Often, as mere technologists, we practice our arts as learnt; that is, we make our choices from within the constraints of our profession ]]> We want to make a difference, provide the insight, offer the wisdom … but alas, when in a particular context, such as home or work, we often behave in a predetermined way.

Often, as mere technologists, we practice our arts as learnt; that is, we make our choices from within the constraints of our profession and training. Occasionally, some of us have the insight to challenge:  our inner inventor emerges to look at what the technologist is bounded by and, with insight, we change the rules to try to deliver better, faster, cheaper or just different outcomes … or at least hope to.

Behaviourally, it is important that we don’t challenge every predetermined task, but concentrate on delivering within the boundaries of what is known, within our understanding of the law and adhering to the mores of society.  However, sometimes there are conflicts that arise within these worlds, which may compel us to consider what we should be doing as technologists should be done differently.  The strengths of being a technologist sometimes must be balanced in the context of where it may also be counter-productive.

As technologists, we tend to:

(a)    constrain ourselves to self perceived boundaries (not my job, do it my way …);

(b)   view required disciplines as draining resources (lawyers, patent attorneys … let me do my job and don’t involve me with all those other considerations); and

(c)    lack reflection in our own creative endeavour due to the business of the delivery schedule.

Let’s look at this more closely.

1.   Technologists put up their own walls

One notion is that we as technologists:

(a)    lack critical thinking. This was raised yesterday in the talk “Preventing Torture“^[1] by Glenn Carle[2] (ex CIA) and Prof Danielle Celermajer[3] (Human Rights academic). This lack of critical thinking is proposed as one reason why nations that have historically outlawed atrocities such as torture, although have recently engaged in torture.

(b)   stick to “rules” and unconditionally trust the executive power. When rules are made without critical review, then there is no debate, even when executive power is hijacked by a powerful minority.  This was Glenn Carle’s experience in the CIA after 9/11, when the checks and balances put into place by the separation of powers were removed by the executive to legitimise torture.[4]

Whatever the view of why it occurs, it does potentially give rise to the rule of law being hijacked without critical debate.

What has IP got to do with it?

2.    Technologists can suffer blindness

In a forum on software patents[5] run by IP Australia this week, a polarisation of views was displayed. Some members of the patent profession complained that the open source community did not understand patents; therefore, they should not have an opinion on whether software patents are allowable. In contrast, some open source coders see the patent profession as destroying their livelihood.

These polarised views are solely the views of technologists with imposed boundaries – albeit at opposed ends of the spectrum. As inventors, however, we should also have the skills and training to enquire as to the impact for the public good. The imposed boundaries might guide us to act in a certain way, but we should have the curiosity and skills to ask:

(a)    are these boundaries real;

(b)   are they right; and

(c)    are they necessary?

For example, the law deems what patents are allowable. Therefore, patent attorneys are trained to assist in protecting software as inventions – such patents must be acceptable because they are allowable under the law.

The limits of the laws dictate what is acceptable for patent protection…or not. As pure technologists, patent attorneys do not necessarily critically evaluate the boundaries of the law – we accept the boundaries as being appropriately positioned. Naturally, this ostracises many technologists in other disciplines. This does not help the profession appreciate alternative views or an alternative way forward – this is a patent technologist view of the world without critical thinking as to why.

There should be a clearer way forward in the Patents Act to diminish such a polarisation of views. Our recent amendments to the Patent Act 1990 did not address the issues raised that patentable subject matter lacks clarity^[6] under s 18 of the Act. Consequently, patentable subject matter falls within the vagaries of “manner of manufacture” within the meaning of Statute of Monopolies[7] as drafted in 1624, which is interpreted conservatively and so excludes much inventive endeavour.

Expand patentable subject matter

Expanding patent subject matter could help change individual responsibility from a narrow technologist’s view to the more expansive inventor’s view to aid inventive pursuit.  That is, by:

(a)    giving ownership of inventive endeavour by including more subject matter as patentable. This effectively is stating that inventions make a difference and by including more disciplines then inventors are contributing to society; and

(b)   removing the boundaries of technologist’s view of “not my job” to a inventor’s vision of “it is my job” as to where we are going, could help limit the hijacking of legal protections that have recently being alleged.

