nescafe GOLD.

A unwary member of the public might be mistaken when in a hurry - my mother in law was no moron in a hurry when she took the other GOLD instant coffee probably thinking that it was Nescafe Gold.  I came to her timely rescue and saved the day for Nescafe GOLD.

Let's see how this goes for Johnnie Walker's SELECT CASK, no doubt a reference that evoke premium quality.







Brand dilution

A classic case of brand dilution - distinctiveness in the "mother" mark PER will eventually be eroded if they continue to develop their brand without better defined trade mark use policy.  They could have called it PTT EXPLORATION

Mother mark at risk of being eroded

comic relief brands

If it is good enough for my car, it is good enough for me











Pun irresistible - DENT SMILE

We put a dent in your smile
No dent, no smile

Tea off?

TWG position itself as a premium brand. Its choice of name TWG is not without controversy.

 It was stopped in Hong Kong from using the name because of trade mark infringement of an earlier TWG mark owned by TSIT WING GROUP.

 Another interesting aspect of the branding is the use of the numerals 1837. In this regard, it claimed to be a tribute to the "year when the Chamber of Commerce was founded in Singapore". However, the judge in the Hong Kong case felt that reference to 1837 misleads the public into believing that this was the year of company's establishment.


 A recent episode was the discovery by the Taiwan FDA of excessive insecticides in their tea. The response from this company is not necessarily agreeable to all - 

- Ms Barnes said that tests are expensive and impossible to do for every one of the 300 pesticides in existence.
 - Another issue is how tea leaves in Taiwan are tested like fruits and vegetables, as if they were going to be chewed and swallowed, she said. 
 - However, residue concentrations would be indefinitely diluted in an infusion form, which is how teas are usually drunk, she pointed out. 
(BUSINESS TIMES SINGAPORE)

 Brand maintenance has as much to do with what one should not to do as what one should do.

 A premium brand as held out by its owner should demonstrate more concerted efforts in meeting high standards than would a mass mark

 I would hesitate to shrug off the matter with a "it happens..." disposition.

 It is telling why the newspapers bother to report what the company thought was "an overblown" issue - for the reason that TWG is perceived as a premium brand and naturally expected to meet exacting standards expected of a premium brand.

Value of Unique branding in Indonesia

Indonesian brands that have gone overseas and succeeded - POTATO HEAD, KUDETA and JCO donuts.They have thrived in highly competitive neighboring Singapore and are destined to travel beyond ASEAN. One thing they have in common, they have unique brand identity.  They do not rely on riding on famous brands. Other than F&B, Indonesia has alot of experience in FMCG sector such as instant coffee and instant noodle. They should follow the examples of the F&B companies creating unique branding for their product instead of using lookalike to enter the market.  They will not be able to go overseas using such shortcuts because of strong trade dress law overseas.Indonesian companies should think beyond local market to help earn valuable foreign reserves.   The discipline of creating unique branding (let's call it a keystone habit from the book Power of Habit by Charles Duhigg) will inevitably transform a company's culture of innovation in all aspects of its business strengthening its competitiveness.

Successful Indonesian brand

WHITE KOFFIE : protected trade mark?

The coffee satchel ready mix business is white hot in Indonesia. It is affordable and convenient in less developed countries where the amenities for freshly brewed coffee is limited.

Instant coffee is nothing to be scoffed at in developing countries.

The variety of brands provides interesting study on branding.

WHITE KOFFIE is one such brand that is getting quite a bit of Indonesian air time. With such large investment,  the proprietor would probably have secured trade mark rights over the name or at least they think they have before investing so heavily in building goodwill.

Indonesia's trade mark registration applies a low threshold in screening out descriptive mark.  WHITE would still be considered as foreign word.  Registration of WHITE KOFFLE is probably thought not unfairly restrict the the freedom of third party trader from describing their goods.

They probably reckoned that WHITE COFFEE (letter C instead of letter K) is still not monopolized.

