New EU trade mark laws come into force

New trade mark laws have been introduced, affecting EU trade mark owners.  John Buckby, IP specialist at Spearing Waite solicitors, explains the changes.

On 23 March 2016, a new EU Trade Mark Regulation introduced important changes that trade mark owners should be aware of. These include:

  • a new name for the trade mark office
  • a new name for the Community trade mark
  • a revised fee structure for filing and renewing EU marks
  • changes to the classification of trade marks, and a limited opportunity for owners to correct earlier marks

The Regulation comes just after a new EU Trade Mark Directive entered into force on 13 January 2016.  Member states have until 14 January 2019 to transpose the provisions of the Directive into their national laws.  But the new Regulation is effective immediately, as of 23 March 2016.

Detailed below are the key changes contained in the new EU Trade Mark Regulation.  There are a few points to get through, so you might want to grab a coffee and settle down for five minutes to read them.  Alternatively, feel free to contact me at Spearing Waite and I can let you know what the changes mean for your trade mark portfolio.

Goodbye OHIM, hello EUIPO

As of 23 March 2016, the ‘Office For Harmonisation in the Internal Market (Trade marks and designs)’ has been renamed ‘The European Union Intellectual Property Office’ (EUIPO), and it has a neat new logo to boot:

euipo_en

Some businesses may wish to inform their finance departments of OHIM’s new name, given that authorities have for some time warned the public to ignore invoices and correspondence from bogus overseas entities purporting to be ‘IP offices’.

In the wake of the name change, some may mistake the ‘European Union Intellectual Property Office’ as just another bogus office.  If you use lawyers to file your applications, all genuine correspondence is likely to be sent directly to them.

Your lawyers will be able to tell what’s genuine, and what isn’t.

Introducing the European Union Trade Mark

Since 1996, it has been possible to apply for a trade mark covering the whole of the EU in a single application.  In the last 20 years, OHIM has processed more than 1.3 million of these pan-EU marks, known as the ‘Community trade mark’ (CTM for short).

As of 23 March 2016, the Community trade mark has been renamed the ‘European Union Trade Mark’ (EUTM).

There is no need for trade mark owners to take any action in response to this change – all marks will be renamed automatically.

Revised application fees

Trade marks give exclusive rights in relation to specific goods and services, which must be listed in the mark.  Goods and services are categorised into 45 different ‘classes’ for administrative purposes.   The cost of a trade mark application depends on how many classes it covers.

Until 23 March 2016, the application fee payable to OHIM was the same (€900) irrespective of whether a trade mark covered 1, 2 or 3 classes.  This encouraged some applicants to file additional classes unnecessarily – there was no extra cost in doing so, and it broadened the rights the applicant might acquire.

Under the new arrangements introduced by the Regulation, the fees payable to the EUIPO for EU Trade Mark applications vary depending on the number of classes included:

  • 1 class – €850
  • 2 classes – €900
  • 3 classes – €1050

Each additional class beyond this will cost €150, as before.

The changes provide a small saving to applicants filing a mark in just one class, but an increase for those filing in 3 classes. This should encourage applicants to think twice, before filing marks in classes that are not directly significant to their business.

Reduction in renewal fees

The renewal fee for the Community trade mark was €1350 (whether it covered 1, 2 or 3 classes). From 23 March, the new arrangements introduce lower fees for renewing an EU Trade Mark:

  • 1 class – €850
  • 2 classes – €900
  • 3 classes – €1050

Each additional class will cost €150 (the cost was €400 previously). So, in all circumstances, renewal fees for EU marks have fallen.

The new fee arrangements apply to all EU trade marks that expire on or after 23 March 2016, and those who paid renewal fees early on the old rates can claim a refund.

Another change is that renewals will be due exactly 10 years after the filing date, and not at the end of the month in which renewal falls due, as was previously the case.

Class headings have ‘ordinary meaning’

Before 2012, it was normal practice for applicants to use ‘class headings’ to describe the scope of their applications. It was generally accepted by practitioners and users as a simple way to secure all the goods within a particular class, without having to painstakingly list all those goods.

Because of this, many trade marks on the register state the class heading (e.g. “clothing, footwear and headgear”, “musical instruments” or “printed matter”) instead of listing specific goods belonging within them.

However, in June 2012, the court decided this approach was wrong (in the ‘IP Translator’ case).  The court ruled that applicants must identify goods and services with sufficient clarity and precision to enable relevant parties to determine the exact nature of the protection sought, on the basis of the description alone.

