Identifying & Avoiding the Intellectual Property Rights of Others

 

Generally speaking, people do not like to think in terms of having to stay out of trouble. This implies that you're walking in a dangerous neighborhood, and that if you're not careful, you might accidentally get into an unpleasant situation. As distasteful as it may be for some, this is the situation faced by all who wish to grow their businesses. The questions is, what are the implications for you, the diamantaire, and what steps can you take to stay out of trouble? 

 

The implications of staying out of trouble are simply that in designing new diamond cuts or jewelry, and in adopting new trade names and advertising slogans, you have to keep your eyes open. And it's not good enough to simply look at the marketplace. That won't help you to avoid infringing your competitors' intellectual property rights.

 

And should you care about that? Yes. Because you care about avoiding potential lawsuits, damage to your reputation and damage to your business. And ignoring the intellectual property rights of others, whether willfully or not, is bound to lead to these undesired situations, sooner or later, as sure as crossing a street with your eyes closed will eventually lead to a collision.

 

The last decade has seen a significant proliferation in the registration of designs and trademarks in the diamond industry. The IP-savvy diamantaires have taken a lead over the rest of the industry, by building active defenses about their creations. In simple terms, more and more diamantaires have been protecting their businesses by the registration of trademarks and designs and, in some cases, even patents.* And this means that more and more of your competitors have acquired the legal tools to actively prevent you from encroaching on their turf, and to seriously harm you if you should do so.

 

The IP-aware diamond companies have acquired these tools merely by the registration of their designs and trademarks, and are thus now able to take legal steps in order to stop you using diamond cuts if these appear to be the same as their own registered designs; and to stop you from using a new brand name for which they hold the trademark registrations.

 

So what can you do to stay out of trouble? It's actually easier than you might think.

 

Before launching a new product, a new on-line internet store, or an advertising campaign, and before you commit significant resources to a venture that might theoretically cause you to infringe someone else's design or trademark registration, do yourself a favor, and search.

 

More specifically, search for design and/or trademark registrations, particularly in your most important markets. And even if you don’t know how to search the relevant design and trademark databases, your patent attorney will be able to do this for you. Moreover, it will be worth every penny invested, and every second spent.

 

Avoiding undesired conflict with your competitors may not in itself bring you success, but it can save you not only heartache and money but – most importantly – it will help preserve your most valuable asset, your good name.

 

*Known as Utility Patents in the United States, distinct from Design Patents, known everywhere else as Registered Designs.

 

This is the second in a series of articles about intellectual property. Click here for the first article, “IP Law: Protecting Your Reputation in a Changing Marketplace”.

 

Jeremy Ben-David, originally from the UK, has been involved in IP since 1985, and since 1995 has been managing partner of JMB & Co, a full service Intellectual Property firm. He can be reached by email at: jmbendavid at israel-patents.co.il