If so, where's the brand equity, if a lesser trader can come on the scene to promote it's own WHITE KOPI (KOPI is Indonesian word for coffee)  Before embarking on any expensive product launch, it is important to play the devil's advocate how a third party can ride on the goodwill and exploiting the weak trade mark protection regime.

Assuming the manufacturer has registratio for LUWAK WHITE KOFFIE.  This is an even weaker trade mark protection given that awareness is created fro WHITE KOFFIE and not LUWAK WHITE KOFFIE.  Whether LUWAK is protectable is another story (the beverage of choice for the Jack Nicholson character in BUCKET LIST)

Acronym Marks..

Acronym marks Single letter mark such as B or Z - don't bother because you can never get trade mark registration. No point investing in a mark you cannot get protection overt Double letter mark - yes, registration possible if can show substantial use. Example includes GS, CK (CALVIN KLEIN. To get the mark registered, You need to show three to six years of use. Three letters mark The most famous would be BMW.. KFC, M&M and TWG. These marks are deemed inherently deodorants registrable since they are unlikely to deprive legitimate traders on the ability to describe their products or services. But they are vulnerable to knock offs such as CALIFORNIA FRIED CHICKEN CFC. In country like Indonesia, CFC does not necessarily sound unpalatable.

Acronym

Acronym marks Single letter mark such as B or Z - don't bother because you can never get trade mark registration. No point investing in a mark you cannot get protection overt Double letter mark - yes, registration possible if can show substantial use. Example includes GS, CK (CALVIN KLEIN. To get the mark registered, You need to show three to six years of use. Three letters mark The most famous would be BMW.. KFC, M&M and TWG. These marks are deemed inherently deodorants registrable since they are unlikely to deprive legitimate traders on the ability to describe their products or services. But they are vulnerable to knock offs such as CALIFORNIA FRIED CHICKEN CFC. In country like Indonesia, CFC does not necessarily sound unpalatable.

Descriptive marks

BAKER'S OVEN should learn from the experience of BAKERY DEPOT which was re-branded to CEDELE.  BAKERY DEPOT stood a better chance than BAKERS OVEN - both are common words in the bakery trade and therefore weak in distinctiveness.

BAKERY DEPOT has DEPOT which is not common in the bakery business, but the owner of CEDELE took no chances with BAKERY DEPOT and gradually transited to CEDELE.  The owner demonstrated commitment in the transition process using in the interim BAKERY DEPOT  BY CEDELE.

Other famous mark that has transit - KENTUCKY FRIED CHICKEN to KFC, a Singapore massage chain with the name TRADITION OF MASSAGE to HEALING HANDS

What happen if there is infringement of a trade mark? Part II - Civil Process

-- Civil litigation 

If the mark is not identical but merely similar and the warning letter does not work, then it may be necessary to engage an attorney to commence civil proceeding claiming for injunction order to stop the infringement as well as damages. Injunction order or restraining order is a court order for the infringer to stop the infringement . Failure to comply means contempt of court rendering the defaulter liable to committal process resulting in punishment of imprisonment and or fine.

-- Other court procedures in civil action.  Some common issues to be aware of:

Interim injunction - In some cases, there is urgency to stop an infringement immediately because you cannot wait for the case to be ready for trial. Between the stage when proceedings begin to the time when you have the trial followed by final decision, it might take up to six months or more. If you can show that damages award is not likely to adequately compensate you eg loss of customers cannot be quantified or your business is still in the embryonic stage which would be irreparably damaged by the infringement.


The court in considering what is best having regard to the status quo might grant an interim injunction pending the final order. Because you will need to give an undertaking that you would pay damages in the event that you eventually lose the case, interim injunction should be applied for only you you believe that there is  a strong likelihood of success.

Litigation cost - One important question in any litigation is legal costs that can easily run out of control. Quite apart from paying your attorney legal costs, you will also have to pay for the otherside legal costs in the event that you lose. Also watch out for Offer to Settle tactics from the otherside. Basically, the otherside offer to settle with you on certain terms which might be lesser than what you are claiming, they might offer to settle with you in those terms.


