New Trade Mark & Branding Documents

June 2010

Assets: a business is nothing without them. Business assets take many forms, both tangible and intangible. Typical assets include property (or premises), equipment, stock, money and other financial assets.

A key business asset is intellectual property. As a term, intellectual property covers a broad span of elements including copyright, patents, designs and the focus of the latest package of documents from Simply-docs – trade marks and branding.

A business is nothing without a brand. Branding carries a business’s goodwill and represents what is potentially a highly valuable asset. Branding needs to be carefully managed and can, like any asset, be dealt with in a variety of ways.

Assignment and Licensing

As with any asset, trade marks can be dealt with in one of two “core” ways. They can be transferred entirely or ownership can be retained with certain rights to use it bestowed upon others. They can be either assigned or licensed. Unsurprisingly, assignments or licences of trade marks will generally be subject to the terms and conditions agreed upon by the parties involved in the transaction.

The assignment of a trade mark is generally a straightforward matter which requires some form of payment in consideration of the transfer of ownership of the trade mark. Such matters form the subject matter of the assignment agreement. In addition to this, certain formalities must be satisfied with regard to the change of ownership. A Form TM16 must be filed with the Intellectual Property Office along with a fee of £50. Form TM16 is available from the Intellectual Property Office website.

An updated version of the Simply-docs Trade Mark Assignment is now available and has been relocated from our Intellectual Property sub-folder to our new Trade Marks & Branding sub-folder.

Trade mark licensing provides far greater scope for negotiation than a simple assignment. The original owner of a trade mark retains the ownership of the trade mark and allows another party (the licensee) to use that trade mark, subject to a variety of terms and conditions that the two will agree upon. A trade mark licence provides the owner of a trade mark with a considerable degree of control over the use of their trade mark by other parties and can also provide a revenue stream in the form of royalties.

In addition to the terms and conditions of the licence agreement itself, the parties to a trade mark licence must observe certain formalities with respect to the Intellectual Property Office. When the licence is agreed upon, a Form TM50 must be filed with the Intellectual Property Office along with a fee of £50. If the licence changes or terminates, Form TM51 must be filed, again with a fee of £50. Forms TM50 and TM51 are available from the Intellectual Property Office website.

Simply-docs have now produced a new multi-purpose Trade Mark Licence which is sufficiently flexible to cover the licensing of one or more trade marks for any purposes which may be agreed upon. In addition to the new licence, our long-standing product-oriented Trade Mark Licence has been relocated from our Intellectual Property sub-folder to our new Trade Marks & Branding sub-folder.

Co-Existing: Peace in Our Time

“Polo: The car with the hole by Ralph Lauren.”

Trade Marks often co-exist peacefully and without confusion when they are used for different types of goods and services. In the example above, there will be no confusion and, most likely, no future trouble. Volkswagen are unlikely to produce sweets in the near future, Ralph Lauren is unlikely to start car production, and it is difficult to envisage a market for Nestlé’s minty-fresh clothing line – particularly with holes.

Other cases are not so clear-cut. Similar trade marks may cause confusion among consumers. Business strategy amongst those with similar marks may also have the potential for such confusion in the future. Businesses may not, at first, be in the same market or sector; however growth can bring overlap.

Where there is a risk of confusion, trade mark owners can hope for the best and do nothing; they can take legal action either by opposing the other’s trade mark application or allowing the trade mark to be registered and then seeking an injunction; or they can come to an agreement on how to co-exist.

Simply-docs has now published an all new Trade Mark Co-Existence Agreement which is designed for use in such situations, providing certainty and safety in situations which may otherwise hold the potential for trade mark infringement or passing-off actions.

White Labelling: Whose Brand is it Anyway?

Branding plays an important role in the resale of goods. A recognisable brand goes a long way toward building up consumer trust in a business and establishes consistency in a product range. It is often desirable to establish an “own brand”, particularly when seeking to establish an online presence or a chain of retail stores.

It is not always viable or desirable to manufacture your own products, particularly when seeking to provide a broad range of products. In many cases, this never presents a problem. Retailers simply sell products manufactured and branded by other companies. In certain cases, however, white labelling may be an option.

The Dixons Store Group, for example, sell, in their Currys stores, a variety of products from a variety of manufacturers. Alongside Sony, Panasonic, Hotpoint and Dyson sits Matsui. Matsui is a brand owned by DSG and is applied to white label goods manufactured for the group. It is therefore not uncommon to find an identical budget television in two different DSG stores bearing two different brand names.

Simply-docs have produced a highly detailed White Label Product Agreement designed for use in such a situation. A contract between a manufacturer and a reseller, this all-new document governs the production of a product by the manufacturer and the application of the reseller’s branding thereto.

Detailed provisions in the White Label Product Agreement govern the specification of the product and its manufacture, the production of packaging and documentation, the provision of product warranties, repair services and customer support, particulars relating to orders and pricing, and intellectual property both in terms of designs, patents et cetera applying to the product and of trade marks, copyright et cetera applying to the reseller’s branding.

Domain Names: Trade Mark 2.0?

There are few businesses in existence now without some form of online presence. Whether in the form of a fully fledged website or a mere email address, more businesses are connected now than ever before. Many, therefore, will have at least one domain name. Much like a trade mark (indeed, the two are ever increasingly synonymous) a domain name identifies a business in the minds of its customers and clients. A domain name therefore, like a trade mark, can be an extremely valuable asset.

Domain names can, as with trade marks, be sold or licensed. Fewer formalities are involved, but otherwise the situation is very similar.

Simply-docs has now released ‘alternate’ versions of our domain name sale and rental agreements, rebadged as an assignment and a licence, as part of the new Trade Marks & Branding Subfolder.

The contents of this Newsletter are for reference purposes only and do not constitute legal advice. Independent legal advice should be sought in relation to any specific legal matter.

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