Member Blog

07-09-2015

Novagraaf UK’s Tom Farrand outlines the reasons that companies are increasingly asking trademark attorneys to help assess the worth of their intangibles.

This article first appeared in the September 2015 issue of ITMA Review.

We all know brands are important and valuable to a business, but why seek to put an actual value on them? In today’s budget-focused boardrooms, trademark attorneys need to show that the legal rights that protect those brands aren’t unnecessary costs, but instead add value to the business. More than that, as your management accountant will tell you, ‘What gets measured, gets managed.’

Brands enable owners to repeatedly charge a premium for what is often the same, or a similar, base product. This applies in all sectors, from computers to coffee, and from painkillers to polo shirts. A pack of Nurofen tablets, for example, will set consumers back 12p per tablet, as opposed to 2p per tablet if they buy a supermarket own-brand ibuprofen equivalent.

It is the brand that entices a customer to pay more and come back for more. The trusted name serves as a reassurance of quality and a shortcut to reading the clinical data or comparing ingredient lists with an own-brand equivalent. This is brand equity.

In the brand valuation process, we are asking: what is that brand equity worth to the business? Or, rather: what’s its current worth and can it be further leveraged? Is there more that can be done?

Defining the what In measuring value, we first define what we are seeking to place a value on. In this context, a brand is a marketing-related asset that may include names, terms and logos intended to identify goods, and create distinctive images and associations in the minds of stakeholders, thereby creating economic benefits for the owner. Stakeholders can refer to consumers, shareholders, investors, media and so on.

How we measure that brand’s value depends on the purpose for the valuation. Purpose dictates the premise (or basis), and that, in turn, dictates the method – and different methods produce different results. For example, is the valuation driven by strategic planning, financial reporting, dispute resolution or due diligence? Each of these will result in a different valuation premise and methodology – for instance, the desire to capture market value, as opposed to investment value or liquidation value.

The ISO 10668 was developed in 2010 to set a ‘standard’ for brand valuation. It covers three categories: legal, behavioural and financial. The first requires there to be an analysis of the strength of legal protection, the second measures stakeholders’ attitudes, and the third, financial performance.

Financial performance can be calculated by taking a market-, cost- or income-based approach – such as royalty relief, which looks at how much you could ask a licensee to pay to use your brand. Each of these can result in a slightly (sometimes even wildly) different end calculation. This broadly explains the disparity in results we see in high-profile brand-value rankings, such as those produced by Interbrand or Brand Finance. Even within income-based methodology, there are various approaches, so the ‘standard’ has plenty of variety.

Legal protection through trademark (and other) registrations has touchpoints throughout valuation calculations, no matter which methodology you use; the stronger and better managed that the trademark portfolio is, the higher the value of the brand may be.

The question of why Few of us are accountants, so this is not the place for long-winded explanations of brand valuation calculations. For trademark attorneys involved in valuing brands, the ‘why’ should come before the ‘how’.

Some the most common reasons for undertaking a valuation exercise include: portfolio disposal or acquisition, preparation for an initial public offering (IPO), transfer pricing, IP licensing and IP securitisation. Each of these will require a different valuation method, or combination of methods.

But brand valuation is important at any stage of a brand’s life cycle, not just when it comes to a restructuring or sale. Any company needs to see that it is getting a return on investments made, and investment in IP protection is no different to an investment in new plant or manufacturing capabilities. Its just more difficult to articulate or quantify.

Of course, investment in protection is only one aspect of outlay in a brand, which could also include, for example, marketing and PR activities to increase awareness. Although a brand valuation will not necessarily prove that the investment in protection is the factor increasing or decreasing brand value, it will always be a factor.

There are instances where a strong brand protection policy has been undermined by bad publicity, which has a negative effect on brand value. Equally, a strong brand can be undermined by an inadequate trademark protection strategy that prevents the brand owner from, for example, expanding to new countries or new product ranges because someone else owns those rights.

There are also the cases when the value of a company acquisition rested almost entirely with the IP assets being acquired.

Trademark ratings Intangible assets account for over half of the total global enterprise value of companies as shown in a study(1) analysing the enterprise value of 56,000 companies listed on more than 100 stock exchanges around the world.

As with many industries, the functional differences between products and services have been narrowed to the point of near invisibility. It is intangible assets, such as brands, that provide the basis for establishing meaningful differences between apparently similar offers.

Of course, a brand is more than just a trademark but, without trademark protection, a brand is potentially worthless. This is why ISO 10668 requires legal analysis to rate the strength and value of the trademark portfolio that sits behind the brand being valued.

There are numerous methods of analysing the strength of a trademark portfolio. For valuation purposes, it is important that the method used can be replicated and that an awareness of competitor behaviour is incorporated into the methodology.

Novagraaf provides trademark ratings for Brand Finance, one of the well-known producers of League Tables, as well as an analysis of portfolio strength for its individual brand valuation reports. This is done through a combination of public data, trademark search tools, and a proprietary methodology and standard ‘scoring’ system that highlights strengths and weaknesses in protection – whether strategic, geographical or product wide. In addition, we make overall recommendations for improvements – generally, areas where companies can act quickly to shore up protection, as well as advice on how to ‘futureproof’ their portfolios.