In the event that the other side turn out to be right, that you should have settled than to push the case and the court granted you something which is equal or lesser than the Offer to Settle, then you will be responsible for the legal costs running from the time that the offer to settle was given. As litigation costs can easily run up to USD 100,000 and above, legal costs should be one of the main consideration in managing litigation throughout the course of the case.


You and your attorney should address the issue of costs as frequently as possible.   In the heat of litigation, parties can get carried away with what they feel is justifiable protection of their strict legal rights and allowing pride to get in the way, neglecting the costs impact and getting a nasty surprise on the final legal bill.

Identifying defendants - Whenever the facts support it, the defendant should be an individual in addition to naming a corporate entity that might just be a two dollar company. Individuals that might be named are directors who is the real controlling mind behind the infringement which he or she might use his limited liability corporate shell to front; evidence could be letters or document signed by the director connected to the infringement.

Trade Secret Protection - Singapore

Singapore case – SEVEN former employees of Citibank were prosecuted for taking clients information before leaving to join rival UBS. The charges were under the Singapore Computer Misuse Act (CMA) for unauthorised access to data stored in Citibank's computer servers The former employees were charged for accessing the bank's computers without authority, some sent the data, in the form of spreadsheets, to their personal e-mail addresses. They were each filed about S$130,000 to S$170,000 Usually important to have computer forensics to secure evidence Because of difficulty, some companies use restraint of trade clauses in contracts Assumption is that senior employees would use trade secrets when joining competitors For these senior employees, they may be required to sign non-compete promises Example – shall not work for competitor for six months after resignation Has to be reasonable – not too long and not too wide in geographical Rationale - the former employer should be allowed to recoup its position following the departure of the employee for a reasonable period

What happen if there is infringement of a trade mark? Part I - Criminal Process

-- What happen if there is infringement of a trade mark?

Options against infringement


A wrongful accusation can result in a counterclaim by the otherside. In lawyer speak, it is known as unjustified threats or groundless threats. It is best to engage an experienced attorney to advise you whether a letter can be issued. However, the groundless threats problem only bothers the tm owner if he or she intends to issue a demand letter or more commonly referred to as cease and desist letter (you might have heard of "cease and desist" in the movies).

-- Criminal process in Singapore

If the infringer uses an identical mark, there is the option of starting a criminal process. Such process usually starts with raid by the police under the authority of a search warrant. 

The search warrant is issued by a magistrates in the subordinate courts
following a complaint sworn by the trade mark owner. Police raids have been rather effective in stopping infringement because of the government pro intellectual property rights stand.

The details of the complaint is written onto one of the forms available at the subordinate court counters and sworn before a duty magistrate. A sample of the infringement would need to be produced as evidence.


Once a complaint is accepted, the magistrate will issue a search warrant for the Intellectual Property Branch of the Police to carry out the search warrant. With the search warrant, the police will call at the premises named in the complaint to take into custody evidence of the infringement which would be the counterfeits and relevant documents. In some more elaborate exercise, a computer forensic expert might be engaged to join the raiding party so as to search for computer files given that most documents are saved electronically these days.   

Following the seizure, the prosecution process might start with a "private" prosecution: which means the attorney who is prosecuting is a private lawyer who has obtained approval from the Attorney General to prosecute the case.


A successful prosecution may result in a prison term and or fine. Prison term is usually impose where the infringement is significant. In the course of the prosecution, it is quite common for the parties to settle amicably with the infringer signing an undertaking not to infringe further, promise to destroy the offending goods, publishing a public apology and payment of a agreed amount.

Selecting a trade mark

- Selection of trade mark

It is easier said than done – register only the most important element of your trade mark.  But what is  most important?   The previous discussion might be a good indicator on how your selection should be. Here is an example : your business name is JOO SENG EFFICIENT TRANSPORT AND COMMUNICATION SERVICES.  

Do you register this entire name as a trade mark or just JOO SENG. The concern about registering JOO SENG EFFICIENT TRANSPORT AND COMMUNICATION SERVICES is that an adverse party may argue that JOO SENG is technically different from JOO SENG EFFICIENT TRANSPORT AND COMMUNICATION SERVICES.. He might therefore argue that
JOO SENG FAST LOGISTICS is different from  JOO SENG EFFICIENT TRANSPORT AND COMMUNICATION SERVICES. If you had registered simply JOO SENG, you would have

-- Should I avoid descriptive mark?

