Brian Wimpey – Trade Marks Director at IP law firm DM Kisch Inc

Published in March issue of AdVantage Magazine

A failure to determine whether a brand is likely to conflict with somebody else’s prior rights can lead to a messy lawsuit with expensive consequences. Likewise, failing to secure rights in a brand by way of a trade mark registration can lead to an equally messy conclusion. And underpinning both of these admonitions – choose a registrable trade mark, not one that can be attacked for being descriptive! One only has to bear in mind the failure by the National Lotteries Board to enforce their rights in the word LOTTO to understand the danger of choosing an unenforceable trade mark

Although examples of the consequences of failing to take trade marks seriously abound, the ANC vs. Cope case is topical because it attracted widespread publicity.  The ANC fruitlessly attempted to prevent COPE from adopting well, COPE, as its party political name. The case highlights the central issue: If the ANC had registered COPE as a trade mark, the matter may have ended with a letter of demand. By failing to register COPE as a trade mark, the ANC fought a losing battle to persuade the court that COPE was a ‘common law’ trade mark exclusively owned by it.

Attempting to enforce rights in an unregistered brand can sometimes be like a trying to win the Lotto, which reminds me of an old joke – the ubiquitous Van der Merwe, desperate to win the Lotto, is on his knees “Oh Lord,”, he prays, “please, please help me win the Lotto!”As Van Der Merwe gets up, brushing his knees, a voice comes down from above, “I would love to help, Van, but try and meet me halfway and buy a ticket”

The message is clear –  check whether your client’s trade mark is available, and if it is, ensure that it is registered i.e. buy a ticket!

The registrable portion of a brand can be any number of things – a combination of colours, or even a single colour in exceptional circumstances (think BLUE TRAIN), the shape of an article (a fancy bottle), a word in plain lettering or in logo format, a device, a slogan, and even a scent, as long as the latter can be represented graphically!

Perhaps I can finish this article by quoting Benjamin Franklin - A little neglect may breed mischief: for want of a nail the shoe was lost; for want of a shoe the horse was lost; and for want of a horse the rider was lost! (Maxims prefixed to Poor Richard's Almanac, 1757.)