Many of these ‘weaknesses’ are simply an indication that the company’s trademark portfolio has fallen out of step with the reality of its market activity – for example, areas where it has moved into new classes or countries, but overlooked the need to put registrations in place first (or indeed after). We have even seen instances when companies have changed their names after merging with another party, but failed to register trademarks to reflect that. Some require a more detailed follow-up audit to provide further gap analysis and advice on remedial actions.

Often, some simple changes to a company’s strategy can significantly improve the rating on the trademark portfolio which, in turn, will affect the overall brand value.

Trademarks – cost or investment? Trademarks and associated forms of IP are the one constant in brand creation. A product’s name, the design and colour of its packaging, and the corporate logo are not just marketing tools – they are legal rights which can bring great benefits and growth when nurtured and used properly. Yet, they can often be overlooked in the rush to market, or simply considered a drain on resources – an outgoing cost to the business that seems to bring in little return.

That’s why it’s important for us as an industry to showcase the contribution made by trademark assets to brand strength. We all know that a strong, well-managed registration portfolio has a direct influence on brand value, and therefore business value. Valuation of that asset can also unlock its true worth, and show that the right trademark registration strategy is an investment, not just a cost.

(1) Source: 2014 BrandFinance® Global Intangible Finance Tracker (GIFT™)

Brand valuation – a potted history

• 1988: First notable valuation Premier Foods, then RHM, turned to valuation as a defensive measure when subject to a hostile takeover bid. It valued Britain’s much-loved Hovis brand to show that the takeover offer undervalued the RHM business.
• 2000: $1bn securitisation RHM was, this time, the subject of the first major IP-based securitisation. The company raised more than $1bn using its brands as security, leading to the issuance of a ‘brand bond’ the following year.
• 2001: “100 Best Global Brands” First brand league table published by Business Week.
• 2004: IFRS3 Introduction of the International Financial Reporting standard.
• 2010: ISO 10668 International Standard for brand valuation introduced.
• 2014: League Tables Today, brand valuation league tables are commonplace, and brand valuation has become accepted as an important part of valuing business.

Tom Farrand is Managing Director, Trademarks, UK at Novagraaf

Over the last few years’ awareness of some of the social economic challenges facing coastal communities across the UK have been significantly highlighted. Each week it seems one or more of our seaside towns are identified as having the highest levels of youth unemployment, poverty or vacant retail outlets. The list is extensive and whilst it is important to remember these issues are prevalent equal discussion needs to take place around the new jobs, industries and work based learning opportunities that are being offered.

As a Project Manager at Business in the Community operating in Great Yarmouth I have witnessed first-hand how the town has adapted to change and is working with partners across the public, private and voluntary sectors to tackle some of the core social and economic issues. 34% of working age residents in one Great Yarmouth neighbourhood have no recognised qualifications, with only 9% of residents qualified to higher levels. These skills deficits are reflected in lower than average earnings, which are £43 per week lower for working residents compared to people who commute into the town.

Against this backdrop we’ve been working with a coalition of partners to help revive the towns’ fortunes. One of the key growth sectors of the UK economy over the last few years has been social enterprises. There are 280,000 social enterprises in the UK, contributing £55 billion to the UK economy and employing approximately 975,000 people. Well established social enterprises like the Big Issue and Jamie Olivers Fifteen restaurant are established in towns and cities across the UK. The establishment of these enterprises and people’s desire to make a positive difference, create employment and up-skill local residents has resulted in this growth.

Since the launch of the Great Yarmouth Borough Council’s Skills, Enterprise and Assets (SEA) project 12 social enterprises have been supported in Great Yarmouth. These have been established by residents who not only have the passion to establish their own business but also to see the local economy thrive. One such example is The Wind Energy Museum. It is the only one of its kind in the UK and the vision was to turn the site in to a delivery centre to benefit vulnerable groups and increase recognition of local heritage. Debra has secured a place on this year’s Lloyds Social Entrepreneur Programme to help her develop a residential training venue, full heritage wind energy museum facilities and vocational outreach for schools.

Debra Nicholson, the founder of the organisation, has not only grown and developed the enterprise but also grown their confidence and skills. The knock on effect of this can be huge with learnings shared and local residents inspiring one another to think creatively about how they can tackle some of the issues facing their local community.

One thing to remember, which has massively impacted on this projects success, has been the involvement of local employers in helping to grow and develop the social entrepreneurs. Employers already established in Great Yarmouth saw from an early stage the benefits of working with local residents and partners to get involved in the project. One of the most popular forms of support has been through the provision of mentoring to the social entrepreneurs. Not only has this helped up skill the individuals involved it’s also broadened the employers understanding of the local community and issues that the social entrepreneur are working to address.

Simon Gray (Credo Asset Finance) was one such mentor who took part in the programme and, as a successful entrepreneur himself, was able to understand the challenges of running a business. His organisation also provides start up loans and he is now working in partnership with two social enterprises to develop a start-up school for young entrepreneurs – particularly those from disadvantaged groups who are passionate about overcoming barriers to employment.