If the law is too restrictive, do the practitioners of the sciences redefine themselves from inventors to technologists and waive their responsibilities? The context of our role within the law as framed does dictate our actions and therefore the extent of our responsibility.

We must balance the role of:

(a)    technologists to deliver skill within boundaries; and

(b)   inventors to visualise where we are going and adjust where necessary.

The law is a human construct which at times can be overly confining and needs to be opened by debate, so as not to be hijacked by other motives.

Photo & blog by Dr Michael Bates, Principal, 1P
© 1Place Patent Attorneys + Solicitors

Australia has an unusual position on the copyright / design overlap when ]]> Any creative endeavour potentially involves multiple areas of intellectual property (IP).  Virtually all creative works in the fashion world are equal at the outset, in that they automatically enjoy copyright protection as an artistic work (typically in the form of drawings or sketches).

Australia has an unusual position on the copyright / design overlap when a two dimensional design is embodied in a three dimensional work. 

The rationale is simple in theory.  Copyright protects an artistic work.  If the creative work heads down the industrial path copyright protection may be lost and the product must be registered as a design in order to enjoy IP protection.

However, there are mental gymnastics for designers who are producing creative works on a day-to-day basis. 

In the absence of a registered design, a commercially produced dress may have no copyright and no design protection.  However, the print fabric comprising the dress may enjoy substantial rights through no formal steps for protection at all.

A printed image may enjoy copyright protection as an artistic work.  However, an embroidered version of the same image may have no protection if it is not protected as a registered design.

There are also anomalies as to the duration of protection.  In broad terms, 10 years – design registration vs the author’s entire life + 70 years for copyright.  Ironically, unlike other forms of IP, with copyright, the author need not take formal steps such as registration in order to obtain copyright protection.

The following snapshot may help wrap your head round the complex design / copyright overlap.

Sketches: Designer makes sketches of a garment.  Copyright subsists in the sketches as an artistic work. Copyright protection is automatic upon creation of the drawings – as long as they are original (i.e. not copies of someone else’s work). Unlike other forms of intellectual property, there is no need to seek registration in order to obtain copyright protection.

Pattern/Sample garment: There may also be separate copyright in a pattern for the garment and/or in a sample garment. If the pattern / sample garment are not created by the designer, copyright may reside in a third party.

Commercial production:  Once a commercial quantity of the garment (as a rule of thumb: 50) is produced, copyright protection in the sketches is lost and cannot be enforced anywhere in the world.

Registered design: Designer may still have IP protection if she or he has filed an application for a registered design. This protects the visual features of pattern, ornamentation, shape and configuration of a garment (or a part of the garment). Remember that the opportunity to apply for a registered design may be lost if the application is lodged before showing or selling the garment.

Textile / fabric designs: As long as a fabric design is purely a representation of 2-dimensional features of pattern or ornamentation applied to its surface (as distinct from woven into or otherwise embodied by the fabric) copyright will subsist in the fabric – even after commercial production.  A designer (and his or her heirs) will enjoy copyright protection (and all its wonderful licensing opportunities) until 70 years after death.

Given that protection can be unwittingly lost and given that protection can be enhanced through other IP regimes, the key in all of this is for designer to turn their mind to the issues at the earliest opportunity. If the design and commercial plans warrant it, consider taking steps to preserve IP.

Post and graphic – © 1Place Patent Attorneys + Solicitors

Lance Scott, Trademark Attorney + IP Lawyer

In fact you might.

We introduce the notary public (also called notary or public notary).

They are the oldest continuing branch of the legal profession and the office dates back to Ancient Rome.

The main functions of a notary are to:

Of course, there is no single personality type. But it occurs to us that ]]> On being brave, the drive to succeed and pursue a dream

People often express an interest in understanding more about the people who invent things and why are they driven to put an invention on the market, to commercialise an idea.

Of course, there is no single personality type. But it occurs to us that the greatest pleasure we derive from our work is meeting and working with inventors who have invented from the heart, who have given their all to pursue a personal passion. This can be an invention needed in day to day work, for daily life, or a niggling hobby that won’t go away – niggling enough to give up a day job and leap in with both feet (head, heart, soul…and any family members caught up in the maelstrom).

We know the ride can be bumpy and we have a fair idea, given our line of work, about the steps and decisions involved. Nonetheless, we continue to be fascinated about what drives people to make this courageous, risk-infused move…to commit their time, energy and resources in chase of a dream.

