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trademark use

Trade Mark Use – When May You Legitimately Use Someone Else’s Trade Mark?

trademark useTo discuss trade mark use let’s start by taking a couple of steps back to understand a bit more about trade marks.

Trade marks are the way to protect your ‘brand”. This word is overused to mean almost whatever a writer wants it to mean, but for current purposes suffice to say “brand” originates from the days when animals were burned with a branding iron to indicate ownership of them.

So to indicate our ownership of our business, or products and services we use various types of “sign”, the most universal one being a name.

The law protects certain names through intellectual property rights known as trademarks.

Names

One major advantage a business has over an individual is in getting to choose its own name.  However, the subject of names is surprisingly complex, and poorly understood, even within the branding industry. The upshot is that many businesses do not give the choice sufficient time, and consideration and get into difficulties later on. They might then have to rebrand to either adjust the name or change it altogether.

Some of the complexity arises because there are various places where people may register names.  It’s possible to register domain names, company names, or to simply adopt a trading name and use it without taking any further action.

Trade marks are more remote to small businesses due to the higher official fees payable to register them. This makes them less accessible than domain and company names. Trade marks also have complexities that make them less suitable to just go register without taking advice.

The upshot is that fewer people tend to register trade marks than register company or domain names.

In this post, I’m not going to cover what types of name are capable of being owned because that’s a large subject. Instead, I want to focus on trade mark use because people are often confused as to what they may or may not do if a name is trade marked.

For example, can they register a similar name? Is it acceptable to refer to a business by its name on your blog? When may you use a hashtag of a brand name? What if someone registers the ‘domain.sucks’ a version of your brand name? What actions might you take?

Such questions all turn on what amounts to trade mark use. There are more questions than space allows for me to answer them but if you’re wondering about use of others’ trade marks in Google Ads then a good starting point for your research are some posts I’ve written such as Should Google be prevented from profiting from cybersquatting?, Louis Vuitton v Google – The AG’s Opinion and Adwords Trademark Policy – Using Competitors’ Names In Adwords

 

Function of a Trade Mark

A trade mark acts as a ‘container” in which the brand value generated in the business is captured. Although it is possible to have trade mark rights without registering a trade mark, unregistered rights are very weak. Unless you have a significant budget to enforce your unregistered rights you effectively don’t have any rights in a name you’re using if you haven’t registered it as a trade mark. It’s less expensive to enforce your rights in a name you have registered.

A trade mark ring fences an area of business in which you have exclusive rights to use your brand name. Competitors can be stopped from using any name that is similar in sound, concept, or visually as they may effectively then be “free riding” on your brand.

This is a big trap for the unwary who think they can just make a slight change of spelling in order to use a similar name. Trade marks give wide protection against confusingly similar names which is why it makes sense to ensure you have a name you can own, that is not descriptive, and that nobody else already owns.

A trade mark is the closest you get to having exclusive rights to use the name for your goods and services. If the name of your business is not capable of being protected through a trade mark registration then it will be very expensive, if not impossible to protect your business name and build up goodwill under that name.

The use of a trade mark in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services is what the law prevents other people doing.

So how might third parties legitimately use your trade mark?

As I mentioned in How To Blog Safely And Avoid Infringement of Intellectual Property the mere reference in your blog to a word trade mark  – such as “BARCLAYS BANK” or “GAP” will not amount to trade mark infringement because names are not protected by copyright law, and trade mark infringement is based on consumer confusion. So, a mere reference to someone’s brand name in your blog is not going to lead to such confusion. The only exception to this is 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.

And as mentioned in this blog about the use of #Hashtags and trade mark infringement, “If a hashtag name constitutes or includes a registered trademark, at first glance it may be sufficient (without registration of a hashtag itself) to bring an infringement claim and establish consumer confusion of a competing use.”… however,  the courts tend to attribute a degree of consumer sophistication to internet users which makes it less rather than more likely that mere use of a hashtag would amount to trade mark infringement. (See Public Impact v Boston Consulting )

And as for using a trade mark name within a domain name such as .sucks as I mentioned in my blog Buying the Suckscom Version of Your Brand where there is simply non-commercial use, then ‘gripe sites’ or protest sites as they are often called, are unlikely to be making trade mark use of a brand.  Therefore, there would be no risk of customer confusion.  In such situations, it is possible to argue there is a ‘legitimate interest’ in using the brand name.

