Tag Archives: Trademaks

Blogging Without Infringing


In my previous post, I looked at the issue of protecting your blog content and identity. This blog briefly looks at some of the issues concerning the inclusion of other people’s materials in your content.

As I mentioned in the last blog, as a blogger you need to look in both directions when it comes to intellectual property (“IP”). In particular, you should ensure that what appears on your blog – be it text, photos, or comments – does not infringe the IP rights of someone else.

Before you launch your blog, with your new blog identity, you should carry out trade mark searches to make sure your name, tagline and logo don’t infringe the registered trade marks of another person or company.

Public domain and copyright

Moreover, make sure the contents of your blog presence don’t infringe someone else’s copyright. Content is not necessarily in the public domain just because it is freely available to access on the Internet. Unless you have created the content yourself – for example, taken that photograph yourself – you cannot assume that it is not protected by copyright. In fact, you should usually assume the opposite.

Most content is protected by copyright and that copyright will only expire 70 years after the death of the author. While it’s true that there are exceptions which permit some use of protected material – fair dealing in the UK or fair use in the United States, these are limited in scope, as you will see below.

Use of stock images

These days, with search engines like Google, there are thousands of images online for bloggers to use in their blogs. However, make sure your use won’t infringe copyright by checking the terms of the sites you’re using. Do the licence terms cover your blog? For example, if you may only make non commercial use, and do have promotions or otherwise make your blog pay, then don’t download from a site that only allows non commercial use as doing so may well amount to unauthorised reproduction contrary to copyright law.

Fair dealing of copyright material

What happens if, as a blogger, I want to use material such as photo from a news event, or if I want to quote from an article, or book or even if I want to parody such material?

Well, assuming that the content you want to use is protected by copyright (which is likely), the general position, at least in the UK, is that the reproduction of a substantial part of a work amounts to copyright infringement. What constitutes a “substantial part” is a complex and large topic, and will differ in each case as everything depends on the particular facts. So, let’s not get bogged down here with the somewhat tricky issue of what amounts to a “substantial part”, and instead look at what the law permits by way of certain limited exceptions which constitute fair dealing in the UK.

Although there are a number of fair dealing exceptions, only a few are likely to be relevant to bloggers. These include (a) criticism and review, parody and quotation, (b) reporting of current events, and, (c) incidental use (which is not strictly fair dealing but convenient to mention here).

If you reproduce part of a copyright work – let’s say an online article – in order to criticise or review that work or another work, your use may qualify as fair dealing under the law in the UK. This same law also protects you when you feature a quotation of a work. However, it’s important to note that you may not freely reproduce a work if you want your use to be “fair”. So, reproducing an entire article on your blog is unlikely to be fair dealing. And the exception applies only to published works. Moreover, you must normally also include a sufficient acknowledgement of the original work.

The law in the UK also provides for fair dealing of third-party copyrighted material for the purpose of reporting of current events. However, photographs are excluded from this exception and so you cannot download and reproduce a photograph for the purpose of news reporting on your blog. While it might seem obvious, the events must be “current” and you must normally include a sufficient acknowledgement.

A blogger may also make incidental use of another’s copyright work without infringing copyright in that work. However, the law in the UK expressly excludes the deliberate inclusion of another’s music or lyrics. For example, you cannot add a song in the background of a video clip and claim that your use was incidental use if the song owner objects: it is not incidental use in this example because the music was included deliberately.

Creative commons licences

The last decade has seen the rise of open access forms of disseminating works known as Creative Commons (or (“CC”) licences. These provide for standard-form licences allowing members of the public to reuse a work in particular ways. Creative commons have sought to develop a suite of licences for many types of works.

The CC licences offers copyright owners a suite or menu of terms for using content. Some of these only allow reuse in an unmodified form. Some only allow reuse with attribution. Others only allow reuse for non-commercial purposes.

While CC licences have become extremely popular in recent years, the most common kind is the “attribution, non-commercial, non-derivative works” licence which only allows the user to reproduce, distribute, or play the work in a non-modified form, only for non-commercial purposes and with attribution of authorship. As a consequence, CC licences are generally better suited to users who do not seek remuneration from copyright.

Using other’s logos or trade marks

A question that often arises is to what extent people may include the brand logos or trade marks of others in blog content. In terms of logos – say, logos of famous companies such as Virgin, Barclays, or Coca Cola – the best advice is: “don’t” because most of brand logos are usually protected by both trade mark registration, and copyright. This means that any reproduction by you on your blog of another’s brand logo is potentially copyright infringement.

