We aim to be number one for registered trademarks in Ireland

A registered trademark grants the owner a monopoly right by way of exclusive rights to use the trademark in their business in the country where the trademark is registered for the goods/services for which it is registered. The monopoly right is contained in the power that nobody else can legally use the registered trademark. If someone else seeks to use the registered trademark (or a similar trademark) without the owner’s agreement, then they can be sued for infringement.

The owner of a registered trademark can license others to use the trademark. The trademark once registered, in effect, gives its owner the same rights as property rights. Indeed, because the territory covered is a country, the territorial boundaries involved can be much more significant than the area contained in a single property as such. The registered trade-mark can then be bought sold, rented, licensed or franchised throughout that terrirory.

Through trademark registration, a trademark becomes a legitimate asset of the business. Registered trademarks can be used to justify goodwill attaching to a business. Goodwill in accounting terms is the excess value, above book values attaching to a business. It is easier to justify goodwill for registered trademarks, that hold monopoly powers. In our opinion, venture capital investors like to invest in businesses that have solid brands and regsitered trade-marks, with a good protection strategy built around them, as well as unique positions with their brands in the market.

By registering brands as trademarks, an owner obtains monopoly rights, that are exclusive to the owner. This provides a business brand with a stronger competitive edge, and is more attractive for potential buyers or investors. Several interesting cases illustrate the value of registering brands, and some have been decided by the courts in the case of trademarks. A few are outlined below: -

Sample cases involving regstered trademarks
- Click on List Item to go to trademark outcome summary

LVM the owner of luxury brands, and registered trademarks including Louis Vuitton sued parties that hosted sites selling goods using their registered tademarks. The case established that ISPs can carry a considerable commercial responsility, especially if registered trademarks are infringed by any site that they host. They can be held laible for damages when they host websites involving sales or promotion of goods that abuse registered trademarks or that supply counterfeit goods, without the permission of the owner of the registered trademarks.

A jury held that the parties, including the hosting service providers were liable for over €30million in damages.

A feature of a registered trademark is that it cannot be used without the owner's permission to sell competing goods/services. If the hosting entity had shut down the counterfeitors, or ceased to host their site, this would probably have reduced the damages.

Web hosting services liable for registered trademark infringement by hosted sites selling counterfeit goods

The Vuitton case on infringement of registered trademarks was decided by the Court in California (August 2009). Ultimately, the case centred around the hosting service allowed the websites to sell goods passing off under the Vuitton brand, and thereby infringing their registered trademarks.

The Court found that the hosting of the sites selling counterfeit goods that infringed the registered trademarks was contributory to the abuse of the registered trademarks of Vuitton. This resulted in substantial damages being awarded to Vuitton. For more registered trademarks cases information visit our blog site on trademarks cases.

This case may call into question the use by competitors of registered trademarks of others under search engines. There is an interesting case pending in France between LVM and Google concerning Google adwords and registered trademarks. To date the French courts have ruled that use of registered trademarks by competitors in Google adwords can infringe registered trademarks. Google has blocked certain adwords for the cases involved, pending an appeal to the highest court on France.

Danone, the large French dairy group is seeking damages from Glanbia from use of the Yoplait Essence brand name for yogurt. Danone contended it used Essensis as a trademark for yogurt between 1998 and 2004 - selling 72 mllion pots of Total Activia Bifidus Essensis. ESSENSIS is a registered trademark in Ireland.

Danone sought to block the registration of Glanbia's Yoplait ESSENCE brand, and pursued a legal action for infringement of its registered trademark in Ireland.

A feature of a registered trademark is that it must be used within 5 years. Glanbia contends that the Essensis brand was not put to genuine use in Ireland. Glanbia also contends it would be inconceivable that an Irish consumer would purchase a Yoplait yogurt brand item thinking it was made by Danone.

Similarity in brands case

The yogurt brands dispute was decided by the High Court (April 2007). Ultimately, the case centred around the use to which Danone had put its registered trademark. The brands appeared quite similar so too did the goods andservices involved. The High Court closely examined the use of Danone's registered trademark. Although the term ESSENSIS was used on yogurt cartons, the packaging referred to the yogurt having a unique ingredient, or being "with BIFIDUS ESSENSIS".