Conclusion

The law aims to keep trade marks free for others to use. Therefore, if you own a mark and do not genuinely make commercial use of it in the country in which your mark is registered for a five year period you will not be able to enforce your rights in that trade mark.

It is not sufficient to just say that the mark has been used, or to just produce a catalogue or a price list showing your mark. There needs to be a clear chain of documentation showing use of the mark in relation to the goods / services for which the mark is registered. So, you might be able to prove use for some goods and services in which you’ve registered your mark but not all of them in which case you will lose your rights over part of your mark.

As they say in trade mark law, Use it or Lose it

Legally Branded Podcast – Copyright Ownership

podcast_shireen_smithWhat exactly is Copyright? It’s a basic, fundamental question that people often ask me. In this episode, I dive into copyright essentials in order to address gaps in your knowledge of copyright or any confusion you might have around particular facets of the subject.

Click to Listen to Legally Branded podcast.

Topics Discussed in this Episode:

  • Examples of copyright
  • Reasons why you might want to have copyright.
  • Some ideas on how to avoid some common copyright problems.

 

Key Takeaways:

  • Copyright is one of the core three IP rights that impact every single business and is very wide-ranging in scope.
  • Examples of what copyright protects include photographs, images, maps, drawings, typefaces, music, films, works of art and performances, software, books, videos, content on websites and logos.
  • Copyright is highly relevant in today’s digital environment because most of the ways that businesses operate involve creating different copyright assets.
  • In countries like the UK and former Commonwealth countries like the USA, Australia and New Zealand, it’s not necessary for a work to display a high degree of originality in order to qualify for copyright protection.
  • Names are not, as a rule, protected by copyright under the law. Instead, they are covered by trademark law.
  • A copyright work is an asset. If you don’t own the copyright of an asset that you use in your business, it means you’re licensing that work effectively.
  • Copyright automatically belongs to the creator and not to the person who’s paying for it. The only exception is if a contract states otherwise or if the work is undertaken for you by your employee during the normal scope of their duties.
  • Content online is not in the public domain.

 

Action Steps:

  • If you’re from a copyright-dependent industry, find out a lot more about copyright.
  • Copyright should be an uppermost consideration. Make sure that the works you’re having created will belong to you. And if they’re not going to belong to you, then make sure you negotiate all the necessary permissions that you’re going to need for your intended use of that copyright work before you commit to using someone’s services.
  • If you engage someone to do work for you, such as to build a website, before you engage their services and give them your best ideas, make sure your written agreement with them covers copyright ownership.
  • Find out what the copyright rules say in your country and how they impact your plans. In an increasingly global marketplace where it’s quite common to engage the services of freelancers based in other parts of the world, you should agree which country’s laws will govern your contracts.
  • Don’t leave copyright discussions for later. Pay close attention to define details at the start of a project.
  • Don’t assume that your web designer or other professionals whose services you engage know what materials or images they may or may not use. Do your own verifications.

 

Shireen said:

“Strategic use of intellectual property makes a big difference to a business’ fortunes. So IP is a very important consideration in any venture, whether you’re starting, growing, or exiting a business.”

 

“Think of copyright as you might think of a plot of land… The copyright owner is the person who has the right to exploit the rights in their assets, just as the landowner can exploit the rights in their land.”

 

Thank you for listening!

 

It’s really worth having a process in place in your business to cover off the copyright risks that you run. A really easy way to do this is to buy my Legally Branded Academy Course. It has everything you’ll need to address these copyright risks as well as cover other IP issues to bear in mind in your business.