In contrast, the mere reference in your blog to a word trade mark  – such as “BARCLAYS BANK” or “GAP” – is unlikely to amount to trade mark infringement. This is because, generally speaking, names do not enjoy copyright protection. Also, trade mark infringement is based on consumer confusion and so a mere reference to BARCLAYS BANK in your blog is not necessarily going to confuse your readers. That said, if your use is such that the relevant consumer might be led to believe that your blog is somehow connected to or supported by Barclays Bank, your use could potentially amount to trade mark infringement. So, when in doubt stick to merely referring to their brand names and avoid using other’s trade marks in such a way as to cause consumer confusion.

So, now that you have some basic insights into the IP laws, happy blogging!

 

Blogs and Intellectual Property Rights – Don’t Just Blog It, Protect It

These days, any of us can be a blogger. All you need is somewhere to post your content, and an interesting angle on life – be it sports, politics, travel, food, music, you name it – you can blog your perspective on it. What’s more, you can attract a worldwide audience of thousands or even millions.

However, as well as a web presence and a flair for writing, you should also develop an awareness of intellectual property (“IP” for short) and its impact on your blogging activities.

IP is essentially about protecting our intellectual creations, and that includes of course our blog entries. But whatever A has protected, B may infringe. So, when we consider blogging and IP, you need to look in both directions: how can you, as a blogger, protect your IP and also, how can you ensure that your blog does not infringe the IP of others? Here today we look at “A”  – what you have protected. In next week’s blog, we look at “B” –  avoiding infringing what someone else has created or protected.

While IP embraces a bundle of different rights, in this blog we are going to briefly look at the two most important rights for bloggers: trade marks and copyright.

It really is amazing that some bloggers enjoy a huge reputation online and yet they have never protected their blog identity by means of trade mark registration. For example, it seems that Turner Barr – about whom I say a little below – of “Around the World in 80 Jobs” fame, did not file a trade mark application until after he had settled what is probably one of the most high-profile IP blog disputes to date. It’s an unfortunate fact of life that many people take IP for granted until some issue crops up, and then they really value their IP and wish they had better protected it at the outset.

Blogs Are Global – Trade Marks Are National

Blogs, being online, are global in nature. They don’t respect national borders which can make trade mark protection, which is generally national in nature, potentially complex. However, it’s advisable to file to register your blog name and blog identity as trade marks at least in your home country. In trade mark law there is something known as the “priority filing system”  which enables you to apply to register your trade mark elsewhere in the world within 6 months of your initial home filing and maintain the original filing date.

Let’s turn to copyright. Copyright arises automatically as soon as your writings, photos, music or other creations are fixed in a recorded form. For example, as soon as you save your blog entry on your computer, it is protected by copyright as a literary work. Similarly, as soon as you take a photograph on your mobile phone, it too can be protected as an artistic work.

As for your blog content – such as your blog entries, photographs, music etc– it’s advisable to always keep a dated record (for example, in your computer files) in case you should ever need to prove that you created the work, and on what date you did so.

It’s a good idea too to use the copyright symbol –  © – alongside your creations, such as your photographs. Use of the © symbol is generally not obligatory but it gives notice to the world that the material is protected by copyright and Courts will often proceed on the assumption that it is protected by copyright.

Although Internet Service Providers (ISPs) are not liable if another person takes your blog material and posts it elsewhere online, you still have options. For example, if the infringer refuses to take-down the lifted material, you may be able to achieve that result by filing a take-down notice with the website provider. Social media companies such as Facebook have well-established take-down procedures by which they will remove infringing content on proof that it infringes your IP rights, including your trade marks and copyright.

 Turner Barr

So what about Turner Barr mentioned earlier? Turner created a highly-successful blog called “Around the World in 80 Jobs” which recounted his experiences as a young millenial in obtaining sometimes strange and wonderful jobs around the globe but which also provided information and advice to young people about gaining employment. In 2013, Swiss employment company Adecco produced their own version of his blog, and they filed trade mark applications in various countries for “Around the World in 80 Jobs”. Happily, all’s well that end’s well. After a sustained campaign on social media, Adecco agreed to drop its version of “Around the World in 80 Jobs”, and withdrew its trade mark filings.

If this pressure from social media hadn’t happened, then it would not have been at all straight-forward for Turner. The right approach is to always file to protect your blog presence as a trade mark before disputes arise such as Turner’s with Adecco.

So, in conclusion, if you blog you have IP. Make sure both to protect your blog IP, and avoid infringing the IP of others. In the next video, we will have a look at some of the issues surrounding use of the material of other people in your blog and how to avoid common mistakes.

