Dec 21, 2020
Today's guest shares the value in trademarks and how they can help you protect your assets... even help you avoid a hostile takeover.
Listen as she shares the unique differences between US, UK, and European Union trademarks and the weight that they carry.
Please welcome Céleste Reumert Refn from Grand IPR.
- 0:24 - Céleste's Good and Bad at
- 2:37 - Céleste's Background
- 7:11 - Trademarks
- 8:23 - U.S Granting Trademarks
- 11:06 - Benefits of Avoiding Hostile Takeovers
Contact Info
- https://www.youtube.com/channel/UCyn0SxR-CxKqJ_3W5CbqS9A
- https://www.grandipr.dk
- https://twitter.com/CelesteReumert
Celeste. How are you doing? Thanks for jumping on learning from others. Hey Dan, thank you for having me. How are you today? I'm doing good. Um, you know, you have an interesting background. We haven't talked to anybody in your space, so this will be a good new conversation. I like to start the discussion though, with two questions and question number one is what are you good at?
What are we gonna learn from you today? That is so fantastic. Let me tell you right away. So what I do is I help ambitious. Scale-ups wanting to expand their market, reach, stop ignoring that business assets, inherit potential inherent potential, and start taking their business to the next level, by empowering them to actively protect their Mark with a trademark registration that I performed for them.
So in short, I do to read my three new Wells. There you go. All right. And then opposite of that. What do you not so good at? I'm not so good at numbers. It seems like our guests are either one way or the other. They're either amazing at numbers or horrible at numbers. Yeah, not really. Not most of them. I'm actually in my little Slack
and you know what? I didn't, I didn't. It wasn't discovered until after I had studied them. And I, I, you know, I discovered it myself cause, um, I was, I was coming through a pipe and I was still on Facebook. I'm no longer on Facebook anymore. And back then I was just commenting on some something I noticed because I can, I can actually stop when something is, is not spelled correctly.
Or if there's something that seems a bit weird. So I, you know, very sort of, um, from a, uh, uh, kind of, kind of. Uh, perspective was trying to point this out to the past. And all of a sudden, all, uh, this person's friends were just jumping down my throat and sort of slagging me and, you know, uh, it ended up with me thinking, okay, maybe I'm.
Dyslexic. So let me figure that out. And so I ended up doing a test and because of my age.
So how does, so how does that visualize for you then? So you will spell something incorrectly, but the difference between you and other people with dyslexia is that you can realize there's something that's off and then you go back and look at it again. It's really, really weird because, uh, at that, um, place, uh, in Denmark, I was living in Denmark back then.
Um, I don't know if you knew that about me, but I'm actually Danish. Uh huh. I'm a, I have a completely messed up because I'm Danish. I was born in Denmark, but I'm wonderful Swedish on my father's side. And then this,
as you can hear, um, so I, I was, I w I went to that place, um, And he was sat in front of a huge old fashioned computer, you know, the stationary type that sat on your, on your desk and it has a huge tower next to it. Um, and, and then, uh, I was given a headset and in my ears, I couldn't hear a word. And on the screen, the word was misspelled and I couldn't pile the two.
So that's really interesting. Yeah. Have you found sometimes I hear that people with dyslexia or other, you know, other conditions like that, that they, that overtime, they find that there's actually a power in it. So obviously there's, um, handicaps, you have to get familiar with and overcome, but once you.
Overcome that I've heard other people say, well, yeah, helped me be more of a creative thinker. And now I accomplish more because they have to look at things differently. Have you, for you, have you found that there's any sort of power in this situation for you? I totally agree with that because obviously, you know, I, it wasn't discovered at school that I was dyslexic.
I was, I was quite mature when it was discovered. Um, I started studying the law at the age of 35. So you can imagine it was much later that my, my dyslexia was discovered. So yes, I've, I've learned to do things in a completely different way. Plus the fact that I actually come from a line of people who are.
Both creative and elements. So, you know, it's just been enhanced even further in me, I think. Yeah. That's interesting. Alright. Okay. Well that was a good discussion. So let's, but let's go, let's come back to your area of expertise. So as you said, you are really good at trademarks. Uh, why don't we start with the basics and explain what a trademark is.
So a trademark is something that is used to distinguish your business from somebody else's business. That is, you know, I don't know if you've got a business or not, but, you know, anyway, um, it's it's to distinguish businesses or undertakings from each other, as we say, here in the UK. Um, and it's one thing to get something registered at what we refer to as how some companies is, they will just look at the way.
Um, you know, you can be business, uh, AYA, Z, um, or ABC, and then you can have it business, uh, CDF, and they will not be, uh, that will not be a problem with companies house. Whereas within the trademark industry, um, we look very much at what is the industry that you're operating inside and. Are there any prior registrations.