We also have enormous respect for these people. Time and time again, we see that it is passion that makes the difference. This is because it is only people with passion who:

• are brave enough to embark on the journey;
• persist through the good times and the bad;
• are committed to do the hard work – over and over again, and then some more; and
• have the drive to take a risk and be a game-changer (whether it’s to change a personal “game” [read: life] or as part of a bigger game).

When people ring the office with a great idea “I don’t have any money….but it’s going to make millions, so will you do the work for free”, it often signals a warning bell. Not because it might not truly be a great idea, but because our experience has shown that it’s not just the strength of the idea but the strength of the commitment that makes the difference. The people who are willing to put their own skin in the game are the ones with the real potential to succeed. It’s not necessarily the more “worthy”, “weighty” or serious ideas that make it commercially. It’s how much drive the people behind the idea have to make it work. This should come as no surprise: it’s also what underlies business success.

Take Cathy Dodds, half of the dynamic duo behind STICKY WICKY. We were tickled when Cathy exclaimed that she hadn’t realised that living the dream would mean not having time to get out of her pyjamas while she packed and sent products out of her home, in time for last Christmas. In thinking about this post, we asked if we could interview her about the STICKY WICKY story and she very generously gave up a morning to meet for coffee.

Cathy’s husband, Peter, had a passion for a backyard version of a bat and ball game (STICKY WICKY games). It was a passion re-visited many times. The death of a relative put life into perspective: Peter was to give up his day job and the family would get behind him to follow his dream. Their first decision was to invest savings in the new venture by securing intellectual property protection. A symbolic emptying of the shed to remove the tools of Peter’s former trade signalled a farewell to the past – and commitment to their new venture.

Then it was on to manufacturing and spreading the word. Cathy’s drive and skills (she had a background in advertising) made the perfect pairing for Peter’s passion – a passion equally shared and supported by their whole family. We watched with excitement as new developments took place: a great website, terrific PR (involving the whole family), a deal with a large retailer for a STICKY WICKY cricket game. However, running and building a business means the commitment and investment never stops. Plans for expansion have led the dynamic duo to consider selling their home to plough further funds into their investment. Crazy? We don’t think so. Brave, yes, but also a testament to their commitment and passion. This is one inventive duo (backed by a great family) earmarked to succeed.

Post and graphic by Josephine Inge, Principal, 1Place
© 1Place Patent Attorneys + Solicitors

We recognise that we need to become a smarter nation and early nurturing helps young minds grow.  Schools provide positive interventions aligned with a child’s growth, resulting in paced and accountable learning.

Can a nation use ]]> Expand your mind (& lose weight) – this is the mantra that affects us individually and as a nation.

We recognise that we need to become a smarter nation and early nurturing helps young minds grow.  Schools provide positive interventions aligned with a child’s growth, resulting in paced and accountable learning.

Can a nation use similar interventions to help individuals become productive at the adult stage of life? Inventors commonly confront the issue of passion, drive, fear, loss … the next step is often a blind step. Therefore, can we help with the question of making the “right” move?

We know that:

1. entrepreneurs are often a subgroup of inventors that form start-ups to exploit their inventions;
2. a small number of entrepreneurial firms are disproportionately responsible for innovative output for a nation;
3. venture-backed firms have a research and development spend of 3% with an 8% return in innovative output into the nation’s economy.

Should an early intervention be to help inventors become entrepreneurial by helping them launch a start-up?  A recent study of entrepreneurs, who have formed start-ups, revealed that start-ups use patents more than previously reported due to patents being:

1. obtained from founders prior to the company founding date;
2. acquired by the company; and
3. filed by the company itself.

Possibly then an even earlier intervention should be to help inventors protect their inventions by filing patents first, followed by forming a start-up?

For non-venture backed companies only 4 out of every 10 companies held patents; however, when venture capital was involved approximately 9 out every 10 companies held patents.  This did not appear to change with the age of the company (over the eight years measured).

The average start-up firm holds just under nineteen patents; however, these averages are very different for venture backed companies compared to non-venture backed companies:

1. venture-backed firms have a much higher incidence of holding patents;
2. firms that seek venture-capital have patents prior to obtaining funding; and
3. venture backed firms are more active in patent licensing.