 

How We Can Help Secure Your IP

In this information-led economy, intellectual property is key. If you understand IP, and protect your assets strategically, the value of your IP could make your business far more valuable than the multiples of earnings figure might suggest. Consider the huge sums businesses like Instagram have fetched, and you’ll appreciate that owning an IP asset that is a strategic fit for a buyer means your business will be worth more.   

If you ever plan to sell your business or want to attract investment, your intellectual property must be properly secured.

Companies of every size depend on their IP, even if it is not the core part of the business. For example, you will need to protect your business name and web presence even if you’re not aiming to be a major brand and ecommerce business. Doing so helps you avoid risks like discovering that someone else is using the same name and diverting business away from you, or receiving cease and desist letters or take down notices for using third parties’ IP. These actions can cause huge stress and worry to any business unlucky enough to be on the receiving end of them. The business you have built up over the years could be seriously damaged beyond repair by an IP dispute.  

Businesses of every size and age need to protect, enforce and enhance their intellectual property. Whether its registration of trademarks as part of your brand strategy, licensing your copyright in creative works and software, or patenting a key invention before approaching investors, we have the knowledge and expertise to make sure your IP assets are secured.

Azrights has many years of experience in intellectual property. As lawyers with a strong digital bias, we can provide holistic and strategic IP advice, focusing on the bigger picture of your business and responding to the many challenges of the digital age. This way we can help you to harness the power of your intellectual property and add value to your business. We have a range of offerings tailored over the years in response to client needs. Our services are often fixed price offerings where you know in advance exactly what you will receive as part of the deliverables.

We would love to help you secure and protect your business assets and IP. If you’d like to talk to us about taking control of your IP assets so your business can grow, do get in touch for a no obligation confidential discussion.

How To Escape Intellectual Property Disputes and Litigation

How To Escape Intellectual Property Disputes and LitigationThere is a myth that securing IP protection is pointless if you lack the resources to litigate.

You’re actually much more likely to get into a dispute if you don’t register your rights than if you do. Owning registered IP rights can be a very useful bargaining tool if you find yourself threatened by a competitor.

Without such protection you are more vulnerable to successful legal claims against you. Also, third parties could more easily take unfair advantage of your creative efforts. A dispute with a competitor could even result in your having to rebrand.

Don’t let these simplistic myths put you off taking early preventative measures to secure your intellectual property. It is much better to assess your intellectual property position early on, whilst always weighing up the cost/benefit position of your registration strategy.

Unfortunately disputes relating to intellectual property may arise when your business has taken off and your IP has acquired value. Not protecting it could lay yourself wide open.

Take Plentyoffish.com, a well-established online dating site which had been operating for many years when PlentyMoreFish.com set up a competing online business based in the UK. Because Plentyoffish.com hadn’t applied to register its trade mark in the EU, PlentyMoreFish.com was able to secure a trade mark in the UK. Plenty of Fish was powerless to prevent customer confusion. Although PlentyofFish tried to oppose PlentyMoreFish’s UK trade mark application, it was unsuccessful. The UK company freely benefited from the reputation the established business had built up online.

You wouldn’t have the resources of a large company to resolve disputes so don’t expose yourself to litigation by not taking some basic steps to protect your IP.

If you want to ensure that your business is protected, whether by enforcing your rights or defending yourself against a threat of a claim read our blogs, and when you need some guidance get in touch.

Want To Avoid The Need To Rebrand? Find Out The Pitfalls Before You Choose A Name

Picking a name for your business isn’t always straightforward.

An obvious first step for entrepreneurs embarking on a naming project is to pick some names and do a search engine check to assess whether anyone else is using the name. If there’s no sign of a domain with that name, that might mean no one else is using the name, but not necessarily.

Unfortunately, too many business owners fall into the trap of not doing any further checks. They secure the domain name of their choice, and set about commissioning logo designs and business cards.

With almost 130 million .com domains and nearly 11 million .uk domains in use, it’s fair nowadays to assume that most brands have an internet presence – but that’s not always the case. Also, if a brand name is being used as a product name, it may not necessarily show up in the search engines. Alternatively, someone may have registered the name pending creation of a new brand.

The Problem With Not Doing Adequate Checks

The real problems come when an eager business owner doesn’t commission professional searches and just adopts the name, whether or not they file an application for a trademark.

All too often, time and money has to be written off when the inevitable cease and desist letter arrives because someone else has a better claim to the name.

