Intellectual Property Law Update BATESWEL 24877 Employment Summer 2012 20/03/2013 16:11 Page 2

BATESWEL_24877_Employment Summer 2012 20/03/2013 16:11 Page 1

Spring 2013 Intellectual Property Law Update BATESWEL_24877_Employment Summer 2012 20/03/2013 16:11 Page 2

Introduction

In the 1990s English trade marks law changed completely. Previously it Contents concerned only manufactured goods; it was now extended to apply to all IP in the media 3 manner of other commercial and non-commercial services and activities. These Rights in your brand 5 included the day-to-day endeavours of many charities, such as care and Agile software development 7 advisory services, and fundraising and campaigning. It became easier for these Are bands brands? 8 organisations to protect and to build their brands in the same way as the Company Names Tribunal 10 European trade marks 11 for-profit sector. Orphan Copyright Works 12 Law of confidence 13 BWB was at the vanguard of helping charities use the trade mark registration ‘Social enterprise’ PR victory 15 system to protect their interests, establishing precedents and practices in the field that endure today. As the twentieth anniversary of the changes that allowed this approaches, BWB has a thriving trade marks practice, managing more than 1,000 registered trade marks and pending applications. Our work concentrates on third-sector organisations such as the RNIB, Sightsavers, Friends of the Earth, the Booker Prize and the International Paralympic Committee, but we also help businesses, many of which have a particular interest in the arts and media sectors.

As well as our dedicated trade marks team, we have expertise in other areas of Intellectual Property – both online and offline – covering copyright, designs, database rights and IP licensing.

This edition of our newsletter concentrates on the protection of trade marks and trade names, and includes what we hope is a really useful guide to the basics of enforcing rights in your name or brand. It also features news of developments in the fields of copyright and confidential information. We hope you enjoy it.

Comments Please contact us with any comments or suggestions.

Updates from our other departments are available at: www.bwbllp.com/knowledge/updates/

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Features

Intellectual property in the media Trade mark and copyright spats frequently make the news. Liz Goulder tells us about a few of the stories that have caught the public’s imagination recently.

Seeing purple infringement. He alleges that her recent UK number 1 ‘Domino’ is an obvious rip off of It has been reported that the Meaningful his 2008 track ‘Bright Red Chords’. Chocolate Company designed its chocolate christmas tree decorations for 2012 in We’ve heard both songs and can confirm ‘advent purple’. Cadbury threatened it with that the opening chimes of each are Liz Goulder legal action over infringement of its trade strikingly similar. However, there are only Solicitor mark rights in the colour purple. The so many ways a few basic guitar chords T: 020 7551 7766 [email protected] Meaningful Chocolate Company has can be strung together, and you’d expect expressed its disappointment and disputes there to be some coincidental likenesses Liz trained with BWB, and joined the Dispute Cadbury’s assertion that consumers would after 60 or so years of pop music. Crucially, Resolution team upon qualifying in September 2010. Her work involves intellectual property be confused between the products, but its one of the requirements for successful disputes including trade marks. advent decorations will now be sold in copyright action is actual copying – festive red instead. accidental similarity does not give rise to a claim (although, confusingly, ‘subconscious Cadbury successfully registered the colour copying’ can do). purple (pantone 2685C) as a trade mark in October 2004 in class 30 (chocolate). The We think Mr Loomis’s chances of getting registration was granted on the basis that, the £100,000 he has asked for are slim. as far as chocolate products were But we also wonder if Ms J(?) may be concerned, consumers associated the prepared to pay a smaller sum to make the colour purple with Cadbury’s products to matter go away… the exclusion of others’. Find out more It may seem surprising that Cadbury is able If you would like to form your own to ‘trade mark’ (and hence monopolise) a opinion on the dispute please visit: colour. In fact, almost anything can be www.youtube.com/watch?v=eE- registered as a trade mark – colours, sVIr_9kw shapes, melodies and descriptive words – if www.youtube.com/watch?v=UJtB55 you can show that people recognise it as MaoD0 your ‘brand’ and that its misuse will confuse others. Apple ‘out-smarts’ Samsung Our trade marks department can advise and assist further with registration Apple has won its second legal victory in a applications and resolving alleged month against its largest smartphone infringement disputes. competitor. The US courts have recently ruled that Apple has not violated Striking the wrong chord Samsung’s patents and registered designs.

In what will strike copyright lawyers as a In an earlier federal decision, Samsung had recurring scenario, an unknown singer- been ordered to pay Apple more than songwriter called Will Loomis is suing $1 billion in damages for infringing six of singing superstar Jessie J for copyright the firm’s patents and design rights. This is one of the biggest penalties for patent violations in legal history.