Descriptive mark appeals to some of us because they inform the market right away what the goods or services are about. However, the problem is that a directly descriptive mark cannot be readily registered as a trade mark.  A well known massage establishment was trading under the name TRADITION OF MASSAGE. It has since changed its name to HEALING HANDS. Between the two,  HEALING HANDS is relatively less descriptive or at least arguably not directly descriptive. This business basically went through a
rebranding exercises.

The risk in carrying on with a descriptive word for a trade mark is that once your brand catches on in the market, competitors will try to ride on the same name which you have invested in. You will not be able to stop these competitors if your trade mark is rejected because of its overly descriptive content. 

-- The mark should not be too simple or lacking in distinctiveness.

Examples of marks lacking in distinctiveness would be word that are directly descriptive of the goods concern such as SMOOTH for lubricants and GLITTER for diamond. The rationale is that these words should rightfully be in the public domain free for traders to use in promoting similar products. 

The same consideration applies to common surnames such as TAN, CHEONG or LIM.
Other legitimate traders should not be prevented by a registered mark from trading under his or her own surname. The exception would be when the trade mark owner seeking to register his surname has been using the surname for a significant period of time achieving  a certain degree of awareness such that the market had come to associate the product with that name. 

-- Trend is to have shorter marks.

The trend appears to one of simplifying a trade mark to possibly a one word mark. Examples would be TANGS previously CK Tang, Rodyk the brand for the law firm Rodyk & Davidson, KFC precisely Kentucky Fried Chicken, PEPSI previously PEPSI COLA, Dior of  Christian Dior, CITI of Citibank, Yeo's formerly Yeo Hiap Seng. Such marks are easier on to promote through word of mouth and easier to stick with the consumer at the sub-conscious level.

-- If I am under a tight budget, what should I register? The name or the logo?

As a general rule of thumb, the trade name should be protected first. The
part of your branding that can be verbally articulated should be protected first. You would want to protect the part that is promoted by word of month. 

It is quite common to see  registration for composite marks - the trade name and the logo in one single registration. This is not ideal as the two should be protected in two separate registrations.  

Should there be an infringement where only the trade name portion is taken by another party, there is an arguable defence against such a composite registration : strictly speaking, the registration comprises of two elements (word and logo design) whereas the other party has only taken one element of the registration - the word element).  The test is whether there is similarity when compared as WHOLES between the infringer's use of the trade name and your composite mark as REGISTERED. In practice, courts may take a robust attitude and tend to rule against the infringer.  However, such a position is not necessarily certain.

Your logo may also be protected under copyright law which does not need registration. It is important to specify in your contract with the logo designer that you own copyright in the logo to avoid any doubt. We have seen many cases in which the owner fails to procure this rather simple paperwork to clearly establish ownership in the logo design. The need to show copyright ownership arises when it becomes necessary to enforce your rights.  The position in using copyright law to protect a logo is not entirely certain but it is still useful to know that there is a fall back if you choose not to register the logo. Professional advice may be needed in this regard.

Copyright law protection includes literary work and artistic drawing. While  a logo might be considered as artistic drawing because the level of creativity needed under copyright law is not high, a trade name is not considered as a literary work as normally understood.  

-- Other form of trade marks

When it comes to petroleum, the color green has come to be associated with BP, and the color combination of yellow and blue is readily associated with IKEA. The trade mark law allows for protection of such color marks provided that it come be shown that the trader has built up market awareness in associating such trade marks to their goods or services.

Other non-conventional form of trade marks include the INTEL melody, the shape of the Coke bottle and the color red as applied to soles of woman shoes from the luxury brand designer Christian Lonboutin. They can be protected as trade mark if  consumers have come to recognise such marks as indicia of trade. Such recognition would have to be built over a period of use so that consumers come to instantly. associate certain style of packaging as from a specific origin even before they hold the product in their hands to ascertain the trade name.