And if there are, then that is going to put a two, uh, show up as an issue for you because, um, they, they will want to protect, you know, we, we, the reason people protect their trademark is because they want to build up the Goodwill, the value of whatever is that they bring to the market. And, uh, at the end of, um, A person's life.
They may either want to sell their business or they want, you know, um, for whatever reason, you know, or they may be ill and be forced to sell it. So there's a, there's a good reason to do so. And I know for a fact that businesses in the U S if they are, uh, to, to buy, uh, another business, if there is not a registered trademark, they will put the Goodwill at zero.
So it's quite serious. Yeah, that that's significantly different than in the U S so I have three trademarks in the U S um, but none or, you know, required for, for business. Um, I think my first one, I didn't even get until I was already 10 years into business. So it's interesting how substantial the value of those, um, are over in, in year.
So is that kind of apply all across Europe or more specific or more, more for specific countries? Well, um, I think that the U S is very little use about their trademarks compared to over here. Um, because I, I have noticed that they let people register things where I'm like, what, how could they do that? Um, whereas over here, we are very much focused on, uh, not infringing upon somebodies rights and it has to be a unique Mark and stuff like that.
Um, and there are 11 different types that you know, that have trademarks. No. So you've got the, the word Mark. You've got the logo. You've got a sound Mark. You've got, um, Hologram. So there are, you know, there are some, let me just, cause I have a, I was familiar with some of those. Yeah. But I wasn't familiar with a, you know, like a hologram, for example.
Now, when you say when, when you look at some sample cases in the U S and you say that you're surprised that they would Mark something like that, do you have any examples that you could give us that are surprising that, that, uh, the U S would grant a trademark for that? Well, um, I don't have anything off the top of my head, but I, I actually did a search for a client today, um, in a session.
And I see that over there, you can, as long as you are the first one to register something, then, then you can do it, you know, and over here it's really, um, it really has to be something that is unique and. And it's not good enough that you're the first one sort of who's who who's registering it. If you catch my drift.
Yeah. Yeah, the way that it works in the U S is, um, the, the trademark is kind of a timestamp, but it doesn't entirely mean that you have exclusive use, um, because in the U S it is first to use in commerce. So you may register a trademark, but if you never use it, or somebody can come in and prove that they used it in commerce before you, then that can override the trademark.
Yup. Yup. I know that. Yeah. So, yeah, but it's, it's really interesting. And as I say, you know, uh, intellectual property rights is more or less the same all over the world. And then there's the U S damn us. Okay, good. So give us some examples of the types you don't necessarily have to give, uh, you know, exact client names or anything, but give us examples of the types of products or services or industries that you service for your clients.
So, um, I normally just say scale-ups because, um, to, to, to point to one particular, um, industry can, can be limiting. Um, however, um, the client I worked with today was in, uh, financial services. So that's one of them and there's. Uh, another one, um, was doing a amusement park or something like that. If that makes sense.
Yeah. So, uh, in, in the amusement park example, since that would be less intellectual property, or maybe I'm wrong, is that more trademarking their brand entity or did they also have intellectual property? So it was the, the, the name of the business that, Oh yeah. They had found this name that they wanted to register and then they had had somebody create a logo for it.
So now one example that you mentioned before we talked to the benefits of this is avoiding hostile takeovers, uh, which, which was something that was surprising to me. Can you kind of talk about that? Yes. Because, um, Sometimes when a scaleup wanting to expand, they may want to invite in an investor and the investor is going to look at how well their assets are going to be protected in this new business that they are putting them money into, which is totally understandable by the way.
So if they see that there isn't a registered trademark, they will consider that their investment will be at risk. And so they will perform ourselves. I have heard of this. I've not experienced it myself, but I've heard of it. So they, they will. Now in that example, is that the investor being. Are they really protecting themselves.
So in that case where they already invested in, and so then they're protecting themselves or are there some times where investors see an opportunity and maybe they're not invested in it yet. Maybe they're in a discussion to invest. And then they see that as a weakness and, and then they come in without investing and then just try and take over.
Is that possible?
I haven't part of that. I I've actually spoken to somebody, um, in Denmark who, uh, had spoken to an investor and they had asked, so what are you doing about intellectual property? And that's when my name popped into their mind. And that's when they booked the time to talk to me. So I didn't think that they can do it without having performance.
Having some sort of, um, maybe put, already perform the, they have some sort of access to the business. It's like they can't do it without access to the business. So they may have actually, I think, I think that they had put money somehow into the business and then they did the hostile takeover, but I'm not entirely sure of that process.