This was quite a big change. It meant, for example, that an applicant wanting to include music stands in their trade mark could no longer achieve this aim by using the class heading ‘musical instruments’.  The heading would only cover goods that are, literally, ‘musical instruments’.  For example, a music stand would previously have been presumed to fall within the ‘musical instrument’ class heading. A music stand is not a musical instrument, so it will now have to be listed as a separate term.

The new Regulation codifies this approach, which ensures that all trade marks will be interpreted by reference to practice approved by the court in June 2012.   Owners of marks filed prior to to 22 June 2012 will have a temporary opportunity to amend their registrations, so as not to lose the protection they thought they were getting.

There is ‘transitional period’ of 6 months, until 23 September 2016, during which owners can notify the EUIPO of a wish to seek protection wider than would be afforded by a literal interpretation of the wording in their marks.

Trade mark owners should check their marks, and consult with IP lawyers, to see if they should take advantage of the opportunity.  If they don’t, the door closes on 23 September 2016 and goods / services in a trade mark which do not fall within the literal meaning of the wording of a class heading will not be covered by the mark.

Requirement for graphical representation abolished

Under the previous arrangements, Community trade marks could only be registered for signs that could be “represented graphically”. This made it rather difficult to register non-traditional signs such as moving image or ‘sound’ trade marks.

The new Regulation has abolished this requirement, and provides instead that signs must be shown in a way that allows the public to determine the precise subject matter of the trade mark.

The change provides greater flexibility for those wishing to apply for more unusual marks, and sounds and moving images can be made digitally available on modern online trade mark databases, so their scope may be determined with ease and precision without the need for graphical representation.

This change effectively means that trade marks no longer need to be static and opens the door to people using more innovative types of signs to set their business apart.

Changes to defences to trade mark infringement

The EU Trade Mark Regulation has changed the defences that may be relied on when faced with an allegation of trade mark infringement.

It is now a defence if you are using a mark in a non-distinctive way, i.e. in a way that would not be perceived by consumers as referring to the trade origin of the goods.  In addition, the Regulation introduces a new defence of using a trade mark for the purpose of ‘artistic expression’ (as long as it is ‘in accordance with honest practices’).

One of the previous defences has been removed – a company can no longer rely on use of its own company name as a defence to infringement.  The ‘own name’ defence is now only available to ‘natural persons’ (i.e. individuals) using their own names, and it must be ‘in accordance with honest practices’.

Checklist for all EU trade mark owners

The main ‘call to action’ arising from the new Regulation is that trade mark owners should examine any marks filed before June 2012, to check if there are any ‘class heading’ issues which can be addressed before the September 2016 deadline. In addition:

  1. Don’t be tempted to register unnecessary classes for your trade marks.
  2. Check to see if you can reclaim part of the renewal fees on any trade marks that were renewed early.
  3. Be aware of the new name – EUIPO – and ensure your team is familiar with it.
  4. Consider filing non-traditional trade marks – sounds, moving images etc – if they are distinctive of your business.

The changes introduced by the new EU Trade Mark Regulation help to modernise the system, introduce a more logical fee structure, and provide greater clarity for users. The new names ‘EU Intellectual Property Office’ and ‘EU Trade Mark’ are sensible and clear, helping the office to do exactly what it says on the tin.

Spearing Waite’s intellectual property team provides expert advice on acquiring, commercialising, and enforcing trade marks in the UK, EU and worldwide. If you have any questions about the new Regulation (or about trade marks in general) get in touch: ip@spearingwaite.com.

John Kaldor Fabricmaker UK v Lee Ann Fashions: How to climb the mountain (or molehill) of proving independent design in copyright.

John Buckby, intellectual property solicitor at Spearing Waite, gives an insight into a fashion industry case handled by the firm concerning the alleged copying of tribal prints.  John shares some useful tips on how to avoid liability for copyright infringement.

If you create a design that’s similar to someone else’s, and they accuse you of copyright infringement, you may need to prove exactly how you created your design. In a recent high profile court case, Spearing Waite successfully defended a fashion industry client sued for copyright and design right infringement.

PerUna Dress
Lee Ann’s own print design, used by Marks & Spencer on the Per Una garments

John Kaldor Fabricmaker UK Limited v Lee Ann Fashions Limited

Spearing Waite’s IP specialists acted for the defendant in John Kaldor Fabricmaker UK Limited v Lee Ann Fashions Limited, a case recently decided in the Intellectual Property Enterprise Court (IPEC).