 

To access the free audio on How to Trademark a Name, subscribe to this podcast and download all the past episodes, and send an email to [email protected] saying what time of day you did so.

 

Connect with me on your preferred social media platform. And if you’ve learned from this series of podcasts, do consider leaving a review.

 

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Legally Branded Podcast – How to Increase the Value of Your Business Without Increasing Turnover

podcast_shireen_smith

What does intellectual property have to do with the value of your business? And how do you increase it without increasing turnover? Find out as I dive into this topic and impart valuable knowledge about intellectual property and the crucial things that you need to know especially if you’re growing your business or preparing for exit.

Click to Listen to Legally Branded podcast.

Topics Discussed in this Episode:

  • The way to increase the value of your business
  • Intangible assets as intellectual capital
  • The factors that affect company valuations
  • Examples of sales that haven’t depended on turnover (Facebook’s acquisition of Instagram and WhatsApp)
  • Why you need to secure your IP sooner rather than later
  • Example of how a business’ online dimension can lead to a huge valuation (Ctrip’s purchase of Skyscanner)
  • The difference between intellectual property and intellectual capital

 

Key Takeaways:

  • Focusing on turnover is not necessarily the way to increase the multiple that your business might achieve on exit.
  • Contrary to popular belief, the traditional methods of valuing a business that is used by accountants are not always the yardstick by which your business will be valued.
  • Synergies within businesses can result in a valuation which is far higher than the company turnover or traditional methods of valuation that you might believe the company is worth.
  • We’re living at a time when any company, even a small business, could increase its value by focusing on its intellectual capital.
  • The four categories of intellectual capital:
  1. The human capital
  2. The customer capital
  3. The structural capital
  4. The social capital
  • 70% of businesses are in the knowledge services sector, so knowledge is the most valuable asset of a business and managing the intellectual assets has become a business’ most important task.
  • The brand is the most important asset of your business to develop.
  • How the business interacts with customers is more important than what it sells.

 

Action Steps:

  • Pay attention to the various components of your business’ intellectual capital.
  • Plan your exit strategy very carefully. Start by getting the nuts and bolts of your business sorted, i.e. your intellectual property.
  • Secure your IP protection sooner rather than later.
  • Use intellectual property to increase your valuation and build your brand.
  • Get the right people on your team before you start down the path of your growth.
  • Create deep, long-lasting relationships with your customers.

 

Shireen said:

“As the web and technology become more and more important in our lives, it means that intellectual property is a critical area to upskill yourself in so that you can be sure to take the basic steps that you need to take on an ongoing basis, to ensure that your assets are secured.”

 

“If you’re looking for ways to improve your business value, consider developing your systems and processes rather than just focusing on increasing sales and other revenue-generating activities.”

 

Thank you for listening!

 

If you haven’t already taken the time to fully understand IP, I highly recommend that you sign up to the Legally Branded Academy Course. It’s not expensive and it’s a business course suitable for a worldwide audience.

 

Connect with me on your preferred social media platform. And if you found this episode useful, do subscribe to the show and leave a comment or review.

 

Resources mentioned in this episode:

 

Links to my books and online courses:

 

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Azrights

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Legally Branded Podcast – How to Avoid the Stealing of Your Ideas

podcast_shireen_smithPablo Picasso reportedly once said, “Good artists copy, great artists steal.” This is true not only in art. Thieves and copycats are as rife in business as in every walk of life. If so, how can you protect your ideas from getting copied or stolen? What are the steps you need to take to protect them?

 

Click to Listen to Legally Branded podcast.