Patents provide a positive signal to venture capital firms, particularly when venture capital is scarce.  This signal:

1. indicates that the start-up has something worthy of investment when viewed by venture capital firms;
2. puts competitors on notice to take care not to “copy” innovations; and
3. suggests that the start-up has invested in developing a valuable product and a planned approach to meet future needs.

For patent-holding firms, for every ten employees there are seven patents filed on average, and two patents are acquired from sources other than its founders . This is independent to the technology of the firm. Further, patents were found to be also important to banks and “family and friends” investors. This study suggests that your mind does look big when an idea is presented in a patent and viewed by a venture capitalist firm.

The take-home message here is that:

1.  nation’s productivity appears to grow if:

(a)    support is given for inventors to make the entrepreneurial transition by  founding a start-up;

(b)    patents are filed by the inventor and added to the start-up when founded;

2.   your mind does look bigger when an idea is embodied in a patent – as seen by VCs, competitors and “friends and family”. This is because patents appear to enable a start-up’s collective mind to be viewed as inventive; and

3.  patents provide a path for venture capital support so the start-up can to grow.

Source:

Graham, Stuart J. H., Merges, Robert P., Samuelson, Pamela and Sichelman, Ted M., (June 30, 2009)
High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey. Berkeley Technology Law Journal, Vol. 24, No. 4, pp. 255-327, 2009; CELS 2009 4th Annual Conference on Empirical Legal Studies Paper.

Available at SSRN:

http://ssrn.com/abstract=1429049

http://dx.doi.org/10.2139/ssrn.1429049

Photo & blog by Dr Michael Bates, Principal, 1P
© 1Place Patent Attorneys + Solicitors

This deal with State may vary between countries, since the “deal” ]]> Patents are a contract with the State for a grant to have the right to have an exclusive monopoly for your invention for up to 20 years … so long as you disclose your invention to the State (plus meeting a few additional criteria).

This deal with State may vary between countries, since the “deal” is governed by the policy enforced by the interpretation of the laws of each country.  Patents can therefore be granted in some jurisdictions and not others depending on the policy of each jurisdiction at the time.  Changes in policy may also not be apparent until you have tested your patent in a particular jurisdiction. This tumultuous patent policy path is reflected by Samuel Morse’s patent journey of 200 years ago.

Samuel Morse was an American when America was an emerging nation. Initially he was known for his art; however, he made a significant contribution to the technology of communication apparently due to his wife becoming ill whilst he was painting a commissioned work that was many days of travel from his home and he needed “a means of rapid long distance communication“.

The electro-magnetic telegraph was Morse’s disruptive technology that enabled a message to be sent from London to New York such that the distance between the sites and the time for transfer become insignificant.

His patent story was not smooth – he had a patent granted in France and apparently the Sultan of Turkey personally tested his invention before his patent was granted.  Eventually many other European jurisdictions also granted his patent, but not all initially paid the royalties for the use of his invention.  Morse also made many attempts and considerable expenditure to seek patent protection in England … but his patent was rejected by the patent office and subsequently at a hearing.

Elsewhere, Morse defended his patents vigorously so he could be cited as the inventor of the electro-magnetic telegraph. Accordingly, he was challenged by a “most unprincipled set of pirates“. His time and money was spent by “putting evidence into something like legal shape that I am the inventor of the Electro-Magnetic Telegraph.”

Morse was in near poverty when he returned to the USA, having not successfully gained patrons or commissions for his art and having considerable expenditure in defence of his patents via lawsuits. He did not have an easy rise to fame, nor was his claim to his invention accepted in all jurisdictions where his technology was introduced and readily used.

This poverty was relieved when he was 67 years old when he was awarded the equivalent to about $1,720,000 in today’s currency by a handful of governments including France, Belgium, the Netherlands, Russia, Sweden, Tuscany and Turkey.  Each contributed according to the number of Morse instruments in use in their respective country. His home country of the USA was slow in recognising Morse; however, both the US and the UK now have statues and plaques in recognition of his contribution.

Morse’s advice was that when you are told your ideas are not worth your salt, then learn to do without salt, so that your dream can be realised when others can’t see it.