Examples like those raised above where showcased at our Future of Responsible Business event on the 17th September at Great Yarmouth Town Hall. The event not only celebrated the impacts achieved through collaborative working but also looked to the future as to how organisations can benefit from this diverse group of social enterprises in the town.

If you’re not already working with a social enterprise I would encourage you to take some time to think about the various options available. Our event report provides an overview of the opportunities available. If you’re already working with a social enterprise then we’d love to hear your experience by commenting below or by contactingour local team.

We now get frequesnt requests from business owners asking about video and in particular video testimonials…

I have made this video to epxplain why video testimonials are so effective as part of your marketing. Please watch it all… the psychology is in the video too… I think you’ll be suprised at how simple yet mind blowingly effective it is!

Video testimonials are with out doubt… the most imprtant video you can create for your business what ever yor product or service area may be.

From Coke Red [Pantone 484] to Starbucks Green [Pantone 3298C], Cadbury Purple [Pantone 2685C] and BP Green [Pantone 348C], colours can be valuable trademark rights. Now, even Hollywood films are getting in on the act, as Novagraaf’s Claire Jones explains.

Colours form some of the world’s most recognisable and valuable trademark rights. Once registered – if they can be registered – they provide the trademark owner with an exclusive right to use that shade of colour, in relation to the goods/services for which it is registered and in the territory for which it is registered, and to stop others from using an identical/similar colour in relation to identical/similar goods/services, in the territory of registration.

The Pantone system is one of the most widely adopted guides for identifying and matching colours. No matter where or how something is produced, by specifying the relevant Pantone swatch colour, the exact colour can be replicated. For trademarks, which require clarity, precision and the ability to be represented graphically, the use of an international colour code has long been recommended.

Introducing the Minion Yellow A collaboration between Pantone Colour Institute and Universal Pictures/Illumination Entertainment has resulted in the first ever character-branded colour, ‘Minion Yellow’, based on the popular characters from Despicable Me. According to Pantone’s press release, the colour “heightens awareness and creates clarity, lighting the way to the intelligence, originality and resourcefulness of an open mind – this is the color of hope, joy and optimism“.

The Pantone colour does not allow Universal et al to prevent others using the colour, at this time. The colour has simply been given a name and the recognition from Pantone in the same way as its ‘Colour of the Year’.

Will Universal apply to protect it as a trademark? The film has already surpassed the US$900million mark and Minion merchandise is hard to escape.

Hurdles to registration Following the Cadbury Purple decision in the Court of Appeal of England and Wales (see full judgement here), one of the main stumbling blocks to the registration of a colour trademark in the UK is the use of ‘predominant’ in the description of the mark, as this is deemed to be too imprecise. The main factors to be considered, in this respect, are the proportion of the surface area of the packaging on which the colour appears, the position of the colour, and whether it appears as a continuous block or is mixed up with other colours.

Does a Minion class as packaging? Is he more than 50% Minion Yellow? And what of the different Minion characters? They each take a different form and persona, unlike other animated characters, such Toy Story‘s Buzz Lightyear or Olaf from Frozen.

The biggest factor to be considered, and which is fundamental to all trademarks, is whether the colour yellow is solely indicative of Universal’s Minions and whether it serves to distinguish the goods of the Minion franchise from those of other similar franchises. What about other iconic yellow cartoon characters, such as Fox’s The Simpsons? Can the average consumer spot any difference in the colours of The Simpsons‘ characters versus the Minion characters, and do they even use the colour to differentiate between the merchandise of the two franchises?

Even if Universal is awarded a trademark, how will the colour be enforced? The studio cannot stop someone using Minion Yellow to paint a bedroom, and it may face difficulties when trying to enforce its rights against other uses of yellow for commercial gain. However, subject to the point above regarding The Simpsons, a registration could help prevent the use of copycat characters that are not recognisably Minions. A number of recent cases provide helpful guidance in the EU in this respect:

• Nivea Blue – Germany Germany’s Federal Court of Justice has sent a feud between Unilever and Beiersdorf back to the courts after ruling that the Patent Court’s requirement that 75% of consumers must associate the colour with Nivea was too steep. The Federal Court of Justice held that the requirement was prohibitively stringent and only a majority, or 50%, was sufficient.
• Orange – Spain In a dispute over the colour orange against Jazz Telecomm, the Spanish Supreme Court refused Orange’s application consisting of a plain orange square.
• Rosetta Stone – Germany Rosetta Stone, the publishers of a range of language software packages and German dictionary publisher Langenscheidt both use shades of yellow. The German Federal Supreme Court found that Rosetta Stone’s use of yellow for language dictionaries was an infringement of Langenscheidt’s rights. The judge held that, in order to register a colour as a trademark, the product had to have a large market share, a long history of sale and a public perception linking that colour to that product.

The verdict echoes the ruling of the earlier European Court of Justice ruling in Oberbank v Santander, which involved the colour red.

For a different kind of Minion branding, see here.

