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"Logos and No Gos ought to be mandatory reference material for all managers of branded products and services. It is a concise, easy read, jammed with crucial information on how to survive and thrive in the I.P. Jungle. It shows how to add brand value and how to guard that value with your life. When Kangol moved out of manufacturing and distribution into brand licensing it took us a while to realise that brand value lies as much in the quality and protection of the I.P. portfolio as it does in the image and trading performance. With Logos and No Gos on your desk there can be no excuse for…mehr
"Logos and No Gos ought to be mandatory reference material for all managers of branded products and services. It is a concise, easy read, jammed with crucial information on how to survive and thrive in the I.P. Jungle. It shows how to add brand value and how to guard that value with your life. When Kangol moved out of manufacturing and distribution into brand licensing it took us a while to realise that brand value lies as much in the quality and protection of the I.P. portfolio as it does in the image and trading performance. With Logos and No Gos on your desk there can be no excuse for sloppy I.P. management." --David M. Heys, C.E.O., Kangol Holdings Ltd "Geoff Steward is a highly experienced practitioner in the field of Intellectual Property and Trade Marks in particular. Logos and No Gos embodies his wide experience and is a very readable guide to what is otherwise a tortuous and, often, near impenetrable legal mine-field for the unwary brand owner and brand developer. Anyone thinking of launching any form of new business or product should read Geoff's book from cover to cover. Thus forewarned they should be able to avoid the worst pitfalls and, more importantly, be in a position to develop a valuable business asset." --Mark Platts-Mills QC, Barrister practicing in trade marks at 8 New Square, Lincoln's Inn Intellectual property is one of the most valuable assets of all brand owners, and separates them from their competition in local, national and global markets. Damage to brands can have a deadly impact on a company's bottom line. Despite this, few brand owners really understand how to identify, get maximum value from and properly protect their IP rights. Covering all aspects of rights protection in business--including copyright, designs trade marks, database right and domain names--Logos and No Gos is your complete guide for negotiating the minefield of IP in business. With the help of expert Geoff Steward, you will learn how to design and implement a strategy to fully protect your brand rights--and avoid inadvertently infringing those of others. Logos and No Gos is a plain English guide to identifying and managing the IP in brands. It's all you need to understand and make the most of: * Trade marks * Copyright * Database rights * Designs * Domain names * Employment contracts * Contractors * Licensing * Assignments * Franchising
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Autorenporträt
GEOFF STEWARD qualified as a solicitor at Macfarlanes in 1995. In 2002 he became a partner in the Litigation Department and now heads the firm's contentious intellectual property practice. He regularly advises on trade mark, copyright, database right, designs (registered and unregistered),passing off and domain name disputes involving clients in the television, sports, newspaper, retail and food and drink industries. Geoff acted on the widely reported Davidoff parallel importing case which was referred to the European Court of Justice and has particular expertise in grey market goods.
He also advises on sales promotion and advertising/copy clearance issues as well as brand strategy generally and managing trade mark portfolios. Geoff is a member of The Intellectual Property Lawyers Organisation (TIPLO), an associate member of the Institute of Trade Mark Agents (ITMA)and sits on the Editorial Board of Trademark World.
Macfarlanes is widely recognised as one of a handful of high quality independent law firms in the UK. With some 270 lawyers, the firm provides a comprehensive service in its chosen areas of expertise, handling work of a quality and scale that places it among the leading law firms in the City of London. The lawyers from each of its four departments ¿ Corporate, Private Client, Litigation and Dispute Resolution, and Real Estate ¿ are consistently ranked among the leaders in their field. Macfarlanes has a particularly strong reputation in advising on intellectual property, advertising, direct marketing, sales promotion and PR issues ¿ acting for a large number of major brand owning clients.