Topics Discussed in this Episode:

  • How to protect ideas against theft by competitors and others
  • The importance of confidentiality
  • How the patent system works
  • The rationale behind IP
  • When to use a non-disclosure agreement (NDA)
  • The case of Microsoft’s Tablet PC versus Apple’s iPad
  • How to maintain your competitive advantage
  • The use of confidentiality to keep methodologies and recipes a secret

 

Key Takeaways:

  • Keeping ideas secret is fundamental to protecting them. And in business, you need to be very, very aware of this. And it’s the same the world over.
  • Confidentiality is one of the core three IP rights, and it’s a very important way in which ideas, systems, processes, and databases are protected.
  • Every great innovation began simply as an idea in someone’s head, and the patent system will only grant a patent on innovations that are not in the public domain.
  • The trade-off that the state gives us for revealing our ideas is a monopoly right, so keeping them secret initially is a vital way of protecting ideas.
  • The state is constantly doing this balancing act. The rights that they give have to be strong enough to encourage the creation of intellectual goods and divulging of information in return for a patent, but not so strong as to stifle creativity or prevent the wider use of those ideas.
  • If you’re coming up with something innovative, expect others to jump on the bandwagon and copy.
  • Copyright does not protect the underlying ideas. It only protects the way you express them.
  • The copying of ideas may pose a serious threat to your business. The more crucial your idea, the more steps you should probably take to protect it.
  • It’s how an idea is implemented rather than the idea itself that determines how well it’s received in the market.

 

Action Steps:

  • Develop the skill of knowing what to reveal, how much to reveal, and what to keep confidential about your ideas.
  • Keep your idea a secret if you think it might potentially be patentable. If information about it leaks out to the public domain, it is no longer protected.
  • When you have new ideas, carefully weigh up who you’re going to disclose them to and how. That’s how you manage the bloody world of competition.
  • There are huge commercial advantages to being first to market, but you need to constantly improve and refine your offering if you’re to maintain that advantage. Keep staying ahead of your competitors. Even though they copy you, make it so that you’ve already moved on and actually improved the product and learned new insights.
  • Some ideas need to be launched and developed very fast because that’s just their nature. If you’ve got a good idea that’s going to attract copycats, then be ready to really push forward with it very quickly. Go to market, promote it, gain traction, make sure that the proposition is properly developed and implemented before launch, recruit beta customers to test it, and get feedback.
  • Try to stay objective when weighing up your competition. It’s important not to get overly paranoid about what you’ve got. Temper your fears with a large dose of realism.
  • Bear in mind that copyright does not protect the underlying ideas. Don’t get a false sense of security from the fact that you’re going to have copyright if you’ve published your ideas.
  • If you decide that your idea needs to be kept a secret either for a while or forever, then act accordingly and create proper boundaries around it, using the right sort of agreements with anyone you work with. You need to think it through very carefully and probably get advice.

 

Shireen said:

“If an idea is before its time, either don’t rush in if doing so will tip off competitors… or launch and keep improving the product — constantly improving. You just can’t stay static.”

 

“For many ideas, even if a competitor takes inspiration, you will still offer something unique to potential customers, something that only you can bring to the table… But on the other hand, don’t assume you’re unique if you’re not.”

 

Thank you for listening!

 

If you want to start, grow or exit a business and manage the risks and opportunities correctly, sign up to the Legally Branded Academy where you can learn the essential actions to protect your IP and get a wealth of resources.

 

Connect with me on your preferred social media platform. And if you haven’t already done so, do subscribe to this podcast and download all the episodes to access the free audio on How to Trademark a Name. And I would love it if you would be good enough to leave a review! I will read every single one and take your feedback onboard.

 

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Legally Branded Podcast

podcast_shireen_smithWhy are you in business? Or if you haven’t started a business yet, why are you thinking of doing it? Whatever your reasons may be, knowing about intellectual property is very important. Only then will you be able to avoid making drastic mistakes that have catastrophic consequences and be able to set yourself up for future success.

Click to Listen to Legally Branded podcast.

Topics Discussed in this Episode:

  • What is intellectual property and why do you need to know about it?
  • What are the different rights under intellectual property rights?
  • What are the core three rights that you need to focus on when you’re setting up a business?
  • What is the most common mistake that people make when naming their business?
  • What does IP protection mean?

