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/ Let us know if you would like to add a name to the distribution list for this or other departmental updates; if your contact details have changed; or if you would prefer to receive our update by post/email. Contact our Marketing Department at [email protected] BATESWEL_24877_Employment Summer 2012 20/03/2013 16:11 Page 3 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. Intellectual Property Law Update | Spring 2013 3 BATESWEL_24877_Employment Summer 2012 20/03/2013 16:11 Page 4 Features 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. 4 Intellectual Property Law Update | Spring 2013 BATESWEL_24877_Employment Summer 2012 20/03/2013 16:11 Page 5 Features Rights in your brand Protecting your name against deliberate or accidental copying by others may be simpler and cheaper than you think.