Inhaltsangabe
Preface xv About the author xvii 1 Creating and Identifying Your IP 1 Trade marks 2 What can you register as a trade mark? 2 What can't you register as a trade mark? 4 Always conduct pre-emptive searches 6 Unregistered trade marks 9 Use of the ® and TM symbols 10 Copyright 12 What is copyright all about? 12 What attracts copyright protection? 13 What does not attract copyright protection? 14 Protecting your ideas 15 Make sure that you own the copyright 15 Period of copyright protection 18 Moral rights 19 Database right 20 What is database right? 20 What protection does database right give you? 21 In what respect do you need to bother with database right for the purposes of your brand strategy? 22 Designs 23 UK registered designs 24 UK unregistered designs 27 European Community designs (registered and unregistered) 28 Overlap between trade marks and designs 31 Benefi ts of registering device marks/logos as designs 32 2 Registering Your IP 35 Trade marks 36 The Nice classification system 36 UK registrations 37 Community registrations 44 International registrations 49 The standard Nice classification of goods and services for trade mark registrations (from January 2007) 52 Copyright 71 No UK registration system 71 The international protection available for copyright works 71 Use the (c) symbol 73 Designs 74 UK registration procedure 74 Community registration procedure 77 3 Housekeeping Your Trade Mark Portfolio 81 Housekeeping tips for preserving and protecting your trade mark portfolio 82 Register your trade marks in the name of the same proprietor 82 Be consistent when using your trade marks 83 Do not allow your trade marks to become generic 86 Conduct regular trade mark audits 87 Certificates 89 Keep accurate and accessible records 89 Renewal dates 91 4 IP and Your Employees 93 IP and employees 94 What to include in your employment contracts and why 94 Confidentiality clauses 95 Moral rights and waiver 96 Commissioned works/Contractors 97 Communicating to all employees the importance of IP 98 Chain of command 99 5 Exploitation of Your IP 101 Exploitation of your IP 102 What is the difference between a licence and an assignment? 102 Exclusive/Non-exclusive 104 Registration implications 105 Registrations by rogue licensees 106 Standard protective licensing provisions 107 Franchising 110 Mortgaging/Selling off unused IP 111 6 Policing Your IP 113 Policing your IP 114 Why is it important to monitor your IP for potential third party infringements? 114 How can you find out if somebody is infringing your intellectual property rights? 114 Which governmental or public agencies can help you? 115 How can private service providers help you monitor your intellectual property for infringements? 119 7 How Are Your IP Rights Infringed? 127 Registered trade marks 128 Advantages of registering 128 Acts of civil infringement 128 Criminal trade mark offences 131 The grey market goods problem 132 Copyright 136 Acts of civil infringement 136 Defences to civil copyright infringement 139 Criminal copyright offences 140 Designs 142 UK registered designs 142 UK unregistered designs 144 Compulsory licensing of your unregistered design 147 Community designs (registered and unregistered) 147 Criminal offences 148 8 Enforcing Your IP and The Remedies Available To You 149 How to react to an infringement of your rights 150 Do you have a clear reporting procedure and chain of command? 150 The need for speed 151 The importance of a confusion log 151 Cease and desist letters 153 A word of warning about making unjustified threats 154 Website infringements and service providers 155 What next? 157 Remedies 161 Injunctions 162 Delivery up, recall, seizure and destruction 169 Damages/Account of profits 171 Disclosure of the identity and whereabouts of other wrongdoers and information on infringing products 174 Publication of judicial decisions 175 9 How To Avoid Infringing Other People's IP 177 How to avoid infringing other people's IP 178 10 Registering and Protecting Your Domain Names 183 Domain names 184 What is a domain name? 184 What is the value of a domain name? 184 Registering a domain name? 184 Problems with the registration system 185 Disputes 187 Trade mark infringement/passing off 188 Alternative dispute resolution 189 11 The Take-Home Message 195 The dos and don'ts of brand strategy 196 Trade mark registrations 196 Trade mark portfolios 198 Trade mark infringements 202 Design registrations 205 Copyright 207 Database right 210 Domain names 211 Index 213