The protection of such trade dress (in lawyer speak) becomes increasingly important in the fast consumer moving goods (FCMG) segment as competitors vie for market share from established product line by copying as far as they think legally possible the general look and feel of the product packaging from the entrenched produce line.

- The application process

-- To search or not

It is preferable to do a search for possible conflicting marks at least on your own first using the online website at xxx if you would like to save on costs. Search is recommended not only for the reason to know whether the application will be approved but also to know whether any prior registration will block your future or continued use. It will be a waste of investment to be stopped from using your chosen mark when you realise some months down the road that the is a similar registration that render your continued use an act of infringement. Knowing your position in advance helps you to better avoid legal mine field and unnecessary waste of investment.

At some point, you may need professional advice on whether some of the prior marks are close enough to block your application. It is difficult to lay out the principles on which marks are judged similar. Some advisors go on gut feel based on years of practice/ experience. This author prefers to draw on previous case examples  determine whether a proposed mark will be judged as similar to any prior mark.

- Trade mark application process

-- Goods classification

A trade mark application needs to specify the goods for which protection is required. By way of example, Levi's is protected for clothing and in particular jeans and its trade mark registration is unlikely to cover poultry products.  In order to make the application process manageable, there would need to a classification of goods and
services.  There are over forty classes e. g. computers and electronic goods are classified under class 9, mineral water, juices, soda are classified under class 32, clothing, headgear and footwear come under class 25.

It would not be possible to apply to register a trade mark for completely unrelated goods in one single application, for example it would not be possible to specify fruit preserve and whiskey in one single application incurring only one set of fees. Note however the option to submit a multi class application.

-- Costs
Total costs of a trade mark application if done through an agent can costs between $600 to $900. Out of this, about $390 is for government fees charged by the Intellectual Property Office of Singapore.

In some cases, firms that charge more may offer more value add because of the experience of the client serving staff who advises on the class of goods or services for which protection should be offered.

If an application is subsequently met with objection because of a conflicting prior mark, get clear understanding on how the law or agent firm will charge. In some cases, the costs in reporting and offering you with recommendations to overcome the objection can be two to three times as much as your initial filing costs considering that the odds in successfully overcoming the  objection is usually not high unless you can show significant prior use of your chosen mark.

If a pre filling search is required, the additional cost can be between USD200 to USD600.

Some of the more established agents are not really under pressure to price competitively because their main source of work is from overseas clients who send large volume of work to them. 

When choosing an agent, feel free to speak to the responsible staff and get clear understanding if there would be hidden or additional costs not just at point of filling but also further down the road.

- When my trade mark is registered -  how do I maintain and enforce it?

-- When is there infringement of my registered mark?

Trade mark infringement happens when another party uses an identical mark on goods that are covered by the registration. Where the offending mark is not identical but similar, it would only be infringement if there is likelihood of confusion. If the mark is only similar, it is best to consult an experienced attorney for advice whether there is similarly likely to result in confusion. This is because a wrongful accusation threatening legal action can result in a counterclaim by the other side.

The trade mark law create civil and criminal liability for trade mark infringement. In order to establish criminal liability, a greater degree of culpability or wrong doing need to be shown: it must be shown that the other side has used an identical trade mark on goods covered by the registration. This stricter requirement is because a conviction of a trade mark offence can result in imprisonment. in contrast, a right to file civil claim can arise from use of similar mark (not necessarily identical) that is likely to result in confusion.

-- How do i maintain the registration?

You need to renew the registration every ten years. A reminder should be sent to you from the Trade Mark office. Problems arises when you relocate and the address is not updated at IPOS.

There is some advantage in using PO Box for correspondence purpose. If you use a firm of trade mark agent, this might avoid the problem as well since the renewal notice will be sent to this agent. 

A registration can also be revoked if it has not been used for a continuous period of three years. Such a revocation process is initiated by another party who might wish to apply to registers a similar mark but is blocked by your prior registration.

