Brands don’t stay still…and neither do their trade marks anymore

Brands don’t stay still…and neither do their trade marks anymore

For the first time in UK history, a moving trade mark has been registered after fundamental changes were made to the law earlier this year.

Toshiba is leading the way, according to the UK Intellectual Property Office (IPO), becoming the first organisation to successfully register a distinctive multimedia ‘motion’ mark.

Toshiba’s Origami-based moving trade mark was created by the company to reflect its brand and Japanese heritage.

While it was technically feasible to register a ‘motion’ mark before the changes were enacted to the law in January this year, each submission needed to be carefully graphically, illustrated.

However, the new rules allow for applicants to submit moving images, holograms and sounds as part of their trade mark application via a multimedia file, such as an MP4.

This has simplified the system and made it easier for businesses to protect their iconic branding.

Although Toshiba is the first to have a motion trade mark registered, others are also making use of the new rules, including Google who has successfully been granted a trade mark for a hologram of their famous logo. The only aspect of the new trade mark legislation yet to be tested by a business is the sound-related trade mark.

Reflecting on what the changes mean, Andrew Murch, a trade mark attorney at London law firm iLaw, said: “The 2015 Trade Marks Directive, which came into force this year, has radically changed how companies can protect their branding.

“It has been technically possible to register a moving trade mark for some time, but the new process for applying for a motion, holographic or sound trade mark is now far simpler.

“This means there is a greater range of opportunities to protect a company’s branding, which can only be positive news for many brands.

“The uptake of these new rules may seem slow, but I anticipate that many more companies will follow Toshiba’s example to ensure their intellectual property and branding is secure.”

Andrew added that it would likely only be a matter of time before sound trade marks were registered and can think of several notable examples of well-known sounds, such as the recognisable Windows or Mac start-up sounds, that could benefit from trade mark registration.

“Sound has a powerful link to memory. Its why you may not be able to remember your PIN, but you can always remember an annoying jingle,” said Andrew.

“The emotive power of sound is significant and can be as important to brand recognition as a logo. I suspect, therefore, that trade marks related to sound could take off in future.”

Experienced Trade Mark Attorney joins innovative iLaw

Experienced Trade Mark Attorney joins innovative iLaw

Innovative London law firm, iLaw, has sought to expand its existing intellectual property expertise with the appointment of a dedicated Trade Mark Attorney, Andrew Murch.

To celebrate Andrew’s arrival at the firm, iLaw are offering a free initial consultation with him and the intellectual property team, which can be arranged by calling 0203 962 2230.

Andrew joins the firm having held several senior positions at other law firms across London and the South East, where he has assisted with a wide range of national and international trade mark registrations, clearances and protection.

Well known within the profession, Andrew has worked on several high-profile cases and successfully argued the widely reported High Court decision in the case of Etat Francais representee par la Ministere de L’Agriculture de la Foret v Bernard Matthews Plc.

He is the latest in a number of recent appointments by the firm as it seeks to broaden its expertise to assist its clients in the fields of technology, media, telecoms and the various other innovative industries with which the firm works.

iLaw already has a considerable background in intellectual property but felt the addition of Andrew to its team would further strengthen its standing in the City.

Speaking about his appointment, Andrew said: “iLaw has carved out a reputation as an excellent intellectual property practice and has worked on several high-profile cases relating to trade marks and their protection, as well as other areas such as copyright.

“I am delighted to be joining this firm with its forward-thinking approach to the provision of legal services and I hope my expertise and advice will prove useful to the growing number of clients that it serves.”

As well as providing advice to clients, Andrew has previously lent his expertise to publications and even spent time on Kent Business Radio providing advice to listeners on their intellectual property issues. Andrew is also a part-qualified UK Patent Attorney.

Mark Culbert, a Managing Director at iLaw, added: “We are very excited to be welcoming Andrew to our practice. He has considerable experience across a variety of areas relating to intellectual property and I am certain he will be a real asset to our strong team of legal professionals.”

 

iLaw shares employment advice as temperatures soar

iLaw shares employment advice as temperatures soar

With temperatures set to reach the mid-30s this week, employers need to think about the safety and comfort of staff.

Julian Cox, Head of Employment at iLaw, said: “The coming week looks like it’s going to be one of the hottest weeks on record, with temperatures in parts of the UK set to soar to 37 degrees.

“Although there are very specific rules about minimum temperatures, the UK does not have any guidance on what is the maximum temperature at which employees are expected to work.

“Unions, such as the TUC, have tried to encourage upper limits as well for indoor work environments but so far to no avail and this may not be practical for some types of work, where higher temperatures are required for the manufacturing process.

“Getting hot in a stuffy office or while working out on a construction site or while driving can cause drowsiness, loss of concentration and in the most severe cases heat stroke, which can lead to higher instances of absenteeism and accidents.