Spearing Waite successfully defended the allegation of copying, by incorporating good design record-keeping into a witness statement evidencing the designer’s independent creation of the works.

Background to the case

The case involved Leicestershire garment manufacturer Lee Ann Fashions, and London design house John Kaldor Fabricmaker.

In September 2012, Lee Ann was given a brief by M&S for a range of ‘tribal print’ garments.  The brief included a storyboard, a colour palette, and images of other designs to be used as inspiration.

Lee Ann created a fabric pattern in response to the requirement of the brief. John Kaldor had also provided fabric samples to Lee Ann earlier, in response to the same brief.  In the end, M&S chose Lee Ann’s pattern, and incorporated it in a dress and other garments sold in early 2013 under the ‘Per Una’ brand.

When John Kaldor saw the Per Una garments on sale, they argued that the pattern was similar to one of the designs they had provided to Lee Ann for the M&S brief, and said Lee Ann must have copied it.

Lee Ann maintained from the outset that they had not copied John Kaldor’s design.  They said their own in-house designer had created the pattern independently, and without even seeing John Kaldor’s fabric. This did not persuade John Kaldor, who stuck to their guns.  Kaldor instructed London solicitors Mishcon de Reya to sue Lee Ann for copyright infringement and unregistered Community design right infringement.  The case went all the way to trial in the Intellectual Property Enterprise Court.  It was heard on 9th October 2014.  Judgment was handed down on 21st November 2014.

Copyright law

In the UK, copyright is infringed by the reproduction of a copyright work (either the whole of it, or a ‘substantial part’) without the consent of the owner. To succeed, a claimant has to show two things:

  1. Objective similarity – a sufficient number of similarities between the respective designs; and
  2. Copying – without copying, there is no infringement – no matter how similar the respective copyright works may look (the same requirement also applies to Community unregistered design right).

When two designs share a sufficient number of similarities, an ‘inference of copying’ arises – and the defendant must explain how its design came to share these similarities.  Was it from copying – or were the similarities a coincidence of the designer’s own input and influences?

In the Lee Ann Fashions case, the Judge helpfully summarized the steps to be taken into account when considering whether infringement has taken place. The more similarities there are, “the more cogent the defendant’s evidence must be to rebut the inference” that its design was copied.

John Kaldor’s lawyers, Mishcon de Reya, argued on the basis of an earlier copyright case that Lee Ann had to ‘climb a mountain’ to prove that its design was created independently.  The judge disagreed that a ‘mountain climbing analogy’ applied, saying instead that the degree of the defendant’s evidential burden depends on the extent of the similarities.

The outcome – no copying

The central issue was whether John Kaldor’s pattern had been copied by Lee Ann. Without copying, John Kaldor’s allegations of copyright and unregistered design right infringement would both fail.

The Judge said Lee Ann’s evidence of independent design was “particularly important in the present case”.  The Court considered detailed evidence which we helped Lee Ann’s designer Mrs Vance to prepare, setting out in detail the process by which Mrs Vance created her design – independently, and without inspiration, from the John Kaldor design.

JK print
John Kaldor’s ‘JK2926’ print design, which they alleged Lee Ann had copied

Fortunately, Mrs Vance was very organised (not always a trait of designers!) and had saved each stage and new version of her work in dated files under different numbered codes. Using these records, and the associated metadata, Spearing Waite helped Mrs Vance explain how and when each individual element of the pattern had been created in Photoshop. Mrs Vance was able to provide a detailed, granular account of how her design had emerged, from its rough origins in black and white through to the final colour version approved and signed off by M&S.

‘A key witness’

The IPEC judge, HHJ Hacon, described Mrs Vance as a ‘key witness’. He was persuaded by her witness evidence, saying: “The arguments advanced on behalf of John Kaldor are not in my view collectively enough for me to reject the clear evidence given by Mrs Vance that she created the design of the LA Fabric independently of the conscious influence of the JK Fabric.

The Judge found that Lee Ann had not copied John Kaldor’s design. John Kaldor’s claims were dismissed.  Lee Ann won the case and the Court ordered John Kaldor to pay its legal costs.

Lee Ann Fashions managing director, Suki Johal, commented: We were relieved and happy to have won the case, and to be cleared of the allegations of copying. We do not copy other peoples designs – Lee Ann Fashions has a proud record of creating original works for clients across the UK and internationally.  However, this case is a reminder of the importance of keeping a comprehensive record of our designs. We are extremely grateful to Spearing Waite for their support, and for their expertise in intellectual property law which was invaluable to helping us win this case.