Morse’s story is especially important today, where policy towards patents can tighten in one jurisdiction and loosen in another.  This is still particularly important in the area of business method patents and software patents which have been a very controversial area of the patent law over the last decade.  Such inventions are treated differently in the patent offices of Europe, USA, Japan and Australia so success or otherwise in one does not mean that all jurisdictions will treat your invention in the same way, so choose your path with care.

Take home wisdom

1. Some jurisdictions have tight policy that can make it difficult to secure patent grant compared with others.  This may not always be apparent before you apply and can change with policy fluctuations; and
2. All great inventors (& artists) reap great rewards before their death – if only!

As an aside, Samuel Morse’s paintings also had convoluted paths. His painting “The Gallery of the Louvre” was intended to inspire and educate audiences; however, this painting was initially rejected by the public.  Morse was crushed by the response, which apparently lead him to abandon his painting career to pursue his inventive endeavours. The Gallery of the Louvre in 1982 sold for $3.25 million, which was the highest sum ever paid at the time for a work by an American.

Further reading

The Greater Journey: Americans in Paris by David McCullough (Simon & Schuster) http://pages.simonandschuster.com/greaterjourney

Samuel Morse http://en.wikipedia.org/wiki/Samuel_Morse

Photo & blog by Dr Michael Bates, Principal, 1P
© 1Place Patent Attorneys + Solicitors

Popups fill the vacuous ghost like presence left by “For Lease” signs that smatter high streets. The economy may have fallen; however, the past-time of people promenading along high streets seems not to have abated.

Popup shops provide the test ]]> Popup shops make travelling down a high street much more like walking through a gallery.

Popups fill the vacuous ghost like presence left by “For Lease” signs that smatter high streets. The economy may have fallen; however, the past-time of people promenading along high streets seems not to have abated.

Popup shops provide the test for market suitability, without the overheads of long leases and expensive shop fit-outs. Thus, we have the chance of an exciting shopfront changing as the weeks pass. This adds to the productivity of an area whilst minimising the opportunity cost.  Popups provide the chance for a mix of shops to co-exist without being restrained by the conservatism of risk which poses questions like: “Will this be suitable in three years time?” which is a typical minimum length of a commercial lease.

Popup shops change as the seasons or even as the weeks pass – thus a disruptive chaos in the retail world is given life, which is critical for the retail world to survive.  Now it is more than just a fashion or collection of goods that change in the window.

In the late 1990s to around 2004+ much retail moved from bricks and mortar to clicks. The irony was that while this was seen to present an opportunity for small retailers and manufacturers, small labels got lost as Google searches favoured and became increasingly dominated by retail / manufacturing monoliths. As much as on the high street, “small” became invisible in the electronic marketplace because Google searches heavily favour the crowd.

But “small” is nimble and its ability to survive despite conditions that favour “big” attests to the desire of consumers for something a bit different, less homogenous…perhaps, more thoughtful or creative.

The availability of popup spaces allows “small” to have a voice and a presence on the high street – indeed, to compete competently as the rapidly changing space demands attention and creates interest “I wonder what is in there now?”

Is the popup restricted to the inner city? In Australia it seems so … why?

Retail leases in the major Australian cities are very expensive, and passing foot traffic often only appears in the inner-city, since the suburban shopping experience involves a “drive to the mall”.

However, this may change:  there is now more support for an increase in bicycle and foot traffic in the city and the surrounding more malleable suburbs.

In cities in Japan there are many back streets that have boutique, groovy … fashion, design shops and cafes that are supported.  These boutique shops are in back lanes staffed by one person from 12 noon to the late night without fear and with active support for their wares.  Australia has had, in contrast, a domination of the huge, cloned retailer throughout the suburbs. This will change with micro business using both the web and the popup shop as a link to the community and to co-exist with the big retailer.

Popups are disrupting the equilibrium and giving micro businesses a chance to have a presence without the overhead, so as to revitalise the retail experience.

Popups may come and go, but the businesses behind them do not. Whether micro or macro, the business behind a popup relies on a strong brand – the enduring memory after the popup has popped down.  Protection of that brand, which is a vital asset of the business, must be protected, promoted, and exploited in all of the business’s pops.

Photograph and article by Dr Michael Bates

© 1Place Patent Attorneys + Solicitors

Although the Apple universe may seem separate, an app is just another software product and you should ensure that your newly named app does not infringe third party trade ]]> With iPhone apps there are numerous intellectual property and privacy related issues to navigate for your new app to make it on to the App Store.

