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Should registered trade mark applications for product names be made before the product is launched?

29 March 2010

This is a question we are often asked by our automotive and retail clients. BMW has recently made registered trade mark applications for a number of new, unlaunched product names.

The new applications include I1; I2; I3; I4; I5; I6; I7; I8; I9; E1; E2; E3; E4; E5; E6; E7; E8; E9; M50D; URBANIC; GRAN COUPE; COMPACTIVE; and COMPACTIVE TOURER.

Traditionally, retail product names have not necessarily met the criteria to be registrable. The basic function of a trade mark is to differentiate the goods and services of one business, from the goods and services of another business. Essentially, they say to a consumer “whenever you see this mark, you know these goods come from X”.

Product lines are often seen as too transient to warrant protection. More often than not, especially in the retail sector, a product’s life span may be less than the length of time it takes to achieve registration. A UK national registration often takes around 6 -12 months, and international registrations, such as the Community Trade Mark, can take twice as long.

However, for the automotive industry, products can often have a long lifespan, so in this sector, product name trade mark registrations seem to make sense and have the required ability to differentiate the origin of the goods.

Clients may be opposed to registering their marks because of the public nature of the application process.  The trade mark register of most countries are free to view online and is normally in English.  Using the BMW example, its German national applications were made on 18 March 2010.  The registers take a few days to update, so within a week or so of the register showing the application, Autocar - a leading UK automotive magazine - ran a story on the new BMW product names.

This often leaves brand owners in a dilemma. Their legal advisors will suggest that an application is made at the earliest opportunity. For brands like BMW, with a prescribed branding convention, it doesn't want to risk another party getting in first.

By making these applications, BMW has opted to tell the world that it is planning to launch an M50D, which Autocar speculates will be a tri-turbo diesel. However, in light of the benefit of the protection offered by a registered trade mark, and the length of time registration can take to occur, a cost-benefit analysis should take place.

We advocate In-house Lawyers and external counsel working as closely as possible with the teams involved in R&D and new product branding, to assess whether registration should be pursued and, if so, ensure that all IP registrations take place at the earliest opportunity. This includes patent protection for inventions, and registered design protection for designs.

We try to be involved with our clients’ new products from the R&D stage, advising on the registrability of the brand, invention, and/or design, the licensing and exploitation of the product, as well as the enforcement of the product’s IP protection, should others attempt to copy it.

Following BMW’s lead, there may well be a wave of manufactures making applications for new product names where the product name is capable of distinguishing the origin of the goods and its lifespan is long enough.

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Emile Saadi

Solicitor
T: 03700 86 8494
I: +44 (0)1908 48 8494
E: emile.saadi@shoosmiths.co.uk