Claire Jones is a trademark attorney in the London office of Novagraaf

The Premier Loft Company was founded by Malcolm Newman in 1990 and provides quality loft conversions in London and Greater London. Their services include loft installations, kitchen extensions, ground floor extensions and shower rooms.

We have had the privilege of working with Premier Lofts this summer to add value to their website’s SEO and User Experience. When Premier Lofts approached us at Tudor Lodge Consultants, their site was not visible on any of Google’s search rankings, other than for their brand name. We therefore devised a strategy in order to boost their search results and make the site more user friendly, with the intention to generate more enquiries.

What we did for Premier Lofts

Our content team created over 40 different landing pages for Premier Lofts, each over 1,000 words with specific keywordsrelating to their products, presented with videos, images and maps to create an SEO friendly and a pleasant user experience.

For pages like loft conversions in north london, users are now presented with a high-quality video of Malcolm speaking about his services and what he can offer you. There is a clear map showing which areas they work in and images highlighting the quality of their work. Overall, creating a very optmised page.

From a technical aspect, we reviewed the code of the site to ensure faster page loading times and removed any crawl errors, dead links and 404 pages.

From a links perspective, we added the site to local directories to show Google that they are a real bricks and mortar company (excuse the pun!) and also made enquiries and gained links in local news and industry related sites.

The Results

Within a matter of weeks, the Premier Lofts site is now ranking in the top 3 on Google for ‘loft conversions + area’ including ‘Loft Conversions in Barnet’ and ‘Loft Conversions in Finsbury Park’

We look forward to working with Premier Lofts in the future to create more relevant content and generate high quality links – this will further boost their rankings on Google for competitive keywords and generate good enquiries.

Are you aware of the tech talent in Norfolk?

Where do you go when you need coders, softwaredevelopers or app creators? Where do you go when you need websites built and optimised for mobile devices? Where do you go to discover the latest developments in technology and digital creativity – and what they might mean for your business?

If you answered, ‘not sure’ or (worse still) ‘London’, then I have news for you. GreaterNorwich is home to a thriving tech and digital creative sector, employing some 14,000 people,and is a recognised #TechNation cluster (just one of 21 in the country according to Tech City UK). The companies range from innovative startups and micro-businesses to fast growing SMEs, including award winning agencies and advanced technology pioneers.

You can meet some of these companies and hear what the latest advancesin technology mean to your businessat ‘The Future is Here’ event, run by Norfolk Chamber, on 23 September 2015.

Get involved and meet the community

The organisers of Hot Source, Norfolk’s innovation forum, are also keen to strengthenlinks between local tech companies and the wider business community.One way we do this is to hold free quarterly events that explore the latest thinking about the ways technology is shaping business and society. However, we have also started to put together a list of all the different tech-related groups and volunteer led networksin Norfolk and Suffolk, to help local business people connect with this exciting sector.

Our aim at Hot Source is to encourage different sectors to shareideas and experiences, so as to stimulate innovation, power economic growth and create jobsin our region. We want to inspire our talented young people to stay and build their world-beating companies here. And we want entrepreneursfrom elsewhere to see Norwich and Norfolk as a great place start-up and scale-up their businesses.

With your help, we can make our region one of the most dynamic in the UK and Europe. We have a wealth of talent – as well as a great quality of life – but we will only prosper collectivelyif we make the most of the opportunities around us. Please take time to connect with the local #TechNation community and share this information with your network – because together we are stronger.

The Rugby World Cup is among the top 10 largest sporting events in the world. The tournament is organised every four years and, this year, will be hosted by the UK from 18 September to 1 November. On previous form, it is likely that the Rugby World Cup organisation will be as strict as FIFA and the International Olympic Committee when it comes to protecting its brands, sponsors and, therefore, revenue.

It’s less than a month to go until the UK-hosted Rugby World Cup starts. The tournament is projected to boost the national economy by £1 billion, with 400,000 international visitors expected to watch 20 nations compete. Already 90% of tickets have been sold, and marketing in the 11 host cities has started to ramp up, with the Coca-Cola London Eye wrapping its capsules in the flags of the 20 competing nations, and the Rugby World Cup logo placed on the Tyne Bridge in Newcastle.

While many businesses will want to take advantage of the event to cash in and raise their commercial profiles, there are a number of trademark issues that need to be considered to ensure that campaigns do not fall foul of the Rugby World Cup rules and regulations.

The International Rugby Board (IRB) owns registrations in the words RUGBY WORLD CUP, RUGBY WORLD CUP 2015, RWC, RWC 2015 and the Webb Ellis Cup design. In addition, IRB owns ‘rights in the tournament names, main trophies, company names, trade names, logos, product packaging and designs of RWC or official sponsors, licensees, supplies, or other third-party products or services, belong exclusively to RWC or such third-party, as applicable, or their respective owners, and are protected from reproduction, imitation, dilution or confusing or misleading uses under national and international laws, as applicable’.