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The jury concluded that Samsung had 50 Shades of sense of humour failure violated several of Apple’s patents, such as ‘tap to zoom functionality’ – an Apple Entrepreneur Shed Simove probably feature that (as you can probably guess) thought she was being funny selling allows you to zoom in on a particular part notebooks under the title ‘50 Shades of of the display. Samsung was also found to Grey’. The joke was that the pads consisted have copied the overall look of the iPhone, of 100 blank pages of varying achromatic including the rounded corners of icons, hues. which are registered designs. BGIH’s attack appears to have been a Random House took a dim view of this, complete try-on. Owing to the prominence The battle between the two giants is far and threatened Ms Simove with trade mark of Barr’s brand on the Russian market, from over and nor is Apple the undisputed infringement action. Ms Simove expressed there was little prospect of a non-use attack winner. In separate proceedings in Tokyo, a outrage: ‘Frankly, I feel violated. Random being successful, unless (as can happen) Court ruled that Samsung had not infringed House have tried to handcuff me from the attack against Barr’s registered trade Apple’s patent for synching smartphones selling my novelty notebook and gag me mark went unrecognised and undefended. and tablets with media devices. from talking about it.’ It can be difficult for multinational brand holders to keep a good overview of what is The massive stakes in play are a reminder Despite her strong feelings, we think that happening to their rights in every country of that, nowadays, an organisation’s most Random House is technically in the right. the world. BGIH has also attempted similar valuable property is often intellectual Although (arguably) no-one would mistake attacks on other famous brands such as property. Also intriguing is the the novel with the copyist notepad, trade Playboy, Dr Pepper, Orbit and Heineken. straightforward nature of the inventions in mark rights can still be infringed if question – the ‘tap to zoom’ feature someone is looking to get ‘a free ride’ off This sort of speculative assault on trade protected by Apple’s patent is a beautifully the back of someone else’s success. mark owners’ rights is a frightening simple solution, and the clean lines development. Russia is one of those protected by its registered designs are a Trouble burning in Russia countries in which, without a trade mark great example of ‘less is more’. It goes to registration, you have absolutely no right to show that you don’t need to be a technical The Scottish press reports a scrap your name. whizzkid to create – and protect – valuable developing in Russia between the drinks designs and inventions. manufacturer Barr, best-known for the Those with international interests are sickly-sweet orange syrup ‘Irn-Bru’, and a strongly advised to ensure their registered local company looking to muscle in on their protection is as solid as possible, and to territory. make sure that they have reliable local lawyers on the record. BWB works with a Few people know that ‘Irn-Bru’ is one of worldwide network of tried and trusted IP the most popular soft drinks in Russia. lawyers. Local interlopers Business Group Investment Holdings (BGIH) had applied to register the brand as a Russian trade mark, and then sought to cancel Barr’s rights on the grounds that the mark was not in use. A successful application of this strategy (and it appears to have failed, although BGIH has filed an appeal) would see them wresting control of the Irn-Bru brand from Barr.

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Features

Rights in your brand Protecting your name against deliberate or accidental copying by others may be simpler and cheaper than you think.

Many charities do not protect their 2. Take action when it is infringed BWB’s Senior Trade Mark intellectual property rights, particularly Attorney Mathew Healey those in their names and brands. Secondly, you should take action as soon as explains how to protect your Sometimes this is on ideological grounds: a you become aware of any infringement of brand deliberate refusal to see the charity’s name, your rights. Your first step should not be which can be little more than a description court action, but might well be a strongly- of what it does, as the marketing man’s worded lawyer’s letter. Writing a letter is ‘brand’, in the same sense, if not of the cheaper than suing someone, and same scale, as Coca-Cola or Vodafone. depending on the strength of your case, the other party may well give in without a fight. However, this high moral stance, where it means not taking action to protect a If the allegation of infringement is not Mathew Healey Trade Mark Attorney charity’s name against others infringing its sufficient to resolve the matter, you need to T: 020 7551 7637 rights, runs the risk of funding being look at alternatives. Court is one option, but [email protected] diverted, its good name being tarnished, or there are other alternatives that may work Mathew is a trade mark attorney with more – worse – effectively losing the right to its better and are almost certainly cheaper. than 11 years’ experience of assisting clients name altogether. with registration and protection of their Involve the Charity Commission intellectual property rights. A problem for charities looking to enforce rights in their trade marks is expense. The If your opponent is another charity, then the ultimate sanction to take the infringer to Charity Commission may be prepared to court, seeking an injunction to stop use of intervene. Charity law gives the the offending name. But even a commissioner the power to force a charity straightforward action of this kind can cost to change its name in a number of in the five-figure range. situations, including where:

But there are effective ways of taking action • the name of the charity is likely to give far more cheaply – if the trade mark owner the impression that the charity is takes positive early action and is prepared connected in some way with any body of to apply creative solutions. persons or any individual, when it is not so connected; or Before we look at the tactics that are available, there are two basic points that • the name of the charity ‘is the same as, apply to any names or brands you want to or, in the opinion of the Commissioner too protect. like, the name, at the time when the registered name was entered in the 1. Register your name register in respect of the charity, of any other charity’. The first is to protect the name of your organisation, as well as key campaigns and A direction to change its name on the initiatives, by registering them as trade register of charities will not in itself prevent marks. This is your way of cementing your a charity from using that name as a ‘claim’ to that name. A registered trade working name. However, such a direction mark makes it much easier to stop another may provide compelling reasons for a name using a name that’s too close to yours. change. Most importantly, a finding of the

