You would never imagine how much intellectual property assets can reveal about a company or its strategy. Let’s take a look at Bird, the electric scooter sharing company, which recently arrived in Luxembourg and has already created a stir.
by: Laure Chemla
photo: Anna Katina / Silicon Luxembourg
featured: Laure Chemla, Head of IP/TMC Department at CMS Luxembourg
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A distinctive name
All companies would agree on the fact that their trademark is one of their key assets. Therefore, one may be surprised that the name “BIRD” may be available for registration for the rental service of personal electric vehicles as it is a common name. However, from a trademark perspective, “BIRD” is a very good choice as it is not related to the product or service proposed by the company and thus should be considered as distinctive.
A registered logo
It is always better to protect separately a logo (design) and a brand’s name (word) in different trademark applications as long as they are both distinctive. However, if you are afraid that your trademark is not distinctive enough, one of the solutions may be to apply for a semi-figurative trademark: a combination of a logo and a brand’s name. In Switzerland, Bird may have faced a refusal from the trademark office or legal issues as it is the only country where they have applied for such trademark combining their word name and logo.
A trademark available worldwide?
Before registering your trademark, you must also do a prior search to make sure that the chosen name is available in your countries of interest. Bird’s case is again very interesting on that aspect. Indeed, the company has registered its first trademarks, the name BIRD and their logo, in the US and then have claimed priority to file new applications worldwide while keeping the date of their first US applications. Under trademark law, the six months priority deadline protects companies against pirates who could take advantage of the gap between trademarks applications to file an application in a country where it is still available in order to re-sell it later to the “real” owner.
Bird’s trademarks and logos worldwide are owned by its US parent company, which is highly advisable to have the same trademark owner in all countries and not the local entity or the distributor. It notably simplifies the trademark portfolio management and allow you to benefit from the priority deadline.
For international companies one of the biggest issues is to get a trademark registration in every country where they want to operate. Sometimes it may not be possible due to prior trademarks. In that case, you can either try to reach an agreement with prior trademark holder(s), change your name or use it without registering it which would expose you to infringement proceeding from prior trademark holder(s).
Bird just had a similar issue in Europe where they applied in September 2018 for the European word mark BIRD in their classes of interest (notably software for coordinating transportation services, transportation by personal electric vehicle…).
In November 2018, a French company filed an opposition against Bird’s application based on their prior European trademark T-BIRD. What is very interesting here is that both trademarks were not registered for the same classes of products and services as T-BIRD was registered for electric bicycles, scooters. The French company was arguing that there was a risk of confusion for consumers between T-BIRD electric scooters and BIRD electric scooter sharing company.
Attack being the best defence, Bird has decided in April 2019 to buy the French trademark E-BIRD which was registered prior to T-BIRD for similar products and services. Thanks to this trademark Bird now has prior rights to T-BIRD and decided to file a nullity action against this trademark to neutralize the opposition that was filed against their BIRD trademark. In such situation, the best for both parties is to reach an agreement, which was the case here a few weeks ago!
What name registration can tell you about strategy?
Bird has, of course, filed trademark applications in their countries of interest, meaning where they are currently operating but also in countries where they would like to operate. It thus gives you a great insight in a companies’ business development strategy. Bird has notably filed trademark applications in India, Singapore, China, Japan, South Korea, Indonesia but also in Mexico, New Zealand… Let’s bet that Bird will or plans to operate soon in most of these countries.
Bird’s intellectual property assets and strategy is a very interesting case study as you can learn much more than you imagine at first glance. Do not forget to protect and secure your IP assets. Let’s imagine what may have happened if T-BIRD would have been the one buying E-BIRD…
All information mentioned in this case study are publicly available on the websites of the European Union Intellectual Property Office (EUIPO) and World Intellectual Property Organization (WIPO).