Making sure merchandise is official Tournament-inspired merchandise is being carefully monitored by the Rugby World Cup organisers with official and replica jerseys, and a range of related merchandise sold only through the official website, official shops in London and Cardiff, and through authorised agents and affiliated sponsors’ sites. The articles are all provided with a hologram logo so that the buyer knows that products are authentic.

Similarly, tickets sent to fans incorporate augmented reality technology via Blippar to enhance visitor’s match day experiences, provide seat views, information and content, and minimise the sale of counterfeit tickets.

IRB organisers have secured all outdoor media sites close to host venues to prevent ambush marketers reaching spectators.

Preventing ambush marketing Ambush marketing refers to a marketing campaign in which a company or brand associates itself with a specific event without paying sponsorship fees. This phenomenon occurs at every major event (search online for Paddy Power or Nike campaigns during the 2012 London Olympics or Stella Artois’ tennis-themed advertisements near the site of the US Open for examples of such campaigns).

IRB’s worldwide sponsors include MasterCard and Heineken, with official sponsors of the Rugby World Cup including Coca-Cola and Canon. Sponsorship revenue has risen 50% since the last World Cup and the growing profile of rugby has seen significant increase in its commercial value. This will lead to tougher action being taken against ambush marketers and trademark infringers.

No specific legislation has come into force regarding the Rugby World Cup as was established, for example, for the 2012 Olympic Games in London. Instead, the Rugby World Cup organisation will be seeking to use existing laws to act against ambush marketing, including trademarks, passing off and copyright laws.

In addition, the Committees of Advertising Practice (CAP) issues codes for UK advertising, and includes ambush marketing, although PR ‘stunts’ are not covered by the CAP Code. The CAP Code does not prevent people from referencing a sporting event, but any advertisements based on or around a sporting event must not mislead consumers by implying that an official relationship exists when it does not. In addition, adverts must not take unfair advantage of a competitor’s trademark and requires marketers to hold evidence that any cited endorsements are genuine (full guidancehere).

The scope of ambush marketing campaigns on social media is yet to be seen, but is likely to be prevalent during the tournament.

Keeping within the rules Companies and local businesses will not be stopped from chasing business or selling to tourists during the event, but they will need to be very careful. The general rule is not to make any reference to the Rugby World Cup unless you are an official sponsor, for example:

• Do not use wording such as ‘Rugby World Cup’ or ‘RWC 2015’;
• Do not use imagery, such as the Webb Ellis Trophy, the IRB’s ‘filleted fish’ logo or ‘England 2015 logo’;
• Do not use phrases or slogans associated with the IRB tournament, such as ‘Too Big To Miss’;
• Do not use colour schemes similar to those used by the IRB; these may not be registered, but there will be unregistered rights and copyright in such colours;
• Be aware of the rights owned by the IRB and their sponsors, licensees and affiliates and avoid using the identical or similar wording/logos; and
• If promotions are run, including special discounts, be careful not to directly associate your company with the event.

There will be sponsorship deals and collaborations at team and individual levels. These can be a great opportunity to promote, for example a player in the tournament, without falling foul of any regulations. Here, inspiration can be taken from Nike’s campaigns over a number of different sporting events, including the London 2012 Olympics.

If you are planning to launch a marketing campaign to tie-in with the Rugby World Cup and would like guidance or further information, please speak to your Novagraaf representative.

For more information on attending the Rugby World Cup, visit the official website for venue, fixture dates, travel and team information, together with ticket authentication tools and ticket resales. To support England Rugby, #carrythemhome, see here. For the RFU’s beginners’ guide to rugby union, see here.

Claire Jones is a trademark attorney in the London office of Novagraaf

During the summer months, pharmacy shelves are packed with sunscreens ranging from factor 6 to 50+. These products generally offer excellent protection against the sun but, when it comes to brand protection, it’s a different story: both the numbers and the term sunscreen do not fulfil requirements for distinctive character and, therefore, cannot be registered as trademarks. We set out the requirement of distinctiveness in trademark registration.

A trademark can be any word, sign, symbol or graphic that you apply to your company, goods or services to distinguish them from those of your competitors; for example, a brand, product or company name, or logo. The trademark serves as a badge of origin for your business and its brands and products, and can consist of words, logos, images, slogans, shapes and colours, or a combination of all of these.

Not every word, sign, symbol or graphic is capable of being registered as a trademark, however. It must fulfil a number of conditions in order to be passed for registration, including that of ‘distinctiveness’. But what does ‘distinctive’ mean in this sense?

Assessing distinctiveness There are a number of elements that determine whether or not a trademark fulfils the distinctiveness requirement to become a registrable trademark. The central and most important factor is whether or not the trademark is descriptive.

You need to look at the proposed trademark in relation to the goods or services for which it is being used. Is the name (or drawing, print, shape, etc) descriptive in relation to those goods or services? If so, the applicant will not, in principle, be able to obtain trademark rights for that name.

To be approved by the relevant trademark office, the proposed trademark needs to be a word, logo, picture or other sign that clearly identifies the applicant’s goods and services from those of other traders.

Therefore, the numbers that refer to the degree of sun protection (e.g. factor 50+) would not meet the requirements for distinctiveness, and so are not capable of trademark registration.