 

Key Takeaways:

  • People need access to IP information as a business skill that they need to develop.
  • IP is the nuts and bolts of your business whether you’re aiming to make it really big or you just want a small business that could fit into your lifestyle.
  • When you have a business, the intellectual property rights within that business are assets that have value. Therefore, you need to take the right actions in relation to them so that you can create a business that’s more valuable and, at the very least, avoid problems.
  • Patents protect the way things work or the way they function. When it’s just an idea in your mind, you must keep it a secret until you’ve decided to apply for a patent to protect it. Without a patent, you can’t stop other people from copying your idea.
  • Trademarks protect your name, your logo, and your distinctive branding.
  • When you have a business the main value when you come to sell it will be contained within its trademarks, within its name.

 

Action Steps:

  • Learn more about IP and the actions you need to take around IP for your business.
  • Take the right steps and have processes in place in your business to make sure that these steps around IP are never overlooked.
  • When naming your business, make sure that you don’t give it a generic or a descriptive name. Be willing to go and learn about names so that when you’re choosing them you can really choose well for your business, your products, your services, or whatever it is that you are naming.

 

Shireen said:

“You can’t keep going to a lawyer… There are certain things that you as the creative or the entrepreneur need to be able to do for yourself. And that’s why upskilling yourself in IP is really the only way forward.”

 

“You don’t have to be a household name in order to have a brand. The value that you generate as you succeed, as you attract more [customers], will all be contained within your brand name. So make sure that that’s a good one and choose really well.”

 

Thank you for listening! 

 

Links to my books and online courses:

 

More from Shireen Smith:

Shireen’s Website

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How Not To Grow A Business – My Experience Since Starting Azrights

When I set up Azrights back in 2004/5 it was after a few years bringing up my daughters. I had no existing client base so I built it from the ground up.

Luckily, I discovered a love for entrepreneurship which saw me through the extremely steep learning curve to develop my marketing and business skills. The IP work I’d done before had been for big blue chip companies whose needs and focus are very different to that of SMEs. As SMEs were my target clients. I had to discover their needs, and learn how to communicate to them.

In due course my ambitions for the business soon had me renting a big office and recruiting a team to fill it. The only trouble was that the role of managing the office fell on me as the owner of the business. Yet I need flexibility and freedom, and found the need to supervise an office felt like having a job all over again.

I made the best of it for years although I increasingly felt like a slave to this monster I had created. I dreamt of growing the business quickly – to a size where it would be feasible to pay a highly experienced manager to run the office. In my mind’s eye it would be easy for someone else to step in to fill my shoes, leaving me free to work flexibly from home.

A couple of years ago, it dawned on me that I wasn’t going to reach my goals by staying on the path I’d embarked on. The lifestyle was not one I enjoyed or wanted. I needed to make some radical changes in the business.

Virtual Legal Life

So, when an opportunity presented itself to downsize the office, I took it because I didn’t want to be chained to an office anymore. I gave up our main office with the idea of becoming a virtual law firm.

The ensuing 18 months involved quite a transition. Initially it all felt great. I knew I would lose a few team members who wouldn’t want to work from home. But for those who were open to home working it struck me as a suitable way to operate. Azrights would provide all equipment, and as legal work doesn’t need team collaboration with much of the work being done in a solitary way, we would be fine. After all we’re connected online by email, Skype, phone etc. There was our meeting room too where we could meet physically.

However, in practice I’ve realised that while things work fine with the business the size it now is, to grow the firm will involve getting a team together in a physical workplace. Filling paralegal and more junior roles with virtual workers is not easy. They find it unappealing to work from home. Many of them want the social life that working in an office provides. So, for now I’ve chosen not to replace paralegals who left and instead restructured the way we work to reduce the role of the paralegal.

I found freelancers with specialised skills such as in operating Dynamics CRM, so that now tasks like file opening, filing, and many client related admin matters are dealt with by them instead of paralegals. Surprisingly, I realised there was only limited legal work left that paralegals had previously dealt with. I had been employing 3-4 paralegals, partly because I kept a larger team than I needed, just so we could grow quickly.

