[By Don MacRobert]
There are many different challenges and difficulties facing a start-up business, ranging from cash flows to marketing to protection. This column, the first in a series, deals with the importance of protecting one’s intellectual property (IP).
Many readers will identify with a story about a certain lecturer at the University of Pretoria who started dreaming of a financial empire.
He went to the trademarks office in Pretoria, and did his own searches there to see if the trademarks he wanted to use were available and could be registered. He then set about registering the trademarks he wanted.
This person was none other than Anton Rupert, founder of Rembrandt.
It is interesting to trace some of his earlier trademark registrations. Of course, we all now are familiar some of his better-known brands — Oudemeester and Richelieu (in liquor) and Stuyvesant, Lexington and Rothmans (tobacco).
But one of his earliest trademarks was the well-known “Van Rijn” mark consisting of the yellow packet and then a picture, or portrait of the artist wearing a beret holding a paintbrush in the one hand and a palette in the other.
Of interest is the fact that he first registered the Van Rijn trademark not for cigarettes, but for brandy. Then, his second registration for that same Van Rijn label trademark was in respect of pipes — of the smoking variety.
So one could see his business dreams starting to unfold, even while still being a lecturer at Pretoria. But the important thing for him and his group was to become the owner of so many well-known trademarks. Rupert became regarded as the doyen or guru of IP in SA because he was so proactive in registering his trademarks.
Too many start-up businesses in SA, especially in the technology space, forget to do that.
Why register a trademark? There are considerable benefits.
If my company happens to be Apple, I can register it in three ways — and, in fact, I must do so. The first thing I must register is the company’s name. Then I must register its domain name — say, apple.co.za or apple.com.
These first two registrations block other people from registering these names. But they do not entitle the holder of those registrations to sue third parties or stop third parties from copying their names.
Hijacking companies’ names is becoming big business, and many start-up companies face this challenge — as they start getting well known and their products and services become widespread, up jump the “hoods” to gallop off with their trademarks.
The best form of protection, as Rupert showed us, is to register your trademark at the trademark’s office. Registering a trademark:
- Serves to block others from registering the trademark.
- Allows you to rely on your trademark registration to object to other people who may come along with similar domain names or company name registrations.
- Allows you to use your trademark registration to sue third parties for trademark infringement, where the third parties use a name that is confusingly similar to your own. This is where the trademark registration is streets ahead of both the domain name and company name registrations.
- For certain cases — and I could go into this in greater detail — there are financial benefits, such as where your trademark is eventually so well known that it has a real value, which is reflected on the balance sheet of your company.
So, there are obvious reasons for registering a trademark. It is this last registration that is so important.
Don’t forget about it. Too many start-up businesses do.
- Don MacRobert is IP lawyer at Edward Nathan Sonnenbergs. This is the first column in a series for TechCentral on IP issues