Is it a common term? If you drive past the petrol station while on holiday, you may notice you can buy ‘diesel’ there. Diesel is a descriptive indication of a particular type of fuel and, so is not registrable as a trademark. In comparison, the word is not a common term in the clothing or fashion sector, which makes it a distinctive brand for such products (hence the Diesel fashion brand).

There are countless examples of brands that use a common term, but in different sectors to those where they are commonly used. Another well-known example is Apple.

Is the term generic? Once arrived at your holiday destination, you’ll probably fancy a cold drink. You might consider having a cocktail, such as a piña colada. Cocktail names such as these have become generic terms since they have been used to denote the nature of the cocktail rather than the origin of the cocktail. As such, it is not possible (anymore) to protect them as trademarks.

Have you created a neologism? You could opt to combine two words to form a brand name. The fact that the resulting word can’t be found in a dictionary, however, is no guarantee that it can be registered as a trademark.

The Court of Justice of the European Union (CJEU) has ruled that a combination of descriptive words is in itself descriptive, unless there is a perceptible difference between the neologism and the mere sum of the elements of which it is composed. ‘Baby-dry‘ for nappies was considered acceptable, although many subesequent decisions have tried to distinguish themselves from the acceptance of that mark, whereas ‘doublemint‘ for chewing gum is not.

Does the mark include a graphic element? Previously, the requirement for distinctiveness could easily be satisfied by adding a graphic element to the descriptive name. In other words, instead of registering a word mark, you would register a device mark. In recent years, however, the addition of a graphic element no longer guarantees that your application will overcome a lack of distinctiveness. The addition must add something “extra” to the mark so that it is no longer just the descriptive term. For example, a picture of a KIWI fruit added to the word KIWI will not make the mark distinctive for fruit but makes it even more descriptive, but adding a non-related device such as complex geometric shape might. It will never enable you to stop others selling kiwi fruit and calling them kiwi fruits, however.

Is the brand in extensive use? Finally, if it can be shown that the mark has become established in a market due to long-term and/or extensive use, you may be able to obtain trademark registration despite a lack of distinctiveness in your chosen brand name. However, in order to do this, you must prove that the sign has been used so extensively that your consumers perceive it as an indication of the origin of the goods and not as a description of the mark. This can be done by demonstrating the market share of the brand, and the intensity, geographical spread and duration of the use of the mark. Audi obtained registration of the descriptive German phrase ‘VORSPRUNG DURCH TECHNIK’ (advancement through technology) on that basis.

Find out more The assessment of a mark’s distinctiveness can often be subjective. However, it is possible to assess the feasibility of registration for a chosen brand name by reviewing it for descriptive and distinctive elements. It is also important to check that the mark is available for use prior to any brand launch.

To find out more about trademark registration or trademark availability searching, please speak to your trademark consultant or contact us.

We see the word Entrepreneur a lot, but what is an Intrapreneur?

When we choose an overseas holiday destination, one of the first things we consider is to go long haul or short haul. This decision is really important as if you’re planning on a weekend away, then choosing Hong Kong for instance may not be the best idea for a relaxing break unless you really like the inside of a Boeing 747.

This notion of understanding yourjourney time in relation to your goals is also vital when deciphering if you’re going to be a more effective entrepreneur or if you’re happy to strap yourself in for a long flight and go down what we call the intrapreneur path.

One of the fundamental elements of what we teach allSwarm apprentices is what it is to become an “Innovative Intrapreneur” so they can learn to find opportunities in their own businesses.

So what is an intrapreneur? The word has only been around for a short while as a description for people who use a lot, if not all, of the skills of an entrepreneur but work within an organisation maximising on opportunities for growth and efficiencies.

We cannot and should not all aim to be successfulentrepreneurs like we see on TV as most of those you speak to have had business partners who have been the business brain and taken the idea to make it into a successful global brand.

Both of these two people have the mind-set and skills that almost mirror each other but where the risk taking entrepreneur may want to dabble in many, the resilient intrapreneur wants to pick up, mould and expand. Both are equally creative as each other but whereas one will look to the external world for entirely new solutions, the other will follow the established brand purpose and values as a guide and apply that to seeking new ideas that offer efficiencies or product innovations that have the ability to expand the businesses profitability or brand influence.

In short, it is empowering employees to look for a gap or opportunities in your existing marketplace/business, create a plan and then take ownership of the new project or service using the skillset of an entrepreneur and possibly the teamto make it happen.

So what does an innovative intrapreneur look like? In order to be an effective intrapreneur you have to be able to find a problem, create a solution and turn this into a new opportunity, for profitability, growth or expansion. Then you need to create a vision that can be interpreted into a long term business plan and make sure it does not deviate away from the original purposeof the organisation. Once you have this you need to be able to make sure the project is financially viable and offers the ability to be sustainable.

So what skillset do you need to be able to be an innovative intrapreneur?

1: Big picture thinker-You have to be able to see the whole forest and its goals rather than just the trees within it.

2: Be an inquisitive challenger -Ever had a 5 year old keep asking “Why” or “Why not?” This is a good trait as long as you’re not annoying. How else can you find the problem and spot the solution?