Working remotely has allowed me to attract a wider pool of quality talent from far and wide, some of whom work on occasional projects, while others are more regularly involved in the business and are making a big difference to its future success.

I use solicitor consultants with particular specialisms, so when their skills are needed by a client’s matter, they either support me in the background, or they work directly with the client depending on the project. One of the biggest upsides to this new way of working is the amount of my time it has freed up now I no longer need to go into an office every day.

At long last I’ve managed to finish a project I had been trying to get done for years. I’ve created the Legally Branded Academy Online course which my separate business Azrights International will be providing shortly.

Growing Azrights Solicitors

I’ve still got plenty of ambition. Let’s see if I can grow the Azrights Solicitors business in a different way to how I approached it in the past.

I still firmly believe you need the right team around you as that’s crucial to success. However, hopefully now that I have structured the business to suit remote working, and have created online courses so we can provide a more complete suite of products and services, Azrights Solicitors will be able to attract that rare entrepreneurial solicitor to help drive the business forward. They could ultimately recruit a team and get a physical office space too.

For me personally the changes in the business these past 18 months have been the best thing I could have done. The business hasn’t suffered, although it hasn’t grown either. I’ve had time to develop an online course at Azrights International Ltd which had always been the missing link in our IP offerings.

Everything I’ve learnt about entrepreneurship tells me that the mindset and attitude of the business owner is crucial to success. So, now that I’ve taken care of my own needs, let’s see if the firm can attract that rare solicitor who will be able to help me grow the business and drive it forward. Of course, if you know anyone who might be interested in the challenge, or if you’re interested then email me at [email protected]

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.

 

GDPR – Why Consent Should Be Used As A Last Resort

If your inbox is anything like mine, it will be full of emails about GDPR – news updates, invitations to training events, webinars and more.  That’s not surprising given that GDPR represents one of the biggest shake-ups in the privacy and data protection laws since the internet.

Europe’s new data protection law, the General Data Protection Regulation is a complex piece of legislation. The text of the GDPR has changed many times so that some of the provisions that were originally proposed were dropped or changed substantially. If you’re wondering what actions you need to take to comply with the new laws by the end of May, which is when they come into effect, it’s important that you base your actions on well informed, current information.

However, if you’re a small business you probably don’t have the resources and the time to understand and deal with every minutiae in the regulations.

You may want to focus on some top-level risks. Working towards GDPR compliance, by focusing on the big picture, and addressing the most serious risks now, while committing to making other changes gradually. In my view this is a good approach. I’m not advocating that anyone should bury their head in the sand and ignore the new regulations. Just to bear in mind that complying with GDPR when you have a budget of a quarter of a million pounds to spend, (as many big businesses do have), looks very different when your budget and available time is tiny in comparison.

What GDPR Impacts

GDPR impacts the way you collect identity information, how long you store it, what processes you need to introduce to control its use, what you may do with the data, and what security arrangements you need to implement to protect that data against risks such as loss or disclosure following a cybersecurity attack, and more.

A good starting point is to make a list of the data you collect and think about how you use it, how long you store it, where you store it, and who has access to it. The purpose of this exercise is to document what you’re currently doing so you can decide what you need to do in order to better comply with GDPR. What controls and processes will you be able to put in place immediately, and what might you introduce in the future?

Consent Is Not Always Necessary

A common area of confusion is whether you must obtain consent to process people’s data. While in some cases consent may be the right way to go, it is not always the right basis on which to found your decisions.

For example, processing data for many marketing activities may be better based on “legitimate interest” (that is, you have a lawful business interest in processing the data). The term “legitimate interest” is not clearly defined but is likely to be interpreted widely. Legitimate interest or other lawful “bases” under the GDPR, apart from consent can sometimes be a much better basis to rely on than consent.

In our view consent should be used as a last resort, not a first resort.  Only rely on obtaining explicit consent from data subjects where none of the other bases are engaged.

