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Monday, 23 February 2009

What is the value of the NetBook trade mark?

The IPKat's friend and IP Finance weblog colleague Rob Harrison has penned the following piece which seems so interesting that the IPKat asked if he could give it a wider audience. Writes Rob:

"Some of you may have been following UK/Canadian company Psion Teklogix’s attempts to enforce its rights to the trade mark Netbook against a number of vendors. Psion filed the mark in the EU 1996 and it was registered in 1998 (Number 000428250). The trade mark was being used in May 2000 (as this article in German demonstrates) and at least until 2004 in the US, if this entry is to be believed.

In the meantime, the term “netbook” has been widely used to describe small laptops that are designed for wireless communication and access to the internet (see link here).

Psion (now called Psion Teklogix) started sending a number of bloggers and vendors cease and desist letters to stop the trade mark being used. While some larger retailers seem to have complied (Germany’s MediaMarkt, for instance, now just calls them notebooks), a whole community has grown up to oppose Psion’s attempt to monopolise the mark. Their discussion can be found here.

Dell it seems have now filed for revocation of the mark in the EU and in the United States on the grounds that the trade mark has not been used. Dell – which last year attempted to monopolise another common industry term by filing a trade mark application for “Cloud Computing” in the US -- have been hailed as “saviours” in the community. Nothing has, of course, yet been decided. Dell’s representatives have stated that the mark has not been used in the European Union for five years – but at this stage no detailed explanation has been given.

The case is fascinating. We see a company like Psion filing a trade mark for a sign way before the word had entered the English (and many other languages) as a designation for a whole new category of goods. The sign then becomes the common designation for the category of goods – and Psion attempt to enforce their trade mark rights. It’s not a clear cut case like Kleenex tissues (for US and UK consumers) or Tempo tissues (for German and Austrian consumers). The mark appears not to have been continually used and Psion certainly discontinued at least one product using this brand (as noted on their discontinued products page).

The brand could be worth millions, given its adoption to designate a category of products. Or it could be worth nothing since Psion ceased using it and failed to maintain the brand".

Ever interested in his readers' comments, the IPKat throws Rob's piece open for debate.

Net book here
Net book agreement here
Newt book here

4 comments:

Peter Groves said...

Accor4ding to Psion Teklogix (see http://www.psionteklogix.com/assets/downloadable/Psion_Netbook%20_Trademark_%20Statement.pdf) they are still using the trade mark in a limited way - and while they stopped making the Netbook in 2003, they did thereafter make a Netbook Pro. They don't reveal when they stopped making that. I posted on this topic yesterday - see www.ipso-jure.blogspot.com.

Harriet Zimmermann said...

I would say the horse has bolted from Psion in this case. The term Netbook has become generic among other companies as well as users, and it may be too late to insist on registration rights, particularly if there is an argument for revocation for non-use. It is like wanting to prevent people from using the word 'google' as a verb: it might have been possible to prevent other companies from its use initially, but the word has become part of the public vocabulary now.
If Psion insists on protecting its registered right, there may also be PR repercussions, and while Psion may even save its registration, which I doubt, it will lose goodwill and customers. As the enthusiastic discussion around this issue indicates, the public is rather antagonistic about the steps Psion has taken to protect its name. There is a feeling that if the word Netbook is monopolised now, it will affect competition and increase product prices - although I am not sure whether I agree with that, as nothing stops another manufacturer from fighting fire with fire, and coming up with a new catchy name, and producing a similarly quality product. But public sentiment may nevertheless lead customers to switch to other manufacturers.

Anonymous said...

Psion hardly has any customers or goodwill any more to be harmed anyway. It took a big hit after the main shareholder sold up and people stopped wanting personal organisers, instead just using their mobile phones

Rob Harrison said...

One final comment on this. Psion's representatives (Gill Jennings & Every) surrendered the registration of the mark on 2 June 2009!

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