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‘A problem for charities Charity Commission that two names are infringer will recognise that you are willing ‘too like’ each other is likely to assist the and able to enforce your rights, and will looking to enforce rights in holder of the earlier name, should it then back down. their trade marks is expense. bring court action for infringement of its The ultimate sanction is rights. If the other party has resisted up to Can Trading Standards help? this point, this is the sensible time for it to court action… But there are back down. A final alternative to court action is using effective ways of taking Trading Standards to help you enforce your The internet has its own rules action far more cheaply’ rights. Trading Standards will usually only become involved where a criminal act has The laws governing trade marks extend to taken place. Frustratingly, whilst selling goods the internet – material published on a under another party’s registered trade mark is website can infringe a trade mark owner’s a criminal offence, providing services, or rights in the same way as printed fundraising, are not necessarily so. publications, television advertising etc. Also, there are a number of internet-specific Nonetheless, in more clear-cut cases of rules that can be used to your advantage. infringement, and particularly where there is an element of dishonesty involved, it is One option may be to request the domain often possible to find a criminal ‘peg’ on name registrar cancel the other party’s which to hang the infringing acts. Also bear domain name, on the basis that it conflicts in mind that less scrupulous types may be with your trade mark. However this is not unfazed by a threat of civil action, but are always straightforward – you need to more likely to balk at the prospect of demonstrate that the domain name was criminal prosecution. registered in ‘bad faith’. This is difficult to prove except in the most egregious cases – The two ‘golden rules’ of involving Trading Find out more e.g. someone setting up a ‘scam’ website to Standards people are: If you have any concerns about your cause deliberate confusion with your trade mark or any issues to do with organisation. (i) give them as much information as you infringing your name or reputation, possibly can (including things they have not please contact one of our dispute A more general-purpose option may be to asked for, if you think they are relevant); resolution experts for a free initial write to the other party’s internet service and consultation: provider (ISP) pointing out that they are hosting material that infringes your trade (ii) in the nicest possible way, keep on at Mathew Healey mark rights, and insisting that they remove them. They are busy people and will have Trade Mark Attorney the relevant pages. While mere hosting of other fish to fry – whilst you need to keep +44 (0)20 7551 7835 web pages may not make the ISP liable for them on your side, you need to make sure [email protected] infringing your rights, many ISPs are not that your case is being taken seriously.

Mindy Jhittay prepared to take the risk. Conclusion Solicitor +44 (0)20 7551 7853 If the ISP is prepared to remove the [email protected] website, you will have achieved a The above should make clear that enforcing significant success by writing a single, rights in your brands/names/trade marks – Robert Oakley uncomplicated, letter. One problem is that whatever you want to call them – is Partner the infringer can simply move its website to possible in practice as well as in theory. +44 (0)20 7551 7792 another ISP (maybe one overseas that is [email protected] less fussy about the material it hosts). However, this tends not to happen – the

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Features

Software development: how Agile are you? ‘Agile’ is increasingly popular as an approach to software development projects, but can leave clients less protected if the outcome is unsatisfactory.

We are finding that an increasing number ‘the build’ to take place, with payments to Sean Egan, head of BWB’s of client software development projects are be made against the specific agreed Arts and Media practice, being labelled as ‘Agile’ projects. From our milestones. explains how software point of view the term is not always used development contracts are clearly – and from a purchaser’s point of Flexibility is introduced by change control view this can lead to misunderstandings procedures under which the client can moving with the times about the services being delivered. The key request a modification to the specification, issue is to ensure that as a purchaser you but otherwise the project progresses in a have sufficient protections. linear fashion.

The term ‘Agile Software Development’ has The aim of Agile developments is for an grown out of a reaction against the rather atmosphere of trust to develop between the mechanical approach to software customer and the provider, under which the Sean Egan Partner development that had previously been provider is able to more flexibly respond to T: 020 7551 7796 industry standard. The term is intended to the customer’s requirements without the [email protected] convey not only a practical approach to need for a separate design phase. The projects, but also a relationship between attraction of this is a cost saving, and a Sean is recognised by the legal directories as a leading lawyer in the arts, theatre, film and the customer and the provider. The less adversarial working relationship that is television, and is noted for his in-depth objective of ‘Agile’ projects is to work particularly suited to smaller software industry knowledge. collaboratively, so that the provider can developers, where the key individuals have respond flexibly to developments in the a more hands-on role in delivering the project, without the project being work. reconfigured or disrupted. The Agile Manifesto set out a development The danger of the Agile approach is that, methodology and established the article where there are disputes between the framework for Agile methods. For clients, customer and the developer as to whether this approach is particularly good where it the developer has delivered what was is unclear what the solution is likely to be promised, the customer is less protected (or, as it is often expressed, when there are and is more reliant on the relationship many ‘unknown unknowns’). The approach between the parties. Before taking on this is also particularly suitable for smaller sort of project, the client should satisfy Tips for Agile projects projects. themselves that they have sufficient in- house expertise to specify their • Choose your project well and If you are planning a project, the key is to requirements, and to take part in a more establish the potential savings of this analyse it to identify the extent to which hands-on development process. approach. the work can be satisfactorily set out in a Communication is key and the client should • Assess your in-house expertise and functional specification, which can then have an appointed individual to liaise with whether there is the management provide milestones for payments. If the the provider. time necessary to conclude the specification cannot be determined from project successfully. the outset, then the nature of the contract The advantages of Agile solutions are • Assess the parameters of the project is for the design and build, and there are a enhanced when looking at cloud-based even if the specifics of delivery are number of ways of protecting the customer. projects. They enable developers to deliver unknown, it may be that an Agile The traditional arrangement is for there to sophisticated solutions at an ever-reducing approach is not beneficial. be a design phase, usually with a capped cost. But as the complexity of the solutions • Ensure that you build in reasonable cost, under which a detailed specification develop (in the sense of depending on third protection and, in particular, capped and costing is agreed. The next step is for parties), the potential for disputes and costs so as to limit expenditure. the second phase to be executed, i.e. for problems increases.