Worse, this can all happen years later. Someone who owns a conflicting trade mark doesn’t have to oppose your application at the time you submit it, and if they simply haven’t registered their trademark you would have a messy passing off dispute on your hands.

(When you see the symbol, it means the business owner is claiming trademark rights in the name. It doesn’t necessarily mean the name is capable of being trademarked, or that they haven’t trademarked it yet. They may simply have not changed the symbol to ® to indicate the mark is registered.)

You might have traded happily for a few years, building up significant goodwill and reputation in your brand name… only to find you have to rebrand. So, it’s a false economy to not.

The Thinking Behind Rebranding

A trademark conflict is only one reason why a business might need to rebrand.

Another common reason is when a business has a name that is too descriptive to qualify for trade mark protection. That’s because a brand name must be sufficiently distinctive to qualify as a trade mark.

Two big rebrands many of us remember were when British Telecom became BT and Norwich Union evolved into Aviva. There are countless other examples, including BNI (formerly Business Network International) and HSBC (formerly, Hong Kong and Shanghai Bank).

A look at Interbrand’s Best Global Brands report demonstrates that every company has to have a distinctive name or – like IBM, HSBC and KFC – use initials that originally began as a descriptive name.

But even opting for initials doesn’t always work.

In 2000 the World Wide Fund for Nature (“WWF” to most Britons) sued the owners of the World Wrestling Federation (“WWF” to most Americans) for trade mark infringement – and won.

In 2002, the men in tights therefore rebranded as “WWE”, the World Wrestling Entertainment – and even had to give up the WWF.com domain.

With the spread of globalisation, another common reason for rebranding is to have a consistent brand internationally.

So, while many Brits still think of them as Opal Fruits, Marathon bars and Jif floor cleaner, their names were changed to the globally-used Starburst, Snickers and Cif.

And sometimes it proves necessary to rebrand to shake off negative associations with a previous name.

Entire towns and cities have rebranded for this reason – Windscale in Cumbria became Sellafield in 1981, while Bombay in India became Mumbai in 1995.

However, rebranding in this way doesn’t always work. Ask Gerald Ratner.

After the CEO of the Ratner jewellery chain was recorded in 1992 describing the jewellery sold in his stores as “total crap” and unfavourably comparing the company’s earrings with a 99p prawn sandwich, £500 million was wiped off the company’s value and 300 of its stores closed after customers gave the Ratner brand the cold shoulder. In 1993 the Ratner Group rebranded as Signet and moved its HQ from the UK to America. Signet, however, died a retail death in Britain and the group’s stores quickly rebranded to the existing H Samuel, Leslie Davis and Ernest Jones brands that remained largely untainted by Mr. Ratner’s words.

Rebranding – whether forced or voluntary – is not without risks, quite part from the costs.

Before you make a change, think about the following:

  1. Consult your customers first

Customers often don’t like name or logo changes. When Gap redesigned its logo in 2010, it was unprepared for extreme backlash its new logo evoked. Twitter exploded and more than 2,000 comments were posted on the company’s Facebook page, mostly demanding the return of the traditional logo. The online outcry led to Gap scrapping its very expensive new logo after less than a week, saying “the company’s customers always come first”.

  1. Check the translation

We live in the age of globalisation. If you sell your goods or services abroad, you need to think about what your brand name means in the native languages in your overseas markets. Some brand names are ill-advised because they have unintentionally unfortunate – and sometimes hilarious – connotations. A name like Pocari Sweat means it’s unlikely that particular Japanese sports drink will ever make much headway in the USA or Britain.

  1. Don’t act in haste

If you have to rebrand because of a trade mark conflict, don’t panic and trip yourself up by acting too quickly. See if you can negotiate a little extra time so you have some breathing space to run down existing stocks and to choose the right new name.

  1. Timing is everything

If you decide to rebrand, the best time to do so is once your business concept is proven and you know your business is viable. It’s not a good idea to continue with a descriptive name beyond that point as doing so will hold your business back in the long run.

Customers and clients identify and choose products and services by name. It’s therefore important to build up recognition in your name as early as possible, otherwise your business may miss out on the potential to increase revenue and all the earlier goodwill generated may be lost.

Conclusion

It’s important to think about choosing a relevant and distinctive brand name in the very early stages of planning a business.

A well-considered name can be an important factor in building a valuable, successful business – and it can save you a lot of money and effort that is needed to rebrand at a later stage.

If you’re thinking about names for your business idea and want expert advice on trade marks and branding, do get in touch.