The High Court found that the references to the registered trademark on packaging were primarily in the context of a culture for yogurt, as distinct from yogurt. Danone did not have the trademark registered for a culture. So the High Court decided to revoke Danone's trademark ESSENSIS because it had not been used in connection with the goods it was registered for, namely yogurt, in the 5 years following application for registration.

TESCO and METRO. Late payment of fees for registered trademark and lack of protection.
trademarks case list

Registered trademark fees must be paid on time

To keep a registered trademark valid indefinitely, renewal fees are payable every 10 years. When a trademark is registered, it is important to ensure trademark registration fees are paid on time. This proved to be a key matter when TESCO STORES LTD. was opposing the registration of the trademark METRO for a German cash and carry/supermarket group, as a Community Trade Mark. Tesco held a registered trademark for METRO in the UK, and filed an opposition to the registration of METRO as a Community trademark.

Tesco sought to block the registration of METRO.

A feature of a Community trademark is that if it falls in one member state, then the trademark registration cannot be upheld throughout the EU, so if TESCO successfully opposed the METRO CTM, through its prior registered trademark in the UK, it could block the application for trademark registration in the EU.

Registered trademark renewal fee evidence

The trademark opposition was appealed in the European courts. On examination, it appeared that TESCO did not provide evidence that its registered trademark in the UK was renewed during the period when the proceedings were being contested. As a result it was held that the TESCO registered trademark was not effectively valid at that point in time, and it was possible for the Community trademark to be registered.

The applicant succeeded in obtaining a registered trademark, when an opponent did not provide evidence that its registered trademark had been renewed through evidence of payment of renewal fees for its registered trademark.

If TESCO had produced evidence of payment of its renewal fees, it could have successfully blocked the Community trademark registration. [13 September 2006]

PGA succeeds in revoking registered trademark, LPGA.
trademarks case list

Registered trademarks must be used

When a trademark is registered, the Trade Marks Act requires that the registered trademark must be used within 5 years of trademark registration, or alternatively, the trademark registration can be revoked if any such use has been suspended for an uninterrupted period of 5 years.

The Professional Golfers' Association (PGA) sought to revoke a registered trademark (LPGA) held by the Ladies Professional Golf Association.

The LPGA's registered trademark was held in respect of golf bags, golf clubs and golf balls.

Registered trademark revoked because not sufficiently used

The Controller decided that there was not sufficient evidence of use of the LPGA registered trademark to warrant genuine use of the registered trademark in the period since the trademark was registered. While the LPGA had entered into a licence agreement for the use of the registered trademark, the evidence of the agreement was not produced, and evidence of the level of sales was scant. As a result it was held that the LPGA registered trademark could not be maintained, and its status as a registered trademark was revoked.

The PGA succeeded in having the LPGA registered trademark removed from the trademark register. [11 August 2006]

Owner of registered trademark, METRO, stops Independent News and Media from publishing "Herald Metro" freesheet
trademarks case list

Power of registered trademark to block competitors

Holders of registered trade-marks have an established property right. In some ways this is more powerful than owning a property in say Dublin, because the registered trade-mark property right extends across the State, and infringement is regarded as a serious matter by the courts.

Independent News and Media sought to publish a freesheet called "Herald Metro". Metro was a registered trademark held by a competitor, and its owners sought to injunct Independent Newspapers to stop them using Metro in the title, thereby potentially infringing its registered trademark.

The Metro freesheet is a joint venture involving the Irish Times, Associated Newspapers and Metro International.

How registered trademark blocked competitors

The High Court decided that there was a likelihood of confusion, and therefore that the property right contained in the registered trademark, Metro, for similar goods and services, may be infringed by the publication of a new newspaper freesheet titled Herald Metro.

Accordingly, it stopped Independent News and Media from using Metro in its title (by granting an injunction to holders of the registered trademark). Subsequently, Independent proceeded to launch its freesheet with the name Herald AM, and Metro was also launched by the holders of the registered trademark.