It has become easier to revoke a registration because the owner of the registered mark has to show that the mark has been in use. In the past, the onus was on the challenger to prove that the mark has not been in use, to prove a negative of sorts. This was expensive because market survey was needed to show absence of use of the registered mark before a revocation can be successful in most cases.

This has now changed as the onus is on the registered owner to show that he has been using the mark continuously over the past three years. If you are not able to use the mark due to some commercial reason, you should consider licensing the mark to another party to use the mark in the meantime. There are agents who might be able to pair up potential licensee to keep the mark in use for you.

- Trade mark protection overseas
A Singapore registration will not protect your trade mark in another country such as Indonesia. You need to file application in that country where you desire protection. 

However, this is now made easier with an international treaty called Madrid Protocol. Under this treaty, it is possible to file an application designating up to over 70 countries for trade mark protection. 

There is cost saving as this system does away the need to instruct local agent to file a local application. You will still need a local agent help if you run into a prior registration that conflict with your mark because of similarity.

One thing to note is that it is important to maintain the Singapore application by keeping the registration alive for five years because the life of the overseas registration depends on the home Singapore registration being kept intact from challenge. It is therefore important to undertake a thorough trade mark search to see if there is any risk of third party challenge in Singapore before embarking on such an international application.

";LABEL" as part of trade mark

Trade dress - bottled sesame oil Jakarta

when the original packaging carries too many unprotected features, it is open season for the knock off to appropriate for their own packaging

A layman's guide to patent protection

There has been a lot of interest in patent protection in the last two years.  This is not surprising, with the government's initiative in developing a knowledge-based economy.  Companies engaged in Research and Development will want to see that the fruits of their labour is not appropriated by competitors; the Patent Act is one of the main ways to protect such intellectual assets.  A patent is a powerful anti-competitive device. 

 

What is a patent?

 

A patent, when granted by the government, gives the owner an exclusive right to commercially exploit the invention including the right to import, manufacture and sell the patented product. 

 

For an invention to be patentable, it will have to be new, not obvious and capable of industrial application. 

 

Why the need to have some understanding of patent protection?

 

It is important for business firms to have some appreciation of patent laws.  This is because a patent can give powerful legal protection against competition; giving a firm the much needed lead-time in marketing a new product. 

 

Even if a trader is not in the business of developing new products, it is useful to be armed with some understanding of patent laws.  This is because the simplest of products may be protected by a patent.  A firm, which unwittingly did not buy from the patent owner, may be liable to a claim for patent infringement.  A basic understanding of patent protection may save the firm from paying damages or legal costs to the patent owner. 

 

The uninitiated may be surprised by the large variety and number of day to day articles that are covered by patents.  Patents have been granted to wall hooks (such as the "quick release 3M hook"), adhesive patches for cooling fever, tennis rackets,  chairs, locks, building equipment and landscaping materials.  There are as many patents covering day to day articles as there are covering cutting edge technology.  An idea or product need not be complex before it can be considered as a patentable invention.  A simple idea can be protected if it satisfies the requirements of patentability which will be discussed below. 

 

In the last year or so, there have been a lot of interest in internet patents.  Basically, these are patents protecting a method of doing business over the internet.  Typically, it is the dot-com type of firms that are interested in applying for such patent.  Such patents if granted can be effective in differentiating one's business model from the rest of the field.    A good example is the Amazon “one-click” patent.

 

One way to appreciate the types and variety of articles or processes which are covered by patents is to visit the United States Patent Office's web site at www.uspto.org. 

 

Overview

 

This article aims to provide the reader a basic understanding of the following topics: 

 

a)                  Requirements for patentable invention 

b)                  Process involved in getting patent protection 

c)                  Enforcing a patent against an infringer 

d)                 Defending a patent claim 

 

When does an idea qualify as a patentable invention?

 

In order for an invention to be patentable, the invention must meet all of the following requirements: 

 

a)                  It must be new 

b)                  The advancement or  development from the prior art (existing technology) must not be obvious to the average person in the relevant industry (commonly referred to as the "non-obviousness" or "inventiveness" test) 

c)                  The invention is capable of industrial application 

 

Novelty.  For an invention to be new, it must not have been previously made available to public e.g. previously disclosed to the public in a publication.  Publication includes a written description, which has been made available to the public anywhere in the world. 