3: Embrace risk and failure -This is a fundamental one that stops a lot of innovation. We learn by failing and I have never met a good entrepreneur that’s not failed a few times before that killer idea takes off.

4: Be a relentless armadillo -If you have a vision that you believe in then don’t stop trying until you achieve it. Along the way you will get hit and knocked down so learn, shrug it off and try again.

5: Network and build your contacts -You will never achieve anything by just being confined to your own business. Get out and meet others in the business world. They are your toolbox and everyone in it a possible collaborator, sound board or customer to get the job done.

6: Passion and enjoyment – Without this you will never succeed. You have to live the idea, want it, taste it and strive to enjoy even the hardest challenge to infect others with the desire you have to see the vision through.

7: Play well with others – You won’t be able to do everything on your own and you will need the support of others to achieve your vision. You should aim to collaborate a win-win for people rather than a compromise.

8: Accept you don’t know what you don’t know – You have to be able to knuckle down and learn things that will put you right out of your comfort zone. Don’t get blindsided by a law or policy that you have no control over.

9: Adaptive and flexible, “Embrace change”- You will have to adapt to changes in the workplace, market or both and that means you may have to set goals on the fly to achieve your original vision. A “No” or “Can’t” never has a full stop after it, only ever a question mark.

10: Respect the bigger vision – This is one of a few fundamental things that separate an entrepreneur from an intrapreneur. This may not be your business and you’re playing in a pre-determined ballpark. Respect that and use your ideas and skills to strengthen your boss’s big vision, not create a new one.

These tentraits are really just the start of what makes a truly innovative intrapreneur, and we all have some of these if we get the opportunity to let them be used.

Remember, there really is no such thing as acrazyidea, in fact, some of the brightest inventions today came from what was at the time, a crazy idea. You just have to back it up. You need to come upwith the research, financial figures and an implementation planthat shows how it could work. All that’s then required is the will to take a risk and the determination to see it through as youhave to think like one to become one. That means you have to take ownership and accountability of what you’re doing and if it’s your idea, then the buck well and truly stops with you.

Chris Perry (Managing Director of Swarm)

These quirky little patterned squares, seemed to be found on everything these days from tubes of toothpaste to the pages of glossy magazines.

On some products these little black and white pieces of modern art seem almost microscopic and yet with the right tools can unveil a powerful marketing secret. With the right app installed on your mobile device you can scan these little patterns known as QR codes and you will then be transported to another destination on the Internet. This destination might be a website but one of the best uses of QR codes is to direct people to a video.

These QR codes act like a portal and transport the viewer to video that can perform a myriad of uses for you the marketeer or business owner. That video can be a promotional, profiling video or it can be a how-to… Or explanation video. Whatever you need to explain, show or described to your customers the simple QR code can transport your potential customers to exactly the destination where you provide that vital information.

And the great news is the technology used to scanning the QR code, a simple app, is absolutely free! You can down load the app from the app store to your smart phone.

We recently made a video for a very interesting farm shop. What’s interesting about this business is they not only provide excellent produce where the Providence can be traced back to local farmers and producers, this farm shop actually produces their own high quality popcorn.

The brief for the video was to create a film showing all aspects of the business. this included the shop, the produce and of course their unique product the popcorn.

The way we made the video was so that the popcorn section could be taken out of the full video and made into a separate stand-alone film, just about popcorn production. The purpose of doing this was so that the QR code could be created, printed onto popcorn grab bags and other point of sale materials. Whenthe QR code is scanned the customer is taken to video showing how the popcorn is made. In this case the client wanted a very short 45 second piece with a little bit of humour built into it, which gave the product, popcorn, a sense of fun and enjoyment.

So it’s worth considering what aspect of your business would you like your customers or should I say soon-to-be customers to be experiencing. Whether it be a unique line, a manufacturing process, or a brief description of the company’s ethos from the business owner. A video can be made and the QR code can be created. This can then be printed on any written remote merchandise or packaging and then no matter where that material ends up once the QR code is scanned the viewer is taken directly to the video where they can see exactly what you want them to see.

So please just take a look around and see how many up examples of QR codes there are on everyday goods. These are links usually to videos where people can experience specifically whatever the business wants them to experience.

For more information about creating your own business video and QR codes for specific businesses, please contact Michael at About My Business Video Company and we’ll see what we can create together.

Michael Brook

michael@ambv.co.uk www.ambv.co.uk

07977 493 774

It may have been registered as a fansite, but Aldi has revealed a zero tolerance approach to trademark infringement in its action against ilovealdi.com. The German supermarket chain used WIPO’s UDRP procedure to successfully shut down the site.

Set up on 1 January 2012, the ilovealdi.com domain name was registered by Chris Huff, an American fan of the German supermarket chain, Aldi. Nonetheless, the company was unhappy with the unauthorised use of its trademark; first contacting Huff to request he cease and desist his use of the site and then, after no response, pursuing the action using the Uniform Dispute Resolution Policy (UDRP) procedure provided by WIPO.