Cause I, you know, I haven't experienced it myself, so I don't, I don't really know what, what they technically speaking do. Um, I just, I just know that it's, it is something that they, you know, they will look at, are you protecting your business assets? And if not, you know, they, they can perform the hostile takeover and certainly did in, in at least one situation that I've heard of.
Yeah. So are there any heads up for people really? Yeah. Are there any interesting scenarios that you ran into during, I assume there's some sort of discovery process when you're looking to trademark something where you look into, you know, are there other conflicts, are there any other close trademarks or businesses that could claim this instead of you know, who you're working with during that discovery process?
Has there been any interesting findings that have stories that come to mind? Well, uh, yeah, the, the, the impact thing, there was a really interesting thing because, um, while I was in the process of registering it, um, the trademark, the guy came saying, approach me saying, listen, there's actually somebody who's infringing upon my rights.
So can you please handle that? Um, And then I asked him to furnish me with, um, with information because in Denmark she's a bit special to the rest of the world. As soon as you start using. The name as the business name, then you actually create, uh, right in Denmark. It's only, it's not like you can do that.
I don't know why that is. Um, so because he had been using this name for quite a while before contacting me, or before me starting the process, I could then approach that person on, on his behalf saying yo fringing on my client's rights. So can you please stop that? Um, And then, um, you know, obviously I didn't hear for a while because they needed to find their own, um, IP specialists to consult with.
And they were basically told that I and my client were in the rites and they were in the wrong, and that was the end of that business because that business name completely right in upon that name, um, So, so the idea was completely scuffled and a dream shattered in Germany and pieces. Is, is there a average length of time that, that the process takes to successfully acquire a trademark six to 12 months?
And it's more likely to be 12 and six. What contributes to one trademark taking longer than another. The amount of work that the trademark, uh, authority, uh, has on their desks to go through. So not so much your individual application, but just start workload with other people. Yes, that's correct. And in the U S I know that there's a follow up period.
I believe it's five years after the FERC first trademark claim. And then every 10 years after that, is there something like that in Europe? Nope. I mean the U S you have, yeah. And in the U S you have to, uh, provide proof of use is if I remember correctly, that's what you have to do after the five year period.
And so in Europe, it sounds like once you own the Mark, you own it. Now, does it have an expiration period of a hundred years or when the business sells or when a person dies or how long does it last. So it's more or less the same, um, in, I think in Canada you have 15 years, but in Denmark and the rest of Europe, it's 10 years.
And then you bring you it, and it's the same here in the UK. We're going to have to see if they're going to change anything related to this. Now that we're leaving the EU because we have until the 31st of December is yeah. Um, so that's a really interesting, so, so far it's still 10 years. So the trademark used to apply to the entire EU, but now if your Mark's in the UK, then it's only good for the yeah.
Well, it, it depends very much on, on what you want because you can still apply for European one. Uh, even though the UK has stepped out, you can still apply for European one and get two in six countries on one go. The important thing to know though, is that if the trademark falls in one of the countries, it falls in the whole Europe.
So you lose it in all 26 countries in one fell swoop. So that's not very nice. So it's really, really, really, really important to consider. Do I want a European one or do I want national ones? Um, you can register in the UK. You can. Yeah. And Mark, you can raise them in Sweden, Norway, and so on. Um, but yeah, it's really important to sit down and decide for yourself.
Where is it? I want to, um, what market is it that I want to designate? Where do I want to trade? And then you. Take it from there. What what's the governing body or the agency that grants the, so if you're in the UK and you apply for an EU trademark, isn't still the EU. And this is just like one of the unique things that they're still allowing to apply to all of EU, even though the UK is left the union, or is this something that will be phased out?
Well, um, you can, you can still apply to, to the EU. Um, you know, it's got nothing to do with whether you are, you know, cause uh, no way is not member in the EU and Switzerland, isn't the member. They can still apply and get coverage in EU if that's what they want. Got it. Um, so, so it's very much a question of where you want to expand.
Into what market you want to take on. Um, and it's the same with the rest. And you know, there isn't a global trademark, so you have to very specifically know where you're going to go, because there is no way that you're going to cover the whole world because nobody does that. And that would be way too expensive for you anyway.
So that's why we always say to people that, that are wanting to register a trademark. Take a look at what market you re realistically I want to go into, and then we will perform the registration. But it, you know, if, if you're not, if you're not interested in say taking the whole of you, then don't go for that.
Just go for the local market. Say you want to move to Holland. For instance, then by all means, go for an application in Holland. They don't go for the whole U EU. Cause it is expensive. You know, what type of difference in cost is there between a single country, trademark and the whole EU?
