"WE AIM TO BE IRELAND'S NUMBER ONE LOW COST TRADE MARK AGENT"

Registered trademarks and monopoly rights A registered trade mark grants the owner a monopoly right by way of exclusive rights to use the trade mark in their business in the country where the trade mark 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 trade mark (or a similar trademark) without the owner’s agreement, then they can be sued for infringement. The owner of a registered trade mark can license others to use the trade mark. The trade mark 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 trade marks, 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 trade marks. A few are outlined below: - Sample Cases Involving Regstered Trade Marks Click on List Item to go to Trademark outcome summary • The DANONE and GLANBIA brands case involving Yoplait brand • The TESCO and METRO registered trademark expiry case • The PGA and LPGA registered Irish trademark revocation case • The registered trademark METRO blocks Herald Metro case • The Bushmills registered brand is worth €295 million • Danone sells registered trademark sauce brands to Heinz for €700 million • The COMPUSTORE Irish registered trademark case • The Jif lemon case • The magazine registered trademark in Ireland case • The WONDERBRA registered trademark case • The KODAK registered trademark case • The VISA registered trademark condom case • The Coca-Cola bottle case • The qualty reputation registered trademark case

CASE	Registered trademark ISSUES	Registered trademark OUTCOME
Danone and Glanbia. Yoplait Essence brand and Danone Essensis brand. Similarity of brands and infringement of registered trade mark. Case list	Yogurt brands court case 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 trade mark. The brands appeared quite similar so too did the goods andservices involved. The High Court closely examined the use of Danone's registered trade mark. 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 trade mark on packaging were primarily in the context of a culture for yogurt, as distinct from yogurt. Danone did not have the trade mark 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. 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 trade mark 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 Trade Mark. Tesco sought to block the registration of METRO. A feature of a Community Trade Mark 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 Trade Mark to be registered. The applicant succeeded in obtaining a registered trademark, when an opponent did not provide evidence that its registered trade mark 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 Trade Mark registration. [13 September 2006]
PGA succeeds in revoking registered trade mark, LPGA. Case list	Registered Trademark must be used When a trade mark 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 trade mark 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 trade mark 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 trade mark, METRO, stops Independent News and Media from publishing "Herald Metro" freesheet Case list	Registered Trademark Power 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 trade mark 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 trade mark. The Metro freesheet is a joint venture involving the Irish Times, Associated Newspapers and Metro International.	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 trade mark, 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 regsitered trade mark). Subsequently, Independent proceeded to launch its freesheet with the name Herald AM, and Metro was also launched by the holders of the registered trade mark. Fortunegreen, the joint venture vehicle, succeeded in protecting the property right contained in the registered trade mark, and blocked a competitor from using Metro. [7 October 2005]
Diageo to pay €295m to buy BUSHMILLS brand 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 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 Trade Mark 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 trade marks still were valuable.	Registered Trademark Brand Value The registered trademarks reputedly were sold for €200,000. This indicates the potential value in registered trade marks. 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 trade marks are legitimate property rights.
Reckitt & Colman Products Ltd. v. Borden Inc. The GIF lemon case Case list	Registered Trademark Power of Shapes Defendant used plastic container similar to the “Jif” lemon shaped juice container. Registration of shapes as trade marks 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). Case list	Registered Trademark Power of Title 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 trade mark owners an injunction restraining the new publication. [5 March 2004].
Wonderbra & Funderbra Case list	Registered Trademark Power to Protect Territory Competitor sought to register Funderbra as a trademark.	Registered Trademark Power to Hold Territory 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 Case list	Registered Trademark Power to Block Similar Goods The trade mark KODAK was being applied to bicycles.	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 Case list	Registered Trademark Power to extend Scope An application was made to register the name VISA for condoms.	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 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. Case list	Registered Trademark Power to Defend Reputation 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.	Registered Trademark Power to Hold Reputation The courts held that the plaintiffs had established a quality reputation for Orb footballs.

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