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Are bands brands? There are few areas of activity to which the law of trade marks and trade names do not apply.

Mathew Healey looks at some When Manchester band The Stone Roses One option is for the band to operate on a surprising consequences for split acrimoniously in 1996, the issue of ‘co-operative’ basis. The members agree who owned the name came up. Guitarist that everyone owns the band’s assets, musical artists, and the best John Squire’s caustic suggestion – ‘You can including its name, jointly, but they all also ways for them to avoid have the vowels and I’ll have the possess an equal share of its liabilities. conflicts consonants’ – didn’t advance matters. They Then, if someone leaves the band, they weren’t the only artists to come to blows may do so without taking any of the over ownership of a name. liabilities with them, but as a trade off, nor do they get to keep any claim to the band’s The trials and tribulations of the Sugababes name, its recordings et cetera. are another example. In 1998, the girl band was formed of three members – There is evidence from the Intellectual Mathew Healey Siobhan Donaghy, Mutya Buena and Keisha Property Office that this model can work Trade Mark Attorney Buchanan. Over the next 12 years the well. In a recent case, Robert Godfrey, T: 020 7551 7637 band’s membership changed so much that bandleader of 1970s’ prog-rock group ‘The [email protected] none of the resulting line up – Amelle Enid’, was able to show that he owned Mathew’s specialities include assisting public Berrabah, Jade Ewen and Heidi Range – exclusive rights in the band’s name, and and third-sector organisations; the registration were featured in the original band. could therefore block record company and management of large international trade owner and erstwhile business partner, mark portfolios; and the effective resolution of trade mark disputes without resorting to court In 2009 Ms Buena – one of the original Gerald Palmer, from seizing control of the action. band members – sought to register the name by registering it as a trade mark. band’s name as a trade mark, and a Although Godfrey was the only remaining drawn-out dispute ensued. Who were the band member, he was able to show that, ‘true’ Sugababes? The EU trade marks because a cooperative model had been office was faced with an almost followed, he owned all rights to the name. unanswerable question (anyone who studied philosophy at school may recall the By contrast, sometimes a record company tale of Theseus’ Ship – ends up with ‘control’ of the artist’s name. http://en.wikipedia.org/wiki/Ship_of_Theseu This is most common where manufactured s) and responded by fudging the issue, bands are concerned: such as where a awarding the name to Ms Buena for some mogul like Simon Cowell identifies ‘talent’, activities and to the current lineup for and gives the band members an image, others. songs to sing and a name. It’s hardly surprising that the young naïfs taken under In both situations, problems could have their patron’s benevolent wing do not think been avoided if the band members, and to assert their trade mark rights. their record companies, had thought a bit more about who ‘owned’ the names before But a sweep of the Trade Marks Register problems arose, and put a written shows that things don’t always pan out like agreement into place. Of course this is this. Teen pop favourites JLS and One hardly a ‘rock and roll’ thing to do, but then Direction both have trade marks registered neither is having to rock up at the in the names of their own companies. Yet Intellectual Property Office for a hearing if talent show winners Little Mix and Girls and when everything goes awry. Aloud have had their names trade marked by Simon Cowell’s company Simco, and ITV, respectively.