 

Non-obviousness.  Not only must the idea be new, it must also be inventive.  If an idea is an obvious step to take from what is already known, it would not be a patentable invention.  Mere workshop improvement will not be considered as inventive.  An idea may be new because it contains a feature that is not found in any other product of the same nature.  This satisfies the first requirement of novelty.  It is then necessary to ask if the  development is obvious .  Whether an idea is obvious will have to be asked from the viewpoint of a person of ordinary skill in the relevant field (in more legalistic terms: the unimaginative person skilled in the art). 

 

Industrial applicability.  This last requirement is not usually a problem.  It is meant to exclude ideas which do not have any industrial use. 

 

How to get patent protection?

 

Once you have come up with an idea which you believe qualifies for patent protection, you should not disclose the idea to anyone except those who signed an undertaking of confidentiality i.e. a non-disclosure agreement. 

 

An invention needs to be kept secret because the invention must be new at the time of filing at the patent office.  Once an invention is disclosed prior to filing, it may not be considered as new. 

 

Patent protection is territorial in nature.  There is no such thing as a world wide patent.  This means that a person who wishes to get protection in country A will have to apply to the patent office of that country.  A patent granted in country A will not give protection in country B. 

 

The date given in the country of first filing is called the priority date.  This date is important for the purposes of determining novelty and obviousness.  If another person comes up with the same idea and disclosed it after the priority date, the novelty in the patent is still safe.  If the invention is disclosed before the priority date, the invention will not qualify for a patent. 

 

The Paris Convention is an international treaty between countries which give a foreign applicant the right to rely on the priority date.  The following is a useful illustration on the application of the treaty: An inventor files a patent in his home country Singapore on 1 February 2000.  Thereafter he decides to apply for patent protection in Malaysia, Indonesia and China.  He applied for patent in these countries on 1 June 2000.  However, there was a disclosure by a competitor of the same invention in Malaysia on 1 March 2000.  His application for patent in Malaysia, Indonesia and China is still safe because he is able to claim priority based on the country of first filing i.e. Singapore on 1 February 2000 which is before the disclosure by the competitor. This is illustrated in the diagram below :

 

1 February 2000 (priority date)   :    First Filing in Singapore

1 March 2000                              :    Disclosure of invention

1 June 2000                                 :    Filing in Malaysia, Indonesia and China          

 

Applications in Malaysia, Indonesia and China are still protected even through the invention was disclosed before filing in these countries.

 

 

Under the Paris Convention, overseas applications have to be filed within 12 months of the priority date.

 

There is another convention known as the Patent Cooperation Treaty.  The PCT essentially allows inventors to defer the national filings in overseas countries to up to 20 or 30 months from the priority date.  The PCT route allows for a longer “wait and see” period before the applicant needs to decide on the countries in which he requires patent protection.  There are advantages and disadvantages in the PCT system; you should ask your patent attorney to advise you on whether it best suits your needs. 

 

What is in a patent?

 

The specification of the patent document describes and defines the invention.  It has a description and claims.  The description discusses the prior art, describes the problems solved by the invention, and the practical application of the invention.  The most important part of the specification is the claims.  The claims define the limit of the patent holder's monopoly and differentiate the invention from the prior art. 

 

Patent specifications are prepared by patent attorneys who have received specialised training for this purpose.  Patent attorneys usually have different technical background such as electronics, mechanical, engineering or biotechnology.  The drafting of the patent specification should be left to experienced professionals.  You may feel that you are proficient in writing a technical report; however, special training and years of experience is required to draft an airtight specification (in particular, the claims) so as to forestall a competitor from "designing around" the patent.  Also, skilful drafting is required to avoid prior art; otherwise, the patent may be invalidated because the specification fails to adequately distinguish itself from the prior art. 

