Thoroughly Modern Marks

Matt Hervey (Gowling WLG UK) and Jennifer Sander (Gowling WLG Canada) assess the challenges of brand protection for wearable technology

Brand owners traditionally known for technology, fashion, luxury goods or sports equipment are increasingly becoming associated with “wearable technology”.

At its most sophisticated, this emerging product set includes full-blown computers in wearable form - for example, the Apple Watch and Google’s controversial Glass. At its most simple, an inexpensive communication chip is added to an everyday object. For example, Tile is a Bluetooth chip that can be attached to an easy-to-lose item, such as a wallet, and transmits its identity in the hope its location is discovered by phones running the Tile app. In between these extremes is a range of specialist devices, such as Fitbit activity trackers; dual-purpose devices, such as Ringly jewellery, which vibrates to identify calls or messages from selected contacts; smart clothing, for example sports clothing that provides feedback on body position; and technology as fashion, including Studio XO’s LED-and mini-screen-decorated couture.

Whatever the complexity or usefulness of the technology, brand owners need to be aware of the potential hurdles when registering trade marks for wearables and, more generally, the increased risks of brand damage where technology (and especially connected, data-collecting technology) is involved.

When seeking trade mark protection for wearable technology, an important consideration is that, because wearable products often combine a technology component with a traditional consumer item, they typically cross multiple classifications of goods and/or services. Brand owners should consider whether the goods covered by any trade mark application include the technology component integrated in the product, as well as the traditional description for the product. For example, a “smartwatch” could be classified both as a portable computer and a watch.

A review of trade mark applications and registrations for marks used in association with wearable goods illustrates this point.

In one approach, wearable goods may be described by their specific functionality. For example, a Canadian registration for the mark FITBIT includes goods for “multifunctional electronic devices, namely wireless activity trackers for displaying, measuring and uploading to the internet information, namely time, date, body and heart rates”.

Another approach is to define wearable goods by their traditional product name, and then to define this traditional product as having a particular electronic functionality. For example, a Canadian application for the mark SAMSUNG GEAR FIT includes “bracelets” as well as “bracelets that communicate data to personal digital assistants [and] smartphones”. Similarly, the same application also includes “wristwatches” and “watches that communicate data to personal digital assistants [and] smartphones”.

Such applications may include both broad and narrow descriptions of the goods and/ or services. For example, a Canadian application for the mark GOOGLE GLASS includes the broad description of “computer hardware”, as well as a narrower description of “wearable computer peripherals, namely head-worn computing devices, headsets [and] cases”.

Since more classes of goods and/or services may be engaged with wearable products, the trade mark applications for these goods will typically have higher filing costs in those jurisdictions that charge fees for each class of goods and services in the application.

Secondary or ancillary goods and services may flow from the primary wearable product. For example, FITBIT is used in association with wearable activity trackers as well as software applications for tracking health-related information. As such, a further Canadian registration for FITBIT includes “computer software for managing information regarding tracking, compliance and motivation with a health and fitness programme”. There may also be secondary services that flow from the data that is gathered from individuals using the product.

Because these goods cross into multiple product categories, clearance searches must be conducted in a broader manner to cover all aspects of the wearable product. Clearance searches require careful consideration of any marks directed to similar consumer goods, as well as any marks directed to similar electronic technology.

Early Action

It is important to seek out trade mark protection early, since other parties may anticipate the type of marks that will be used for wearable technology. For example, Apple experienced difficulty in securing trade mark protection for iWATCH because it was already registered in several countries by other individuals and companies. Of course, brand owners may also wish to delay registrations where the launch of a new product is a closely guarded secret (as is typical for Apple).

Traditionally, many companies file their trade mark applications well in advance of their products entering the consumer market, generally while products are still in their development phase. For innovative wearable technology, the proper terms or categories for classification of the goods and services may not yet exist. Accordingly, one should ensure that products are described by their traditional designation in addition to describing the functionality of the electronic device. Where a brand owner is unsure of the products or product lines that will be launched, it may consider listing all possible products and functionalities on a proposed use basis, and then refine the description of goods and/or services at a later date.

