Patently Obvious Precautions 

As part of its preparations, a franchise business should tie down intellectual property such as patents and trade names and make sure any required registrations or licences are in place. Shane Smyth, managing partner of FR Kelly & Co recommends that before the adoption of any trade mark, the business carries out full trade mark searches in its target markets.

"Without a full search, it is not possible to identify potential problems in either registration or worse still, use. Full searches do - at a minimum - involve searching the trade mark registers in the target country as well as other registers that may apply. For example, there is a Community Trade Mark or CTM register where it is possible to have a single registration covering all EU countries." It is important to engage the services of a professional in carrying out a search, he continues, because the protection granted Patently Obvious Precautions by an earlier trade mark registration extends not just to identical but also ‘confusingly similar' trade marks.

"Consequently, it is not enough to simply search identical trade marks and regard must also be had to the range of products and/or services covered by an existing trade mark," said Smyth. "Often, even identical trade marks can co-exist, held by different owners if the activities are sufficiently different to remove any potential for confusion." As to how the status of a trade mark is determined, he admits that there are whole legal text books written on the issue of whether or not two trade marks are confusingly similar. "It is certainly not an exact science. Regard is made to a large number of factors including visual, phonetic and conceptual similarities as well as the reputation (if any) enjoyed by the existing trade mark and range of products/services."

Disputes can be settled by negotiation, mediation or litigation before the courts. The penalties for infringing a trade mark registration are: ● Injunction to cease use ● Damages ● Account of profits ● Recovery of legal costs. There are various systems for registration. Nationally, registration can be made before the local patents office in a particular country. A Community Trade Mark is a single registration embracing all EU countries, while the international registration process is operated by the World Intellectual Property Organisation, based in Geneva. This is a single registration, which can designate a county that is a member of the international convention.

All EU countries are members as well as the US and Australia and a large number of countries. However, it does not include most South American and African countries as well as Canada.

First published in Franchise Options Magazine© to order back issues please call 01 6611660