Well, if I remember correctly, um, the EU one is one classification. It very much depends also on the calcifications, you know? So it, it, so if we say that it's just one classification, I think there was something like 900 euros not long ago. Um, so, so you really want to think about why and where you want to go.
Because here in the UK, it could be as little as 200 pounds. So it really varies from business to business and how many misclassifications you need. And so the classifications would be the example of earlier you saying there's 11 types, you know, logo versus sound versus hologram. Is that what you're referring to?
No, a nice classifications is like, uh, legal services, financial services, uh, clothing, shoes, toys, that kind of thing. Oh, so you could actually have two layers of filing expense, you know, trademark expenses. One would be the classification and then the other would be the type. So like if you have multiple classifications and multiple types, Uh, you probably wouldn't have multiple types because that would be confusing to your ideal clients.
So I would say, say for instance, um, say that you were in some sort of business and you wanted to use like a hologram instead of just a word Mark or, or a logo. So you would have the whole ground created and then you would, you would underneath, underneath that you would then appoint. The niece classification.
So say you were, um, doing legal advice, then you would tick off all the boxes beneath the legal advice, um, for, for that classification. And you might not want anything other than legal advice. Right? So it, it very much depends on the business and what they're wanting to do with their trademark. What do big brands I'm gonna use like a, an extreme example here, like a, an international brand, like Coca Cola wouldn't they want multiple types.
So they, they would want the logo trademark, and then, you know, the word Mark, and, you know, maybe they have several different ones because they have the shape of the bottle as far as I remember. And then they also have the, the writing, which was originally hundreds. And if I'm not mistaken, Yeah, I think that they, you know, obviously they, they have become so big.
They probably started out with just the one and then they have evolved over time and that's, that's how the people do it. They let their thing evolve. Is, do you have any stories or I assume there's the potential conflict? Well, let's use Coca-Cola as another example. Let's say they had just a word Mark 50 years ago and then they, they didn't do one of the other ones.
Um, Whether it's the logo. Um, and so their logo and their word marker, obviously very comparable because they're both the name Coca-Cola. Now, if there's a gap in between, when they file a second different type of Mark, is there any possibility what happens if somebody comes in and sneaks in and tries to file?
Um, is there the potential that they could be granted that, and then if they were, I assume that'd be. Pretty straight forward that if it went to a legal proceeding, that that would be overthrown. Um,
I , that's a really good question. Um, I think, um, because Coca-Cola, is that big? I don't think that they would ever let that, let that happen to be completely honest, but I think that if somebody tried to shoulder their way in that they would get fought off quite. Easily, you know, it wouldn't, it wouldn't even go into a courtroom.
I don't think, I think that they would just say, listen, we were here first and, you know, Bobo bugger off or something. I got, you know, I, I, I think that it wouldn't come to any, any legal battle in that case. Um, I don't know if you ever heard of the case of supermax versus McDonald's. Yes. Um, McDonald's um, I'm trying to block shoot max, which is an Irish, um, uh, burger chain.
Um, and they will wanting to block a McDonald's was wanting to block supermax from, from expanding into the rest of Europe. They're an Island. Um, and they actually didn't. Provide the correct form of, um, proof of use to the European, um, tribunal. So, um, their Mark fell in 26 countries and was still standing in Sweden because they had a national registration in Sweden, which is why I spoke about the national registration before.
Um, so it's really, really important and supermax, well, was it, you know, a tiny compared to two McDonalds. So for them it was a case of David versus Goliath, actually. Um, so, you know, in some cases it can happen that that the tiny one can win against the big one. So, um, Yeah, it can happen. In some cases in your name, they weren't, they weren't using a McDonald's or anything.
They would just say calling themselves supermax or supermax. Um, I haven't read up on it lately, so I can't remember, uh, what has happened since there was also a really interesting case in Denmark. Where there was a guy who had this tiny little stand where he did like a hot dogs and he called himself Mac Allen.
And that also caused issues with McDonald's. Um, right now I don't recall the outcome of it, but it was a really interesting case as well. Yeah. Yeah. It seems pretty dynamic, especially with the different types and the different marks and the different locations and the different countries and the option of the union.
Um, yeah, so I think, yeah, and so it makes sense why somebody like you can come in and kind of clear that up and save them time. If our listeners are interested in finding out more about what you do, can you throw out some contact information or how can we find out more about you. So, first of all, I'm on LinkedIn, which is the easiest place to find me.
And then of course, there's my website, which is grand IPR, D K. And even though it's a DK domain, everything on there is written in English. Um, and I can be on Twitter. I can be found on YouTube. I can be found on Vail. Very cool. No, that's great. I appreciate your time and bringing this new topic to our audience.
So Celeste, thanks so much for jumping on learning from others. Appreciate your time. Thank you for having me.