Protect your brand and your trade mark

Brand owners have new ways to fight counterfeiting and trade mark misuse thanks to changes in the law, according to legal experts Miller Hendry.

A new EU Directive focused on harmonising the law across member states offers brand owners new ways to battle both counterfeiting and the misuse of trade marks within company names. It also introduces new procedures for registration, renewal and restoration.

Some of the key changes include extended rights for owners acting against producers of counterfeit products, and easier rules for those with lapsed trade markets to renew.

Alan Matthew, commercial and intellectual property law expert with Tayside legal firm Miller Hendry, said:

"The amendments to UK law are mainly straightforward and many people will have come across them as they have already been implemented into EU Trade Mark Law. The one that may cause some controversy is the change to the own name defence as this is not being applied retrospectively, so we will have situations where long-standing companies continue to use a name that would fail under the new infringement provisions. We will have to see how the courts tackle this."

The changes come at the same time as a "David and Goliath" legal case which serves as a warning for all brand owners, says Miller Hendry.

In a branding challenge which toppled fast food giant McDonald's, a small Irish fast food company managed to block the burger chain from trademarking the terms Big Mac and Mc throughout Europe.

The European Union Intellectual Property Office ruled that McDonald's had not been able to prove genuine use of the name Big Mac as either a burger or restaurant name, and that the trademark they registered back in 1996 should be cancelled. 

The judgement opens the door to expansion for Galway-based Supermac as it will be able to register its brand as a trademark in the UK and Europe.  McDonald's had used the brand name's similarity to Big Mac as a reason to block previous expansion outside Ireland, even though the Supermac company name had been based on the founder's nickname when the food chain was established in 1978.

Alan Matthew said: "This was a real David and Goliath case and demonstrates how important it is to protect your brand whatever your company size.  It is also a good example of why you need to look ahead and anticipate where your company may go in future.  If Supermac had registered their trade mark in other jurisdictions when they started out, they would have been in a stronger position when McDonald's came along."

For further advice on this or any other legal issues, visit www.millerhendry.co.uk