Although the Apple universe may seem separate, an app is just another software product and you should ensure that your newly named app does not infringe third party trade mark rights.  The territorial nature of trade mark rights and single marketplace adds a complex dimension to competing rights.

The iPhone SDK Agreement has rigorous requirements for compliance with privacy laws, dealing with copyright in content, when using Free and Open Source Software (FOSS) and for apps using Google services, additional compliance with applicable terms and conditions published by Google.

Do not even think about violating Apple’s iOS Human Interface Guidelines.

With all of those other issues to contend with, it is no wonder that short cuts in connection with the End User License Agreement (EULA) are very appealing.

Why not just put anything up there?  After all who actually reads the fine print? Doesn’t everyone just tick the acceptance box for the terms and conditions? Who is going to take any action for a free app or for something they only paid $1.99 for?

With iPhone apps, Apple kindly makes it nice and easy by providing developers with its own EULA to use. Thank you (Apple) universe! Why not take the easy route and just use that? After all Apple is slick with endless resources to prepare the definitive EULA.

Yes – the Apple EULA can work to protect your position but it very much depends on what your app does.  An important consideration is that it will be accepted by Apple in the submission process through iTunes Connect.  However, you may not be shocked to find that Apple has drafted its default EULA primarily with itself (rather than you) in mind.

This is evidenced by the fact that a custom EULA must include Apple’s minimum terms in order for an app to be approved by Apple.

There are many hoops to jump through to make it to the App Store and these focus on protecting third party tights and minimizing liability for Apple.

The EULA is really the one opportunity the developer has to look after their own interests against the world at large. Terms and conditions are typically regarded as prudent when providing traditional goods and services and the same applies in the fast moving area of apps.

When offering a low cost product to the masses, it makes sense to attempt to make this a low risk legal relationship by creating a EULA that squarely addresses your own commercial considerations.

© 1Place Patent Attorneys + Solicitors – Lance Scott

New Coke of the 1980s is the text book marketing blunder.  In 1985 Coca-Cola introduced New Coke, its new flavoured product.  The taste of the new product was sweeter, less tangy and smoother ]]> Taste, modernisation and relevance are all factors which support change.  Change is constant but sometimes sentimentality is a spanner in the works.

New Coke of the 1980s is the text book marketing blunder.  In 1985 Coca-Cola introduced New Coke, its new flavoured product.  The taste of the new product was sweeter, less tangy and smoother than the original.  Consumers preferred it in the blind taste tests over any other available beverage.  Change was logical and carefully thought out by Coca Cola.  However, upon release the product bombed spectacularly and was removed from the market in less than three months.  Brand sentimentality trumped logic and products were quickly badged Classic to convey that consumers were getting the real thing.

Another series of troubled brand changes was Japan Airline’s rejection and subsequent adoption of the iconic crane image.

The original crane was introduced in 1959 and used for more than 40 years.  From 2002 JAL rebranded to an “arc of the sun” image, and the crane logo was ultimately killed in 2008.  On 1 April 2011 JAL launched a livery based on the old branding used before 2008.  JAL said that the symbol of the crane “has come to be associated with the nation’s distinct hallmarks of pristine quality and reliability”, values that JAL says it is “determined to safeguard”.

Even though the return to the Crane appears to be widely preferred, the changes have been labelled as birdbrained because of the huge cost of rebranding, at a time of company bankruptcy.

Everyone is over Gapgate and the immense furore surrounding Gap’s new logo in 2010.  It simply does not deserve any more commentary, particularly as many claim this was nothing more than a (successful) marketing stunt to sucker discussion and passion for original Gap.

Despite these sagas, branding changes are inevitable and the good brands are constantly evolving.  Coke itself has not remained static and is one of the world’s most innovative successful brands, with many new tasting products since 1980s New Coke.  Perhaps the message is that the good brands identify their brand equity and innovate by leveraging off heritage rather than communicating the black and white of old and new. Coca Cola’s brand principally comprises bottle shape, the dynamic ribbon, curvy script and the red / white colour combination.

Where does this leave us in the context of brand protection? Trade mark registration is clearly only a part of the branding process.  However, this does reinforce the importance of protecting and nurturing heritage elements if they are the touchstone of an evolving brand.