How does the UDRP procedure work? The UDRP procedure seeks to resolve domain name disputes in a quick and cost-effective way. To act under the policy, three key requirements must be met, namely:

• The challenged domain name is identical or confusingly similar to the trademark registration;
• The third party has no legitimate interest in use of the brand; and
• The domain name was registered in bad faith and is being used in bad faith.

If these requirements are met, the infringer will be ordered to transfer the domain name to the brand owner or to remove the domain name from use.

The Aldi action On the first point, WIPO’s Administrative Panel agreed that the domain name was very similar to the Aldi brand. It then examined whether the registrant had a legitimate interest in the use of that brand. Huff argued that he had a legitimate interest, in that he had registered the domain name to share his love of Aldi, without any commercial intentions. However, Aldi was able to show that, since the site was registered more than three years ago, it had not been actively used. As a result, the Panel found there to be no legitimate interest in Huff’s use of the brand.

Finally, the Panel considered whether the domain had been registered and used in bad faith. Bad faith can be shown to exist where a registrant has registered or used a domain name with negative intentions; for example, out of malice or in order to piggyback on the success of a brand. In this case, WIPO found that, while Huff had indicated that he wanted to use the site to express his appreciation for Aldi, he had not done so in practice. Passive or lack of use of the website was enough to satisfy the requirement for bad faith, and Huff was ordered to transfer the ilovealdi.com registration to the supermarket chain.

Implications for your own domain name strategy Aldi may not have been successful in its action had Huff been actively using the site for his originally stated purpose: as a fansite for the German supermarket chain. As the UDRP requirements make clear, the brand owner has limited power to stop use of its trademarks if a registrant can show there is a valid reason for their registration of the domain name (and that it is not being used in bad faith).

For that reason, it is advisable to register domain names to protect against third-party registration of company or core brand names, including popular variations or misspellings. (Find out more about developing a domain name strategy here.)

Of course, it’s impossible to predict and register every possible variation or typographical error; even if you could, the cost would be prohibitively expensive given the number of domain name extensions now on the market. Here, domain name watching tools, such as Novagraaf’s web-monitoring service NovaTrack, can provide a useful service for monitoring and gathering evidence against infringing use of trademark rights. This evidence will support any action taken through WIPO’s UDRP or equivalent procedure.

Interviews will always be a two-way street, at the same time an employer is interviewing a candidate, the candidate is also assessing whether they would like to work for the organisation in the first place. Therefore it’s important to get the balance right between putting interviewees at ease and still finding ways to challenge them.

Employers shouldn’t take an overly soft approach in order to avoid scaring off potential employees. In fact, good interviewers achieve a balance between helping candidates to overcome any nerves, and giving an honest impression of the company, whilst still really digging deep to ensure they hire the best person for the job.

Having supported employers through thousands of interviews, our consultants have seen first-hand that the more candidates sense they are being challenged, and feel they have to work to prove they have the skills for the job, the more they actually want the role!

Here are 5 top tips to hone your interview skills:

1. Don’t hold back

Make sure you respect all the essential niceties, such as a warm welcome and refreshments, and set aside appropriate time so the candidate doesn’t feel rushed. But don’t hold back on really trying to get under the skin of your next prospective employee.

2. Look for ways to dig deeper

The best questions are often the follow up questions to those that you’ve already planned in advance. These take you past the prepared responses and into the finer details of a candidate’s experience. So if something sparks your interest, go ‘off list’ for a while and delve in with some more questions. For example when a candidate nominates an achievement, ask more about the results, what their position and role was, what key challenges they faced and what, if anything, they would differently now. This shouldn’t be seen as interrogation, it’s about creating an engaging, insightful, two-way conversation in which the candidate will really be able to demonstrate a clear response.

3. Look for warning signs

Interviews are intense for everyone, no matter how skilled or experienced the candidate is. But don’t overlook warning signs by putting it down to candidate nerves. There is no excuse for lacklustre research, or for someone failing to remember all parts of their CV. Support the candidate by asking additional questions, which will prompt them and bring them back on track if needed, but don’t ignore your gut instinct if you feel they are floundering due to a lack of preparation.

4. Set challenges

The second interview is when you can really see a different side to a candidate, and it’s the ideal time to set some relevant challenges in advance. Ask them to bring along some examples of their work, to prepare a short presentation on how they would approach the first 3 months in their new role, or give a practical example of a challenge that is facing your business right now and get the candidate to give you a practical step-by-step view on how they would overcome this. And don’t just look at the solutions they suggest, look at the way they prepare and approach these tasks as well.

5. Include additional assessments

Consider additional ways to assess someone’s skills and suitability for the role, such as competency based, or behavioural, interviews and personality profiling. These aren’t additional hoops for a candidate to jump through, they are valuable ways for you to gain all the information you need to be confident in making a decision, and for potential employees to really feel they’ve had the chance to fully prove just why you should employ them.

If you would like some additional support in creating a more challenging interview process, or introducing competency based interviews or personality profiling, then get in touch with our expert team. We’re here to help ensure you find the best possible talent for your business.