“Employers, although not bound by law to do so, should consider what steps they can take to ensure staff remain safe and healthy during this heatwave.”

Julian added that the iLaw team, which are based in London, have already relaxed their dress code so that it is appropriate for the hot weather and is encouraging other employers to follow suit.

iLaw’s top five tips for employers:

  • Be flexible – Employers should consider offering more flexible working patterns where practical, including offering the option to work from home, where staff may feel more comfortable.
  • Relax dress codes – As the mercury rises employers should, where appropriate, encourage staff to wear more loose-fitting clothing. This doesn’t mean flip flops and shorts but could mean removing the need to wear a tie and jacket and allowing for cooler cotton clothing.
  • Monitor staff health – Employers should take extra care to make sure staff members are hydrated and are not getting too hot. This can be as simple as just spending more time talking with staff and making sure they are OK. Remember, employers must provide staff with suitable drinking water in the workplace.
  • Provide fans or air conditioning – Although this may prove costly, it could drastically improve the performance of employees and make them feel ‘cared for’ which can be important in retaining talent.
  • Think outside the box – Depending on the size of the businesses think about what additional steps you can take to be a stand out employer. Maybe get someone to do an ice cream run or learn from other hot nations and offer a longer break during the hottest hours of the day.

 

Supreme Court offers clarity on restrictive covenants, says iLaw

Supreme Court offers clarity on restrictive covenants, says iLaw

In the case of Tillman v Egon Zehnder Ltd, the Supreme Court has dismissed an earlier decision of the Court of Appeal that a restrictive covenant was too wide to be enforceable.

In this case, a senior member of staff at Egon Zehnder Ltd, a management consultancy and executive recruitment agency was prevented from seeking new employment with a competing US firm in New York due to a restrictive covenant that contained a six-month non-compete clause.

Within this clause was a line that stated that she must not “directly or indirectly engage or be concerned or interested in any business carried on in competition with any of the businesses of the Company or any Group Company which were carried on at the Termination Date or during such period.”

Much of the focus in the case was on whether the phrase ‘concerned or interested in’, included or relied upon her being a shareholder.

The Appellant, Tillman, claimed that although she had no shareholding, she wanted to rely upon this restriction rendering the covenant as a whole, unreasonably wide, which meaning it was unenforceable and that she could take up employment with the competitor overturning an injunction put in place by her employer – even though the period

The Court of Appeal allowed the appeal against the grant of the injunction, but the Supreme Court has since overturned the appeal and agreed with the original clause, stating that the “removal of the prohibition against her being ‘interested’ would not generate any major change in the overall effect of the restraints” as laid out in the covenant.

Julian Cox, Head of Employment at innovative London law firm, iLaw, said: “Employers and HR professionals across the UK will have been waiting with bated breath for the outcome of this case, as it could have fundamentally affected the majority of employment contracts and restrictive covenants that are currently in place.

“It may have looked like the outcome of the case would hang on the use of a simple phrase – concerned or interested in – in regards to shareholding in another company, but it would seem that the Supreme Court, while agreeing with their unreasonableness, does not feel that they significantly change the clause enough to merit the injunction being removed.”

Julian said that the decision would provide some clarity to those concerned about existing employment contracts and should help with the drafting of future employment contracts when onboarding new members of staff.

“There were certainly fears that this appeal could lead to a need to review all existing employment contracts, if the judge had found that the phrase somehow invalidated the restraint on working for a competitor, but now we are likely to just see a change in practice when creating new employment contracts to avoid any language that a court may decide is unreasonable.”

iLaw shortlisted for prestigious SME National Business Award

iLaw shortlisted for prestigious SME National Business Award

Innovative London law firm, iLaw, has been shortlisted in the ‘Business of the Year less than 50 Employees’ category at the prestigious SME National Business Awards 2019.

The sought-after awards recognise the achievements and contributions of the UK’s SMEs across all sectors.

iLaw is one of just a handful of firms from across the UK to have been shortlisted in the ‘Business of the Year less than 50 Employees’ category.

iLaw works with a wide range of innovative businesses providing advice on corporate and commercial matters, such as contracts and transactions, employment matters, intellectual property issues and litigation, as well as working in more niche areas such as film and media law and cryptocurrency and blockchain law.

The rigorous judging process has already seen iLaw make a detailed written submission to the judges, setting out its achievements over the last 12 months as the firm aims to become the leading boutique practice for the IT, telecoms, media and technology sectors in the UK.

Mark Culbert, Managing Director at iLaw, said: “This is wonderful recognition for our whole team as we seek to grow the practice in order to provide our market-leading services to an increasing number of businesses, including many household names.”

iLaw is no stranger to awards success, having last year been named as a finalist in the Boutique Law firm of the Year at the British Legal Awards.