Earlier this week Sony Interactive Entertainment Inc. (Sony) filed a trade mark application for “PS5” in Switzerland signalling the forthcoming launch of the fifth version of the world famous PlayStation games console.
The trade mark application covers the console hardware, gaming software and other goods and services and claims priority from an earlier trade mark application filed in Jamaica in October 2019.
It is common practice for companies to first file their trade mark applications in territories like Jamaica where the application is not publicly listed and searchable on an online register. This practice indicates that Sony has been making plans for the PS5 for some time.
Identify all possible ‘brand identifiers’! Most business are aware that they should seek trade mark protection for their headline brand name (e.g. PlayStation) and their main brand logo (e.g. the PlayStation logo or the PS logo), but fewer companies also invest in secondary brand identifiers such as the names and logos associated with individual products and/or other brand identifiers such as shapes, colours, sounds and even smells. Businesses wishing to maximise the scope of their legal protection for the brands should periodically review all of their products and potential brand identifiers and put a filing strategy in place to seek protection for those brand identifiers in all relevant classes of goods/services and all relevant territories, where commercially practical to do so.
File in time! Most territories operate on a ‘first to file’ basis meaning that the person entitled to use a trade mark is the person who first files that trade mark and not necessarily the person who first uses that trade mark. Therefore it is essential for businesses launching new brands or new products, to conduct clearance searches as early as possible and then make initial filings for the relevant trade marks at the earliest possible opportunity, ideally before the product is disclosed to the public. Failure to do so can lead to problems down the line, particular in territories like China where trade mark squatting on Western brands is common.
Take a broad view of intellectual property protection! When considering new names and considering seeking trade mark protection for those new names, thought should also be given to the other intellectual property assets which may need to be secured. For example, it may be necessary to secure domain names corresponding to the new brand names. It may also be necessary to secure copyright (in some territories copyright is a registrable right) or registered design protection for brand get-up and other graphics or artwork relating to the new brand. Being proactive about securing these aspects of your new brand will make it much easier to defeat copycats later on down the line.
Briffa are experts in all aspects of intellectual property law and practice and advises its clients on contentious and non-contentious intellectual property matters including advising on brand strategies, preparing and filing trade mark and design applications and managing global intellectual property portfolios. If you would like to book a meeting with one of our specialist intellectual property lawyers to discuss how we can help you to protect your new business, brand or product, please do not hesitate to contact us on firstname.lastname@example.org or give us a call on 020 7288 6003.
Eamon Chawke, Solicitor
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