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We think these last two may have copped a UK duo was probably surprised when they BWB’s trade mark team’s top tips bad deal. Obviously a lot turns on the were threatened with legal action – they for music artists contractual arrangements between the became ‘The Chemical Brothers’. parties, which we can’t see. Nonetheless, These simple steps should help artists and not owning the name you use can have all Possibly even worse, the band ‘Snow Patrol’ their advisors avoid the various pitfalls in sorts of bad repercussions. Most changed their name from ‘Shrug’ to ‘Polar this area. It’s worth noting that these tips significantly, it seems that the band is Bears’ having discovered a possible conflict represent good basic advice for any group, effectively tied into working with the owner with a US band with the former name. business or other organisation setting out of the trade mark registrations forever. Of They then had to change again following a under a new name. course, they may be able to get out of their legal threat from the (relatively well-known) contracts, but if they want to break away, US band ‘Polar Bears’. To err once is • Before starting to operate under your they may need to do so under a different human… preferred name, undertake checks to name. Just as with any other business, this ensure that it does not conflict with would mean starting almost from scratch in Challenges need not come from other anyone else’s rights. At the very least, terms of building up recognition and bands. For example, X-Factor contenders you should conduct basic internet goodwill in a new ‘brand’. ‘Rhythmix’ were forced to change their checks. You should also seriously name to ‘Little Mix’ following a challenge consider conducting trade mark This is more than a theoretical risk. Those from a Brighton-based music charity searches. A rudimentary UK search can with longer memories will recall the artist ‘Rhythmix’, which had registered its name be carried out at www.ipo.gov.uk – Prince ditching his name in the early as a trade mark. although you should consider contacting Nineties, and performing for a number of a lawyer if you wish to carry out years with the substitute ‘name’ of an One of the unfortunate aspects of this kind comprehensive checks. Remember also unpronounceable symbol. This was of challenge – and indeed most brand that it is not only identical matches you precisely because his record label, Sony, name disputes generally – is that problems are looking for – you will infringe registered ‘Prince’ as a US trade mark, and are only noticed once the party at fault has another person’s rights if your name is sought to stop him using the name when built up some degree of recognition and confusingly similar to theirs. the parties fell out. reputation. It is one thing for an artist or artists at the very beginning of their • Apply to register your chosen name as a New bands also need to think about adventure to reconsider what they want to trade mark. This will help cement your whether picking a new name is likely to call themselves; it’s a far bigger deal – and claim to it, and will also assist should step on someone else’s toes. The average far more damaging – for established anyone else start using the same or a ‘garage band’ is hardly likely to commission performers to have to manage a name similar name without your permission. a professional clearance search, but change. common sense dictates that they should at • When entering into agreements with least verify whether anyone else is using record labels and other business the exact same name. partners, make sure the contract you are signing properly protects your In fact, looking at things from the interest in your name. perspective of a trade marks lawyer, there have been some extraordinary mistakes in this area. Those of the writer’s generation will remember a pair of up-and-coming Mancunian DJs called ‘The Dust Brothers’, named by way of ‘homage’ after LA-based music producers of the same name. The

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Features

News from the Company Names Tribunal Another approach to challenging deliberate attempts to ‘piggy back’ on your brand may be to bring a complaint to the Company Names Tribunal.

Mindy Jhittay looks at the If another party imitates your name or ‘International Ministerial Council of Great provisions of the Companies brand, then bringing a claim for trade mark Britain’ and ‘IMCGB’ since 1968. The Act 2006, which can provide infringement, or passing off (the equivalent Tribunal agreed that the Charity had protection to charities as well action for unregistered names), may not be acquired a protectable goodwill in those your only recourse. names. as registered companies

The Company Names Tribunal deals with The Charity objected to what it considered complaints made under section 69 of the to be the opportunistic registration of the Companies Act 2006. This allows you to company name ‘IMCGB’ in bad faith, i.e. in object to a company’s registered name on a manner that was dishonest and fell short the basis either that it is the same as your of the standards of acceptable commercial name, or that it is sufficiently similar to behaviour observed by reasonable and Mindy Jhittay your name that its use would be likely to experienced individuals in that field. Solicitor mislead, by suggesting a connection T: 020 7551 7853 [email protected] between you and the company. The Tribunal agreed that the new company had acted in bad faith. The controlling In addition to her general litigation practice, You do not have to be a registered mind behind the company was a trustee Mindy is a member of the firm’s Intellectual Property Group. She advises a variety of company yourself to make a complaint, but who was aware that the name IMCGB had clients including companies (directors and being able to show that you have a goodwill been used by the Charity for many years. shareholders), regulatory bodies, SMEs, or reputation in your name is essential. charities/not for profit organisations, trustees and private individuals. In addition, the Tribunal found that since You also need to show that the company identical names were being used in relation name in question was acquired in bad to identical services, if the company were faith, e.g. to extract money from you in to continue to operate under the name exchange for ownership of the name, or to IMCGB, the impact on the Charity would block you from registering it for other be real and significant. For example, tactical purposes. This is a very specific donations may be diverted away from the hurdle to overcome and means that this Charity. remedy will not be useful in every case. ‘Where there is evidence of IMCGB was ordered to change its registered opportunism and/or bad If you are successful, the Tribunal will order name, within one month of the decision, to faith in the registration of a the company to change its name to one that would not cause offence. something that does not conflict with yours. company name, a complaint Where there is evidence of opportunism to the Company Names A recent decision in the case of and/or bad faith in the registration of a International Ministerial Council of Great company name, a complaint to the Tribunal can be a useful Britain v IMCGB illuminated the value of Company Names Tribunal can be a useful weapon in the armoury of the provisions to the charity as well as the weapon in the armoury of name and brand name and brand protection’ commercial sector. protection. However, whilst it may succeed in preventing a company from registering a The company name IMCGB was registered name, it will not prevent the company from in October 2009 by a former trustee of the continuing to trade under that name. To International Ministerial Council of Great achieve that, it would be necessary to Britain (‘the Charity’). The Charity objected establish ‘passing off’ or ‘trade mark to this name on the basis that it and its infringement’. predecessors had used the names