Of course regardless of the visual elements, a plain word registration for the name is the vital constant in all this change.  A plain word registration is vital because no matter how much visual identity is tweaked, the underlying name typically remains the same.

In general terms, a plain word registration affords the broadest trade mark protection in that you should not need to reapply if artwork and graphics change at a later date.  At least from a trade marks perspective, COKE, JAL and GAP will always be COKE, JAL and GAP no matter whether they are rendered in Gotham font, Helvetica or (heaven forbid) Comic Sans.

© 1Place Patent Attorneys + Solicitors – Lance Scott

Protection of shape and scent marks as registered trademarks are obvious examples where the lines between product ]]> Sometimes it can be hard to discern whether it is the brand or product which prompts us to purchase.  The obvious answer is that it is a combination of both.  However, occasionally things seem out of kilter.

Protection of shape and scent marks as registered trademarks are obvious examples where the lines between product and brand can be blurry.

There is a great deal of incentive for owners of physical products to register these as shape trademarks.  Registering a product as a shape mark potentially enables monopolies / exclusive rights granted in relation to patents, registered designs and copyright (limited in duration) to be extended by a trademark registration (unlimited in duration provided the mark is used and the registration renewed).

Naturally the gatekeepers in the IP registries and courts are loath to allow this and attempt to balance the delicate, complex public policy considerations in the registration and enforcement context.

Similarly, although section 6 of the TradeMarks Act 1995 (Cth) specifically provides that scent can be registered as a trade mark, policy (at least in Australia) is such that it is difficult to register perfume given this would protect the product itself.  From a trademarks perspective, the badges of origin for perfume are the brand name, packaging and get-up. Like good perfume itself, the IP issues in connection with perfume are complex. See a whiff of change.

The product / brand distinction is particularly pronounced in a fashion context, where you cannot help but think that buyers crave name brand cachet rather than the inherent quality of design and manufacture of the products (which may or may not be superior).

Paul Smith multi stripes are a remarkable example of how brand in the form of visual identity rapidly became a range of products.

A multi-coloured shirt featured in the 1997 Paul Smith men’s collection was the genesis of Paul Smith’s stripe pattern visual identity.  Graphic designer Alan Aboud, struck by the multi stripe, used it in the corporate packaging in the form of carrier bags.  Originally a temporary initiative, it quickly infiltrated many aspects of the Paul Smith range of goods.  In 1999, the stripes were reinterpreted for women in a swirl stripe.  Again swirl striped products took off with prolific application on products. The multi-stripes have also led to a Zebra motif.

The multi stripes are a central visual cue of the Paul Smith brand.  Witty renderings, for example on Mini cars, signify the English and quirky nature of the brand.  However, the brand and product applications are so pervasive, it is sometimes hard to know where brand and product sit.

The Paul Smith stripes are hardly alone as a powerful pattern in a fashion context with Louis Vuitton’s iconic Damier pattern and Burberry check as more notable examples, both of which are registered as trademarks in Australia.

Because of the policy considerations, registration can be difficult to obtain.  See Paul Smith’s difficulties in securing registered protection of the stripes in Europe.

Do the patterns represent great quality well designed products or an easy visual cue to convey your wealth, status and taste to other consumers?  Again, this is probably a combination of both. However, in connection with low quality goods such as key rings and iPhone covers, these patterns must operate primarily as a badge of status and taste.

It is of course simplistic to say that these patterns alone sell the goods.  They are typically part of a well thought out family of brands.

Like most IP, the issues are most interesting in a conflict situation.  Protection of these patterns as registered trade marks well and truly assist trademark owners in the tireless battle against counterfeit products.

However, the complex policy issues come into play when other traders use similar, but not identical, patterns and sail close to the wind. As a general rule, trademarks entirely comprising patterns and stripes are afforded relatively narrow rights on public policy grounds.

Notwithstanding that, trademark owners will naturally seek to assert the broadest rights.  Notably, Adidas has for decades aggressively flexed its three striped muscles against users of two, four or five stripes and sometimes successfully.

Although copying and the euphemistic “interpretation” may be rife in the fashion industry, think again if you consider that mere patterns such as stripes and checks are in the public domain.  IP may lurk in the product.

© Post + photographs – 1Place Patent Attorneys + Solicitors – Lance Scott