It is important to seek out trade mark protection early, since other parties may anticipate the type of marks that will be used for wearable technology.

For innovative product types, there is a need to develop neutral names for new classes of products to avoid an innovator company’s trade mark becoming generic. Trade mark offices are attempting to address the need to provide consistent terminology for new products.

In the current version of the Nice international classification of goods and services, class 9 for goods includes the terms “smartwatches”, “smartglasses” and “wearable activity trackers”. WIPO continues to accept proposals for changes to the Nice classification from various national trade mark offices, but the expansion and amendment typically lags behind products’ entry into the marketplace. Brand owners may therefore seek to proactively lobby for such changes. They should also complain about use of their trade marks in trade to describe product classes - with the aim of minimising the risk of invalidation on the basis of genericisation as a consequence of the brand owner’s inactivity.

Relationships

Wearable goods are frequently marketed and co-branded between two companies, especially a fashion brand and a technology brand. This is the case, for example, in Fitbit’s collaboration with Tory Burch, while Fossil watches have Google’s Android operating system, and Hermès supplies straps for the Apple Watch. Accordingly, attention should be given to these business relationships and the possible impact on trade mark rights and registrations.

It may also be possible to protect wearable products through non-traditional trade marks, such as colour, sound and distinguishing guise (eg trade dress in the US) for non-functional design features. In conjunction with trade mark protection, companies with wearable products should also consider other forms of IP protection, such as design rights; industrial designs and design patents for the shape and design of the products; and patents (and utility patents in the US) for the underlying technology. For example, Apple has several registered Canadian industrial designs for the graphical user interfaces displayed on the Apple Watch, and a US utility patent was recently issued to Google for its electronic display device worn on the head of a user.

Hot market

Wearables are a hot and fast-growing market. This year, Fitbit sold more than one million “Blaze” fitness trackers in the first month after launch. This is attracting new market entrants bringing rival products and, with them, increasing risks of infringement. Brand owners should ensure they continually monitor the marketplace for any activity infringing their marks or other IP.

Wearables are a fast-growing market. This is attracting new market entrants bringing rival products and, with them, increasing risks of infringement. Brand owners should continually monitor the marketplace for any infringing activit y

Beyond IP

Looking beyond trade marks and other IP, brand owners should be aware of some of the reputational and liability risks of making their products “smart”.

Wearable technology devices typically collect user data that is either personal in itself (such as height, weight, fitness levels, sleep hours, friends, credit card details, etc) or that could be sensitive when combined with other information (such as GPS coordinates when combined with who or what is located there). The General Data Protection Regulation, coming into force across the EU from May 2018, has increased the requirements for obtaining informed consent for data collection and set the fines for failure to protect personal data at the greater value of €20m or four per cent of worldwide annual turnover. Even if the financial liability can be passed on to a technology partner, any brand damage from data loss or hacking may be unavoidable.

Getting technology right is difficult, and companies such as Apple have created high consumer expectations. Brand owners should take care over their choice of technology partners to ensure that “user experience” - including app design, compatibility, battery life, managing software updates, the obsolescence cycle, etc - is appropriate to the brand.

As more products interconnect and share data, brand owners need to be wary of services that “creep out” their customers. For example, some smartwatches and smartphones can be configured to listen continuously for search commands. Last year, concerns over smart TVs doing the same led to unflattering comparisons in the media with George Orwell’s Nineteen Eighty-Four.

Clearly, there is much for brand owners to consider, and they may have little choice over whether to enter the market. First, consumer demand for wearables is growing: the (estimated) 12 million Apple Watches sold by a company with no previous presence in the watch market must have got the attention of the timepiece industry. Second, good wearable devices become embedded in a customer’s lifestyle and may offer opportunities for daily interaction between a brand owner and its customers. This prize, therefore, is hopefully worth overcoming the attendant challenges.

This article was first published in the September 2016 issue of the ITMA Review, the journal of the Institute of Trade Mark Attorneys (ITMA). For more information on ITMA, please visit itma.org.uk