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Recent European trade mark developments Much of UK trade mark law is decided at EU level. Recent decisions are of interest to UK organisations in general – and to charities in particular. The first of the key EU decisions is the now be the case. Even if fundraising could BWB’s head of trade marks European Court of Justice’s decision in the be understood to fall within ‘financial Lawrence Simanowitz reports IP Translator case. This concerns the scope affairs’ or ‘monetary affairs’ it is arguable on a couple of interesting of trade mark registrations. When an that these terms are too broad and vague findings of the EU courts application is made to register a trade to be permissible. mark, the applicant must indicate the goods and services for which the trade This looks like good news. In the past, mark will be used. These goods and businesses with interests in the financial services fall into different ‘classes’. services market, or estate agency, for example, have often, almost by accident, Each of the classes has a ‘Class Heading’, been deemed to have trade mark rights which summarises the sort of goods and/or that cover ‘fundraising’. It looks like such Lawrence Simanowitz Partner, Head of Trade Marks services that fall into that particular class. incidental coverage will happen less often T: 020 7551 7796 Previously, some European trade mark in the future. This should make it easier for [email protected] offices – particularly OHIM, which registers fundraising charities to clear and register EU-wide trade marks – have treated an new brands. Lawrence has 12 years of specialist experience in advising on intellectual property application that lists the class heading as if (including copyright and content, trade marks it covers all goods/services in that class. The second case is the European Advocate and general branding issues), software and This practice leads to some surprising General’s a decision in the case of Onel v websites, and also on information law (data protection, freedom of information, consequences. For example, the class 15 Omel. This decision deals with the use that confidentiality and privacy). heading reads ‘musical instruments’, but must be made of a brand in order to the class itself also includes music stands. maintain the corresponding trade mark Therefore, an EU-wide registration registration. specifying ‘musical instruments’ has also This is again good news for organisations of been deemed to cover music stands, even Trade mark law features a ‘Use It or Lose all kinds that operate on a UK-wide basis. though they are not specifically mentioned. It’ provision – if a trade mark is not in use within five years of it being registered, third It is perhaps also worth emphasising that, even if use of a particular mark is not The European Courts have now indicated parties can apply to cancel it. There has considered sufficient to maintain EU-wide that this practice is incorrect – that trade been some debate over whether use in a registration, the trade mark holder will mark registrations should only ‘cover what single country of the EU is sufficient to always be given the opportunity to collapse they say’. Therefore a new application for maintain an EU-wide registration. the EU registration down into a national ‘musical instruments’ may not cover music (e.g. UK-wide) one. stands. In addition, where the language The decision is not black and white in used in the class headings is deemed too character, but certainly suggests that use in vague to determine exactly what is covered, one country may be sufficient. The Courts then it may not be permissible to use the will simply look at whether the use that headings. has taken place is adequate to maintain a market ‘in the Community’. In accordance This decision may be significant for with the European project, national borders charities. The class heading for Class 36 – will be ignored. There are no absolute into which charitable fundraising activities guarantees, but we consider a reasonable fall – reads ‘insurance; financial affairs; level of activity in the UK – which contains monetary affairs; real estate affairs’. There around 12% of the EU’s population – is no specific mention of fundraising. In the should qualify as use ‘within the Community’. past an application that listed this wording By contrast, use merely within a small state has been deemed to encompass such as Luxembourg may not qualify. fundraising. However, this may no longer

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Features

Orphan Copyright Works In our last edition, we covered the Hargreaves Report, which foresaw an overhaul of various aspects of Copyright Law, including a review of the provisions for ‘Orphan Works’.

Sean Egan gives an update in The European Council adopted the Orphan The main benefit will be for museums and light of developments on the Works Directive (‘the Directive’) on 4 other institutions with substantial European level October 2012. Orphan Works are works photographic archives that want to make where copyright exists, but the right holder items available legitimately. The Directive cannot be identified or traced. This causes in principle allows this if the use is non- a problem for those who want to use the commercial. However, any sales of material works in question, but are unable to obtain or other revenue-generating activities, such the necessary permission from the right as raising of sponsorship, will need to be holder. There has been much debate about looked at more carefully. providing new legislation in this area, in the Sean Egan wake of the recent Hargreaves Report on In truth, the Directive is much less than Partner T: 020 7551 7796 the intellectual property system. many organisations wanted, but is still [email protected] considered an improvement on the The Directive focuses on allowing public previous, unsatisfactory, position. Sean regularly contributes articles to a variety of publications on film-and television-related bodies (such as libraries, archives, topics and delivers seminars on legal and universities, museums, cultural institutions business issues for filmmakers, including and public service broadcasters) to use crowdfunding. Find out more Orphan Works in their collections for non- commercial purposes. So (for example) if a You can download a copy of Sean’s museum holds materials where not all the previous article on the Hargreaves copyright owners can be identified, it is not report on our website: prevented from putting images of those www.bwbllp.com/file/opinion-20the- materials on its website, or digitising those 20very-20slow-20dawning-20of-20a- materials for research and other similar 20new-20era-20-20sean-20egan-pdf purposes.