How to avoid liability for copyright infringement

  1. Keep a design record make sure your designers can evidence each stage of their design and any influences. In the Lee Ann Fashions case, the designer had saved each stage of her design with a unique file reference and clearly dated. This was a great help and enabled Spearing Waite to assemble a strong case of independent design.
  1. Confirm instructions in writing try to ensure that all instructions to designers are in writing, so there’s a clear brief supporting independent creation at all stages. In the Lee Ann Fashions case, John Kaldor’s lawyers sought to draw negative inferences from the fact that some of the instructions given to Mrs Vance were provided verbally and not recorded.   Had these instructions all been confirmed by email at the time, it may have been possible to defeat these arguments straight away.
  1. Don’t go overboard with witness evidence focus on getting statements by the key witnesses, rather than dragging everyone in to it. The costs you can claim back in the IPEC are capped, so you should choose your witnesses carefully.  The court will look favourably on a conservative approach to legal costs. In the Lee Ann Fashions case, Mrs Vance was best placed to evidence whether the designs had been copied.  John Kaldor’s lawyers tried to argue that it was suspicious Lee Ann had not put forward additional statements by the people who had instructed Mrs Vance. But the Judge supported Spearing Waite’s approach, commenting: “Mrs Price aside, it is not clear that the other witnesses would have added anything and in the IPEC the number of witnesses must be kept to a minimum.”  Overall, the Judge praised both parties for their ‘efficient’ and ‘rational’ approach to the case, in line with the streamlined approach to litigation characterised by the IPEC.

Our advice

As a precautionary measure, It is far better and cheaper to get into the habit of compiling evidence of independent design as you go, than to have to scratch around for this important evidence after a claim for copyright infringement comes through the door!

So, keep a trail of the inspiration that leads to your design. Save different versions along the way – from pencil sketches and storyboards through to the final signed off design.  Date the versions, and keep them in an archive with related email instructions.  Keep a backup too, in case you lose the data on your computer.

The success of the Lee Ann Fashions case hinged on putting together detailed and persuasive evidence from the designer Mrs Vance, showing that she created her design independently. If you have this evidence, and full details of the instructions given to the designers, it is going to be very difficult for others to argue their work has been copied.

Spearing Waite’s IP team is experienced at dealing with copyright and IP litigation.  We can help you to deal with, and avoid, copyright and design right infringement issues.  Get in touch: ip@spearingwaite.com

The Intellectual Property Act 2014 comes into force (so what?)

A collection of adjustments to the existing rules on UK design rights and patents were introduced today, as the Intellectual Property Act 2014 finally came into force. Spearing Waite’s IP specialist John Buckby highlights the key changes.

The Intellectual Property Act – it’s quite a grand title isn’t it?  Sounds like it’s going to revolutionise all of IP law.  But it doesn’t.  If you take a look under the bonnet of the new Act, which came into force today, it makes a number of tweaks and adjustments to certain areas of design and patent law, but doesn’t affect other IP such as copyright or trade marks.

Still – the changes may be relevant to you, and we highlight some of the most important introductions in the new Act below.

Design rights

i) Ownership of commissioned designs

UK design rights protect the shape and configuration of articles. These rights are most relevant to those who create products with an original shape which departs from the norm, such as household and industrial products, cars, or furniture.

The Act has made a subtle change to the rules about who owns the rights in a commissioned UK design. Until now, the default position was that a design commissioned by a third party would automatically be owned by the person commissioning (and usually paying for) the design.

Now, the default position will be that the designer will own the rights in a commissioned design – even if they’ve been paid to create it – unless there’s a written agreement stating otherwise.

This brings UK design law into line with copyright and EU designs, which state that a non-employed designer or creator owns the rights, unless there’s a written assignment to transfer the rights.

So, if you want to own the rights in commissioned designs or copyright works, you need to ensure a written agreement is in place. It’s not enough just to pay for the creation of the design. That may give you certain rights to use the design, but it does not make you the actual owner of the design rights.

Having said that, you won’t need a written agreement for employees. If designs or copyright works are created in the course of employment, the employer is the default owner and no further paperwork is required.

ii) Criminal sanctions for design copying

The Act has introduced a new criminal offence for intentionally copying registered designs.