Fortunegreen, the joint venture vehicle, succeeded in protecting the property right contained in the registered trademark, and blocked a competitor from using Metro. [7 October 2005]

Diageo to pay €295m to buy BUSHMILLS brand
trademarks case list

Registered trademark power to Sell Brands

Market share and scale can mean that for competition reasons, selling off brands can be very attractive. Pernod Ricard bid €11bn for Allied Domecq – this would have left Pernod with two significant whiskey brands, Jameson and Bushmills.

Registered trademark brands value

Diageo acquired an option to buy Bushmills, the world’s second largest Irish whiskey brand, for €295m.  The Bushmills price is based on 14 times its direct brand contribution (DBC) in 2004. [7 June 2005]

Danone sells sauce brands to Heinz for €700 million
trademarks case list

Danone wished to focus on three prime sectors.

It sold HP Sauce, Lea and Perrins Worcester Sauce and Rajah’s spices to Heinz’s famous 57 original varieties. Danone also granted Heinz a license to make the Amoy brand of sauces in Europe as part of the deal. [20 June 2005].

COMPUSTORE - Sale of registered trademark
trademarks case list

Registered Trademark Power of Brand

COMPUSTORE operated in Ireland as a retail chain of shops selling computers. It went into liquidation in late 2004, following a fall in sales of PC's. Its registered trademarks still were valuable.

Brand value in registered trademark

The registered trademarks reputedly were sold for €200,000. This indicates the potential value in registered trademarks. Furthermore, in Ireland, there is no stamp duty on the transfer of intellectual property, and there may be certain advantages in the lower rate of Capital Gains Tax, since registered trademarks are legitimate property rights.

Reckitt & Colman Products Ltd. v. Borden Inc. The GIF lemon case
trademarks case list

Power of shapes in registered trademarks

Defendant used plastic container similar to the “Jif” lemon shaped juice container. Registration of shapes as trademarks is allowed.

Registered trademark power to block competitors

The courts restrained the defendants from using the container.

Buy & Sell Magazine
B&S Ltd v. Rapid Design Ltd. (Associated Newspapers Group).
trademarks case list

Power of title and territory in registered trademarks

The publishers of Buy and Sell magazine successfully sought to protect its brand and market position. A competitor proposed to launch another publication called Mayo Buy and Sell.

Registered trademark power blocked competitors magazine

With a view to protecting its extremely valuable goodwill and reputation in the Buy and Sell brand, the plaintiff had two registered trademarks. The High Court granted the registered trademark owners an injunction restraining the new publication. [5 March 2004].

Wonderbra & Funderbra
trademarks case list

Power to Protect Territory in registered trademarks

Competitor sought to register Funderbra as a trademark.

Power to Hold Territory in registered trademarks

Wonderbra successfully stopped the other trademark registration by filing opposition. The grounds of the trademark opposition can be important factors in protecting the brand.

Cameras & Bicycles
Eastman v. Griffiths
trademarks case list

Power to block similar goods in registered trademarks

The trademark KODAK was being applied to bicycles.

How registered trademark blocked similar goods

The courts stopped use of the name KODAK for bicycles because the trade in cameras and bicycles were similar.

VISA Appeal Decision
trademarks case list

Registered trademark Power to extend Scope

An application was made to register the name VISA as a registered trademark for condoms.

Has registered trademark power to block detrimental competitors

The VISA mark for credit cards was upheld because the use of VISA on condoms would be detrimental to the distinctive VISA trade mark.

Coca Cola Bottle
trademarks case list

Until shapes could be registered, Coca Cola could not register its bottle as a trademark.

New legislation was passed in the UK in 1994 allowing registration of shapes. The shape of the Coca Cola bottle is now a registered trademark.

AG Spalding & Bros v. Aw Gammage Ltd.
trademarks case list

Power to defend reputation in registered trademarks

Spalding manufactured “Orb” footballs. Their mark was applied to two types of ball, and the inferior type was sold to waste rubber merchants. The defendant bought the inferior balls and sold them implying they were the higher quality type.

Power to uphold reputation in registered trademark

The courts held that the plaintiffs had established a quality reputation for Orb footballs.