Cease And Desist Letter? Six Crucial Points About Trade Marks

Cease And Desist Letter? Six Crucial Points About Trade MarksYour product or service’s brand name is how you promote and advertise your business—and it’s what your customers use to recommend you.

Using a strong brand name, your business becomes better known and builds goodwill in its name.

It makes sense, therefore, to own the rights in the name.

You should check online and offline to see if anyone else is obviously using the name. If you don’t make sure that you can use a name, you may risk receiving a cease and desist letter one day.

If your brand name is available and is not purely descriptive—it would be wise to register the name as a trademark.

Here are six key points to help you understand how trademarks operate.

 

1. Similar trademark names are a problem

The main objective of trademarks is to avoid customer confusion about the source or origin of goods and services.

If you choose a brand name that’s already registered, it almost certainly won’t be enough just to make slight adjustments to the name (such as in the spelling or adding an extra word) to avoid the risk of a trademark infringement claim.

Look at the issue from the customer’s point of view. Without the protections of the trademark system, consumers wouldn’t be able to rely on finding products and services they liked in the past and want to buy again. (Or finding products and services they didn’t like and want to steer clear of!).

If competing brand names are too similar, customers can be confused and disappointed if they mistakenly purchase the wrong product or service.

The more distinctive your brand name, the easier and more affordable it will be to take action against anyone who tries to piggyback on your success.

 

2. Company and domain registrations are not enough

Owning a company name or a domain name does not automatically give you a right to own the trademark rights in that name for your business, or prevent others from using a similar name.

Even if you have registered the .com domain name and a limited company, you still need to check that you may use the name for your purposes.

Among other things, this means checking the trademark registers—definitely the UK register, and  the EU register and possibly the registers in other countries where you intend to do business.

You may be able to use the company or domain name you’ve registered provided you don’t use it in competition with an existing business that has trademark rights in the name.

Your rights depend on the business activity you want to use it for. For example, WWF and WWF had a long drawn out battle before the Wrestling Federation conceded defeat against the World Wide Fund and changed its name.

 

3. There is a difference between registered and unregistered trademarks

In the UK, it is not compulsory to register a trademark to use it as a brand name.

And small businesses can often view registration as an expense they can safely defer to a later date.

However, don’t be lulled into a false sense of security: your rights are much more limited if you don’t register your trademark.

Registering your brand as a trademark means you receive notice of, and can object to, a trademark application made by third parties for a similar name. And—as with a domain name—you always run the risk of someone else registering the trademark before you get around to doing so.

If you’ve been using a name for a long time without registering it, you may have built up sufficient rights in it to prevent another party using the same name on the grounds that they are ‘passing off’ their business as yours.

But it costs a lot of time and money to take action in these situations and you face all the uncertainties inherent in litigation.

 

4. Trademarks are territorial

Trademarks are registered on a country-by-country basis.

So, if you register a trademark with the UK’s Intellectual Property Office, it will give you the rights to use your mark in the UK.

If someone in another country used and registered the same mark, however, your UK registration does not give you the right to stop them.

At least until the legal ramifications of Brexit become clearer, the position in the UK is complicated by the fact that it’s possible to register a trademark—an EU Trademark—that is valid across all 28 member states of the European Union. If someone has registered an EU Trademark before you register a UK trademark, their EU registration would trump your rights.

 

5. Trademarks comprise certain categories of goods or services

It is possible for several businesses to share the same brand name as long as the businesses are not in competition with each other. An example, is Polo which is registered by separate businesses for cars, confectionary and clothing.

This is because trademarks are registered against types of goods and services. There are 45 classes in all and you can register a mark in several classes if your business activities cover more than one class.

The overriding consideration is whether the names cause, or might cause, confusion to customers and clients looking to buy products or services.

So, if your business makes ball bearings (covered by class 6) and you want to use a name that is already registered by a firm of accountants (covered by class 35), there’s a good chance that would be OK. However, if you were a business consultancy (also covered by class 35), the accountants would probably be able to prevent your use of the same name because that might be confusing to potential clients.

 

6. The most famous marks can be an exception to the classification rule

A very famous mark may enjoy broader protection than an ordinary mark, because of its widespread reputation or recognition.

Such “household name” marks are often not subject to the classification restrictions.

If you were to try to register Coca-Cola as a trademark—even if you only make ball bearings—the soft drink manufacturer would probably be able to prevent your use of the name.

The law recognises that registration in such circumstances is inappropriate because it would amount to taking unfair advantage of the mark’s fame and its use might have a detrimental impact on the well-known trademark.

To learn more about these and other issues you should consider before choosing your brand name, read my book Legally Branded.