The offence applies where a person intentionally copies a design, knowing or having reason to believe that it is registered, and creates a product which is identical to the registered design or only differs in immaterial details. The punishment is a fine, or a maximum sentence of up to 10 years in prison.

The introduction of the offence gives designers another reason to register their designs (the offence doesn’t apply to unregistered designs) – and also to ensure that they use the proper notices to alert the public to the registered status.

The new offence will provide a tough deterrent to those planning to make cheaper imitations of well-known designs. Rights owners will be able to use the new offence to work more closely with Trading Standards to enforce their rights against infringers.

Company directors responsible for the company’s offences may also be held personally criminally liable, and might not be able to hide behind the ‘corporate veil’.

iii)        New defences – and a gap in protection as a result of 3D printing?

New exceptions have been introduced allowing for private, non-commercial and experimental use of designs. That sounds reasonable – why should individuals who makes single copies for their own private use be sued, especially where the damage to the creator is negligible?

That’s one side of the argument. But if you consider what happened to music sales as a result of ‘downloads for private use’ – and take into account the rise of 3D printing – it starts to look like a dangerous potential gap in protection for designers.

The exception might permit private individuals to create copies of designs for their own personal use, with a home 3D printer. It will be interesting to see how this defence is applied – it clearly has the potential to become a damaging loophole for designers if 3D printers become commonplace fixtures in homes, and there is no need to buy designs from a shop or other commercial ‘middleman’.

Patents – changes introduced by the Act

The Act has also made a couple of changes in relation to patent procedures and rules. One of these changes is that the Intellectual Property Office’s powers to issue opinions and guidance on the validity of patents have been widened. That may be useful to businesses wishing to obtain quick, cheap guidance as to whether a patent is a threat to their activities.

The Act has modernised the rules about how patented products are marked. Patent owners will no longer be obliged to include the patent number on the product, to indicate that it is protected. They can also publish a link to a webpage where further, more detailed information can be found. This will help patent owners to direct potential users to their contact details, and perhaps to communicate a willingness to enter into licences with interested third parties.

The Act paves the way for the introduction of a Unified Patent Court, by giving the Secretary of State powers to make orders to effect the necessary changes.

The Unitary Patent will be a single patent valid throughout Europe, which can be enforced across the whole of Europe with a single judgment in a designated court – as opposed to having to sue for infringement separately in each EU member state.

Sounds good, but it’s a double edged sword – the patents are equally vulnerable to being revoked for the whole of the EU in one go. The initial signs are that patent owners are still rather cagey about this prospect, and they may continue to take a piecemeal approach to enforcement rather than risking all their EU rights by wrapping them up in a single patent.

What does the Intellectual Property Act do for you?

The Intellectual Property Act has a big name, but a narrow scope. It is only likely to be of immediate relevance to businesses in which UK design rights are important.

The new criminal offence will give design businesses extra teeth to work with Trading Standards to enforce their rights, and may reduce infringement (especially if there are a few high-profile example cases). On the other hand, the defence for private copying could become a serious gap in protection as 3D printing progresses inevitably towards ubiquity.

The changes to patent law pave the way to important reforms in future in terms of the unitary patent effective throughout the EU. Whether the vulnerable nature of such a patent will gain traction amongst patentees remains to be seen.

For those of you without an interest in design rights or patents, the Intellectual Property Act doesn’t really affect you – and you can get back to what you were doing!

If you have any questions about protecting, commercialising or enforcing your intellectual property rights, Spearing Waite’s IP team in Leicester can help. Get in touch here: ip@spearingwaite.com

Lookalike packaging and passing off – a lesson on how to live dangerously

A recent case in the Intellectual Property Enterprise Court ruled that Moroccanoil could not prevent Aldi’s sales of its own-brand lookalike product, because customers were not misled.  Spearing Waite’s IP specialist John Buckby gives his thoughts on the case here.

The Intellectual Property Enterprise Court recently considered whether Aldi’s use of packaging similar to the ‘Moroccanoil’ hair product amounted to passing off.

Aldi packaged its own-brand hair oil product in very similar colours and get-up to the well-known ‘Moroccanoil’ product. Many bloggers and beauty commentators spotted the striking resemblance between the two – and suggested it was rather cheeky of Aldi to make their product look so close to Moroccanoil, while selling at less than half the price.

Moroccanoil commenced proceedings against Aldi for passing off. Passing off takes place when a business misrepresents its goods or services as those of another – typically by using a similar name or packaging – making customers believe that the different products are the same or linked.