Preface xv About the author xvii 1 Creating and Identifying Your IP 1 Trade marks 2 What can you register as a trade mark? 2 What can't you register as a trade mark? 4 Always conduct pre-emptive searches 6 Unregistered trade marks 9 Use of the ® and TM symbols 10 Copyright 12 What is copyright all about? 12 What attracts copyright protection? 13 What does not attract copyright protection? 14 Protecting your ideas 15 Make sure that you own the copyright 15 Period of copyright protection 18 Moral rights 19 Database right 20 What is database right? 20 What protection does database right give you? 21 In what respect do you need to bother with database right for the purposes of your brand strategy? 22 Designs 23 UK registered designs 24 UK unregistered designs 27 European Community designs (registered and unregistered) 28 Overlap between trade marks and designs 31 Benefi ts of registering device marks/logos as designs 32 2 Registering Your IP 35 Trade marks 36 The Nice classification system 36 UK registrations 37 Community registrations 44 International registrations 49 The standard Nice classification of goods and services for trade mark registrations (from January 2007) 52 Copyright 71 No UK registration system 71 The international protection available for copyright works 71 Use the (c) symbol 73 Designs 74 UK registration procedure 74 Community registration procedure 77 3 Housekeeping Your Trade Mark Portfolio 81 Housekeeping tips for preserving and protecting your trade mark portfolio 82 Register your trade marks in the name of the same proprietor 82 Be consistent when using your trade marks 83 Do not allow your trade marks to become generic 86 Conduct regular trade mark audits 87 Certificates 89 Keep accurate and accessible records 89 Renewal dates 91 4 IP and Your Employees 93 IP and employees 94 What to include in your employment contracts and why 94 Confidentiality clauses 95 Moral rights and waiver 96 Commissioned works/Contractors 97 Communicating to all employees the importance of IP 98 Chain of command 99 5 Exploitation of Your IP 101 Exploitation of your IP 102 What is the difference between a licence and an assignment? 102 Exclusive/Non-exclusive 104 Registration implications 105 Registrations by rogue licensees 106 Standard protective licensing provisions 107 Franchising 110 Mortgaging/Selling off unused IP 111 6 Policing Your IP 113 Policing your IP 114 Why is it important to monitor your IP for potential third party infringements? 114 How can you find out if somebody is infringing your intellectual property rights? 114 Which governmental or public agencies can help you? 115 How can private service providers help you monitor your intellectual property for infringements? 119 7 How Are Your IP Rights Infringed? 127 Registered trade marks 128 Advantages of registering 128 Acts of civil infringement 128 Criminal trade mark offences 131 The grey market goods problem 132 Copyright 136 Acts of civil infringement 136 Defences to civil copyright infringement 139 Criminal copyright offences 140 Designs 142 UK registered designs 142 UK unregistered designs 144 Compulsory licensing of your unregistered design 147 Community designs (registered and unregistered) 147 Criminal offences 148 8 Enforcing Your IP and The Remedies Available To You 149 How to react to an infringement of your rights 150 Do you have a clear reporting procedure and chain of command? 150 The need for speed 151 The importance of a confusion log 151 Cease and desist letters 153 A word of warning about making unjustified threats 154 Website infringements and service providers 155 What next? 157 Remedies 161 Injunctions 162 Delivery up, recall, seizure and destruction 169 Damages/Account of profits 171 Disclosure of the identity and whereabouts of other wrongdoers and information on infringing products 174 Publication of judicial decisions 175 9 How To Avoid Infringing Other People's IP 177 How to avoid infringing other people's IP 178 10 Registering and Protecting Your Domain Names 183 Domain names 184 What is a domain name? 184 What is the value of a domain name? 184 Registering a domain name? 184 Problems with the registration system 185 Disputes 187 Trade mark infringement/passing off 188 Alternative dispute resolution 189 11 The Take-Home Message 195 The dos and don'ts of brand strategy 196 Trade mark registrations 196 Trade mark portfolios 198 Trade mark infringements 202 Design registrations 205 Copyright 207 Database right 210 Domain names 211 Index 213
Rezensionen
"The book provides a good overview for non-specialists of the practical issues involved in creating and maintaining a brand." (Practical Law For Companies Magazine, March 2007)
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