Directory of Social Change – 22nd Annual Charity Law Conference Thursday 16 May 2013 09:30-16:50

Charity law made simple – an unmissable event featuring About DSC 12 highly practical sessions covering the latest legal Charity Law is held in partnership with The Directory of Social Change (DSC), an independent charity with a updates and key information that all charities should know. vision of an independent voluntary sector at the heart of social change.

Join Mathew Healey and the experienced team from BWB DSC is the best-selling provider of publications and training in the voluntary sector. for all the recent key developments for charities. Mathew With an ability to challenge and create debate around will be delivering workshop session: many issues in the sector, DSC’s opinion is regularly sought after and featured in the charity sector, national and broadcast media. Your Name and Brand – Steps to take in 2013 For more information and to book, visit: Bring your name and brand protection up to date for the www.dsc.org.uk/cl Tel: 08450 777707 email: [email protected] digital world.

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Features

Protecting business assets using the Law of Confidence The Law of Confidence is an area of law that is important for any organisation with valuable ideas or information.

Just as a shop cannot trade without its domain, for example where you have Mindy Jhittay looks at the stock, nor can any business or charity created a list of your customers? The law importance of claiming rights operate without access to its customers, says that in order to obtain protection, to confidential information supporters and donors. Its success, and something new must have been brought indeed survival, is intrinsically linked to the into being by the skill and ingenuity of the health of its assets, both tangible and human mind. Whether the process of intangible. The most important of these selection and compilation has been assets can include confidential information sufficient to confer additional value is a about its services or operations, including question of fact in every case. innovative business plans and databases containing its customer or donor lists. 2. Circumstances of disclosure Mindy Jhittay Solicitor T: 020 7551 7853 There are a number of different ways in The second part of the test for [email protected] which the law provides protection for these confidentiality is ‘disclosure in Mindy’s work includes a wide range of key assets. These include the law of circumstances importing an obligation of commercial contentious matters including confidential information, as well as confidence’. If the circumstances of intellectual property disputes, trade marks, intellectual property rights such as disclosure are controlled then information domain names, copyright infringement and copyright, database rights, trade marks and will not lose its confidential character. passing off, contractual and tortious disputes, and Companies Act/shareholder and patents. It is possible, and indeed However, if it is disclosed too widely, it will partnership disputes. advisable, to claim these rights in parallel lose its confidential character and the because even where one does not apply, accompanying protection. others may. The second part of the test for What is confidential information? confidentiality is ‘disclosure in circumstances importing an obligation of The law of confidential information is the confidence’. If the circumstances of main form of protection for commercially disclosure are controlled then information sensitive material – including lists of will not lose its confidential character. customers, donors and supporters, graphic However, if it is disclosed too widely, it will plans and drawings, business plans, lose its confidential character and the computer programmes, and financial and accompanying protection. statistical information. It is preferable to impose a non-disclosure In order to be protected, the data must be obligation under contract, because this classed as ‘confidential’. This means removes any doubt as to whether there has passing a two-stage test. been ‘disclosure in circumstances importing an obligation of confidence’. 1. Quality of confidence The obligation may also be implicit because It must have the ‘necessary quality of of the special relationship between the confidence’. This means it ‘must not be parties: for example every employee is something which is public property and under a duty to keep his or her employer’s public knowledge’. A good example would secrets. The Court will consider whether ‘a be a secret formula like the Coca-Cola reasonable man standing in the shoes of recipe. What happens where you want to the recipient of the information would have protect something that could be pieced realised that upon reasonable grounds the together from material in the public information was being given to him in confidence’. Intellectual Property Law Update | Spring 2013 13 BATESWEL_24877_Employment Summer 2012 20/03/2013 16:11 Page 14