 

 

 

 

 

Enforcing a patent

 

Markings such as "Patent no. xxxxx" found on products are meant to put the public on notice that these products are protected by a patent.  If a person chooses to infringe a patent despite knowing the existence of a patent, he will be liable for damages.  An infringer who does not have any knowledge of the existence of a patent or reasonable ground for believing so, will not be liable for damages.  This is the reason for warning notices of patents in newspapers. 

 

The patent owner will be able to sue sellers, distributors and manufacturers of goods covered by the patent.  If the patent owners are successful in the litigation, the court will order: 

 

a)                  an injunction to restrain the defendant from infringing the patent;

b)                  the defendant to pay damages to the Patent Owner or pay the profits made by the infringer; 

c)                  delivery up of the remaining infringing materials. 

 

If the patent holder is able to show that there is some basis that his patent has been infringed infringement and also shows that damages will not be a sufficient remedy if he is to wait for a trial, the court may grant an urgent injunction even before the court gives its final decision.  This is a very effective means in dealing with an infringer. 

 

What happens if you are sued for patent infringement?

 

In the case of infringement, the patent owner usually issues a demand letter requiring the trader to stop selling the goods which are said to be infringing the patent; and if the trader does not comply with the demand within a fixed period of time e.g. 7 days or 14 days, the patent owner will sue in the High Court. 

 

 

If you are threatened with a legal action, you should immediately consider the following: 

 

a)                  Is your product covered by the claims of the patent;

b)                  Are you aware of any prior art which will render the patent invalid; if so, are you able to prove that such prior art existed before the patent; 

c)                  Is it worthwhile incurring legal fees and expenses considering the return you can get from selling the products. 

 

Does your product infringe the patent.  In order to determine if your product falls within the claims of the patent, it is necessary to first break down the claim into its essential features.  For the patent owner to prove infringement, your product must contain each and every one of the essential features of the claim. 

 

It is wrong to compare your product against the patent owner's product even if the patent owner says that its product is manufactured according to the patent.  One should always look to the patent document itself, in particular the claims.  Although the drawings in the patent document may be the same as your product, this is not conclusive to prove infringement.  It is the language in the claims that should be considered.  The drawings may help in the interpretation of the words in the claims; however, where the words in the claims are limited in scope and are clear, there may not be any room for the patent owner to refer to the drawings to argue that the patent covers variations.  The reality is that patent specifications are drafted by humans, and patent attorneys do not have a crystal ball to see every possible variation in avoiding the patent. 

 

Is the patent valid.  In determining if the patent is valid, your professional adviser will have to conduct a search to see if there is any prior art (i.e. technical disclosure rendering the invention in the patent not new, or obvious).  The usual sources will be patent databases and trade publications. 

 

 

 

Practical considerations.  If the market for a product is lucrative to you, it is worthwhile to engage a professional adviser to: 

 

a)                  determine if your product infringes the claims in the patent; 

b)                  conduct a prior art search to determine the chances of invalidating a patent; 

c)                  consider re-designing your product to avoid the patent. 

 

Although a patent owner's objective is to enjoy a monopoly for its product, he may decide to share the market with a competitor through a licensing arrangement (subject to payment of royalty or otherwise).  This may be so if the patent owner perceives that the competitor is determined to invalidate the patent and that it is just too expensive to carry on with the litigation and where the outcome is uncertain. 

 

If there is sufficient prior art to invalidate the patent, you may wish to continue selling the product and defend the legal action should it arise.  Whether or not to defend the claim would depend on the likelihood of success in the defence, how important the product is to your business, the market size, the number of players in the market, and the amount of fees involved.  Instead of taking the patent owner head-on, it may make more commercial sense in some cases to design around the patent.  This will have to be done with the advice of an experienced patent adviser.  Sometimes, it may be better to leave the patent unchallenged as the patent protects the market for the patent owner, as well as the trader who is not deterred by the patent because he believes that he has a good defence.  The patent will deter the less “adventurous” competitors, or those who do not have the benefit of professional advice. 

 

It is important to have your professional adviser give you a practical assessment of all of the above issues should the need arise.  It is hoped that this article will help you ask your patent adviser the relevant questions.