The Court’s view was that Aldi had deliberately made its product reminiscent of Moroccanoil, and that the product ‘brought to mind’ the Moroccanoil product. But it found no evidence that customers made false assumptions about Aldi’s product. Although the commentators and bloggers had seen the similarities, none of them actually believed the products were the same – they all realised Aldi’s product was merely a ‘lookalike’.

So, despite Aldi’s intention to make the customers of their product to think of Moroccanoil, no-one was actually misled into thinking the products were actually connected, and there was no passing off.

What does this case mean for you?

The decision will be welcomed by cut-price retailers who design products to have the same ‘look and feel’ of established branded products.

This practice, known as ‘living dangerously’ (as you’re basically asking for trouble) does not automatically amount to passing off. It’s one thing to use characteristics of another product, and quite another to deliberately try to deceive customers in order to benefit from the reputation of a better-known product.

As long as there’s not a misrepresentation that makes customers falsely assume that the products are actually connected, there’s no passing off.

The Department for Business, Innovation & Skills recently issued a call for evidence on copycat packaging, to assess whether more protection should be granted to brandowners.  The consultation recognised that supermarket ‘own brands’ often use packaging highly suggestive of a market-leading product, to suggest equivalent quality and to divert purchases to their own cheaper product. The results of the call for evidence are still pending.

The Moroccanoil decision would seem to suggest that the current laws aren’t enough to protect brandowners. On the other hands, would it be fair for such brands to have a monopoly on colours and packaging styles – even in situations where no-one is confused – or would this harm business freedom and consumer choice? The answer is likely to depend what side of the fence you’re on.

Passing off is decided on the facts of each individual case. Aldi were successful in this instance, but you should obtain specific legal advice before using lookalike packaging yourself.

Spearing Waite’s intellectual property team, based in Leicester, can advise you on issues relating to branding, passing off, and trade mark infringement.  Get in touch here: ip@spearingwaite.com

New domains are coming – take steps to protect your brand

Over 1300 new ‘generic top level domains’ are being introduced. If you have a trade mark you have the opportunity to purchase your preferred domain in advance. If not, you may have to join a long line before getting your hands on the domain you want.

Spearing Waite’s intellectual property and trade mark specialist John Buckby explains the steps you should take to protect your brand in light of the new domains.

Generic Top Level Domains (gTLDs) are the internet domains identified by suffixes such as .com, .net, and .org. Until 2013, only 22 gTLD’s were available. Now over 1300 new gTLD’s are being made available. This includes domains such as .property, .insurance, .food, .sport, and .fashion. Whatever sector your business operates in, it’s likely there’s a new gTLD to match.

When are the new top-level domains coming in?

The process has already started, with new domains scheduled for introduction each month. You can check the status of the new domains on the ICANN website.

Who can apply for gTLDs?

Anyone can apply for the new domains. There is likely to be stiff competition, as businesses across the world seek to register domains matching their brand. For example, if there are dental businesses called ‘Zing’ in both America and the UK, they may may both seek to register the ‘zing.dentist’ domain.

If you own a trade mark, you have a chance to secure your rights first.

When do the new domains become available?

Each new domain is first made available in a ‘Sunrise Period’. This is an initial period of availability open exclusively to trade mark owners who have submitted details of their mark to the appropriate organisation.

After Sunrise, there’s a ‘Landrush Period’ during which domains may be sold at a premium price or subject to bidding wars between interested parties. When the Landrush Period expires, domains finally become available to the general public on a first-come-first-served basis.

So far, around 230 domains have scheduled ‘Sunrise’ start dates.  Some have already begun, others have a Sunrise scheduled deep into 2015. Many have not yet been scheduled and there is still time to protect your rights – and to apply for a trade mark if you haven’t got one yet.

What should I do to secure the domain I want?

First, if you have a trade mark you should submit it to the ‘Trademark Clearinghouse’. Once the trade mark has been approved, you can participate in all future Sunrise Periods before the new domains enter the Landrush Period or become available to the general public.

If you haven’t got a trade mark, it may be worth applying for one immediately, before your preferred gTLD becomes available. Otherwise, your rights will not be protected and other registrants may be able to secure important domain names before you – including those incorporating your own brand name.

Spearing Waite’s IP team is experienced at advising on domain name and trade mark matters.  If you’d like help in this area, including applying for trade marks or submitting them to the Trademark Clearinghouse, we can help.  Contact John Buckby here.