Features

Let’s say, for example, that you have a phones, using specialist software designed was being disclosed for a limited, security- novel idea for fundraising and you have by the Claimant company. The Claimant related purpose. Use of the information approached prospective funders. If you talk shared that data with the Defendants as outside of that purpose, namely online about the relevant information as if it is part of a counter-terrorism investigation, publication, constituted a breach of the public knowledge and do not expressly but the Defendants then posted it on a Claimant’s confidence. state that it is confidential, then there may website without the Claimant’s consent. be doubt as to whether the circumstances The Claimant issued proceedings for Conclusion imply confidentiality. You should always make infringement of copyright and database it clear that the information you are providing rights and for breach of confidence. Confidential information, in its various is confidential before you disclose it. guises, is a key business asset. Take a The law of copyright gives an author or moment to consider what forms of Management of confidential information creator an exclusive right to reproduce their confidential information exist in your original works. This can include the organisation, and the ways in which you It may be helpful to distribute to your structure of a database. However, the Court could (and should) protect it. employees and volunteers a policy on found that there was no copyright in the confidential information, which deals with database content because it was not the who may access confidential material and Claimant’s own intellectual creation. The how, and also which external parties are data came from elsewhere, and the manner permitted to receive it. of selection and arrangement of the contents did not give rise to copyright. You should also consider marking sensitive documents and materials as ‘confidential’. Database right can complement copyright While merely labelling something as (where it exists) as it protects the content confidential will not automatically make it of a database, which is ‘a collection of so, your legal and practical position can independent works, data or other materials only be helped by appropriately labelling which are arranged in a systematic or important documents. methodical way, and are individually accessible by electronic or other means.’ In Password protection and encryption of this case, though there was no copyright sensitive documents are another useful protection, the Court found that there was means of communicating that a document sufficient skill, labour and judgment in is confidential, both internally and extracting and compiling the mobile phone externally, as well as providing a data to attract database right protection. mechanism against unwanted disclosure. Further, the information contained in the How does ‘confidential information’ fit database was protected by the law of with other IP rights? confidential information. It had the necessary quality of confidence because it A recent High Court case demonstrated was ‘valuable information collated by the well the interaction between copyright, Claimant through the exercise of skill, database rights and the law of confidential judgment and labour which was not in the information. public domain’. The Court also found that a reasonable person standing in the shoes of The material in question was a database the recipient would have understood that containing data extracted from mobile the information was confidential and that it

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Features

The force of PR in settling IP matters Social Enterprise UK recently had a battle on its hands defending an attempt by a US business to register the term ‘Social Enterprise’ as a trade mark – and thereby potentially control others’ use of the term.

Salesforce.com, a US-based provider of describe their activities. However, this Social Enterprise UK found management software, has cancelled its statement did not quell Social Enterprise’s an alternative, grass roots applications to register the term ‘Social concerns, partly because a promise of this solution to the problem, Enterprise’ as a registered trade mark. Its kind may hold little weight in court. reports Jeremy Coy decision was made following a public campaign led by Social Enterprise UK, the In light of its public campaign and national body for social enterprises, to following a protest letter signed by, preserve the term for ‘the real social amongst others, Professor Muhammad enterprise movement’. Yunus, founder of the Grameen Bank and Nobel Peace Prize Laureate, Salesforce The UK Government Department for Trade agreed to withdraw its applications and and Industry has defined a social enterprise remove references to the term from its Jeremy Coy as ‘a business with primarily social marketing materials. Trainee Solicitor T: 020 7551 7698 objectives whose surpluses are principally [email protected] reinvested for that purpose in the business The decision to withdraw was undoubtedly Jeremy is a trainee solicitor with a keen or in the community, rather than being driven by marketing and reputational interest in intellectual property. driven by the need to maximize profit for concerns, as much if not more than the shareholders and owners.’ legal legitimacy of Salesforce’s applications. However, while Salesforce lost the public Salesforce first filed an application to relations battle, it may also have struggled register ‘Social Enterprise’ as a trade mark on a legal front as well. in the US in December 2011. It applied to extend its cover to the EU, Australia and Salesforce’s application to the Unites States Canada in July 2012. Were Salesforce’s Patent and Trademark Office was rejected applications successful, they would, on the on the grounds that ‘the applied-for mark face of it, empower it either to block others merely describes a feature or purpose of from using the term in the course of trade, applicant’s goods and/or services’. A or to request a licence fee from them to do deadline was fast approaching for an so. appeal on that rejection.

The prospect of Salesforce acquiring rights Other trade mark offices may well have of this kind spurred Social Enterprise UK taken a similar approach, independent of into launching its ‘Not In Our Name’ policy concerns and public outcry. If the campaign to oppose the applications. The various offices deemed the term ‘Social campaign sought to stifle Salesforce’s Enterprise’ to be simply descriptive, attempts to register the mark, to prevent Salesforce’s applications would probably Salesforce from using the ‘TM’ symbol next have been refused. Part of the rationale to the words ‘social enterprise’, and to raise behind this rule is that such terms should Find out more greater awareness and support for social be left free for all parties to use. enterprise generally. You can find detailed information on In this case, however, technical legal the Social Enterprise UK’s ‘Not in our Salesforce initially publicly defended its arguments were not necessary, and were name’ campaign on its website: actions by stating that it did not intend to rendered of secondary importance to www.socialenterprise.org.uk/policy- enforce its registrations against social marketing considerations and public campaigns/campaigns/not-in-our-name enterprises legitimately using the term to pressure.

Intellectual Property Law Update | Spring 2013 15 BATESWEL_24877_Employment Summer 2012 20/03/2013 16:11 Page 16

The information contained in this update is necessarily of a general nature. Professional advice should be sought for specific situations.

Bates Wells & Braithwaite London LLP 2-6 Cannon Street, London EC4M 6YH T: +44 (0) 20 7551 7777 www.bwbllp.com