Incorporate Prominent Unsubscribe Links

Some simple steps like incorporating a prominent unsubscribe link on all your marketing emails and not emailing people from no reply emails would go a long way to avoiding annoying recipients of your emails.

For example, one email sender I’ve been trying to unsubscribe from for months is Law.com. They are sending us daily emails from a no reply mailbox. They provide no unsubscribe link. Instead you are expected to login to their site to manage your email alerts. Why should one have to do this just to unsubscribe? I have tried blocking their emails but somehow their daily emails continue to arrive into our inbox instead of being diverted to the junk folder.  (I’d love to know why this is happening)

They’re by no means the only ones. IELPE is another organisation that emails us whose emails I just can’t seem to divert to the junk box. They too send their emails from a no reply email address, and don’t have an unsubscribe link.

In many cases, even where an unsubscribe link is provided in emails, I would be worried about clicking on the link unless I know the company. After all, it’s basic security management to not click on links. So this is why it would be good practice to not only provide an unsubscribe link, but to also not send marketing emails from a no reply email address.

I mention these as examples of what not to do. In my view it’s important to avoid attracting unwanted attention, and potential fines.

Conclusion

So, there are practical steps that you could and should prioritise because they’re easy to implement, and matter a lot.

I appreciate that unless you’re familiar with the regulations it can be difficult to know how to see the wood for the trees. That is why we are introducing a low cost GDPR service designed to support small business clients to implement a GDPR solution appropriate to their needs.

If you want help to tackle GDPR in a pragmatic way, so you can know how to deal with marketing emails, and whether you need to seek consent from everyone, then our solution will be relevant to you. Just register your interest to receive more details as they become available.

Register Your Interest Here

MIND THE GAP! The Potential Power Of Marks With Reputation

A very recent decision of the EU General Court highlights the potential power of marks which enjoy a reputation even if the claimant in this particular case suffered a temporary setback before the Court.

A normal registered trade mark entitles the owner to object to the use or registration of a later mark where the marks are either identical or similar and the goods or services are either identical or similar such that the relevant consumer would be confused into believing that there was a connection between the marks – in short hand usually referred to as the existence of a risk of confusion.

An important threshold for success is that the goods or services must be at least similar to some degree. If there is no similarity, there cannot be a risk of confusion, even if the marks are identical or highly similar. For example, according to EU trade mark case law, wine glasses and wine are dissimilar products. Accordingly, even if the marks were exactly the same, the owner of the wine brand cannot win a claim based on a risk of confusion against a wine glass producer who uses the identical trade mark because the Court will say that the goods at issue are dissimilar.

Likelihood of Confusion Test Works Well

Generally, this approach works well because it makes sense to say that consumers are not likely to be confused where there is no similarity in goods or services. If I register my trade mark for, say, recruitment services, I should be entitled to prevent another business owner from using the same or similar mark for recruitment services or similar business services but there is no good reason why I can claim that consumers will be confused if another business uses its mark for different goods or services such as, say, custard or electric lamps.

However, the owner of a mark with a reputation enjoys a potentially much broader scope of protection. In fact, depending on the strength of its reputation, it can prevent the use or registration of a later mark for completely different goods or services. This gives the owner of a mark with a reputation a potentially powerful weapon in the enforcement of its intellectual property rights.

Let’s go back now to that recent General Court decision.

The Polish firm PP Gappol filed an EUTM application for a figurative mark featuring the word element GAP Pol for furniture in class 20, clothing and related items in class 25 and furniture repair in class 37.

GAP Objects to GAP Pol 

Gap (ITM) Inc (“Gap”), owner of the well-known GAP retail brand filed opposition against classes 20 and 25 before the EUIPO. It relied on its EUTM registration of the word mark GAP which is protected for clothing, footwear, and headgear in class 25 and it claimed both a likelihood of confusion as well as unfair advantage by virtue of the reputation enjoyed by its registered trade mark GAP in the European Union.

At first instance, the EUIPO Opposition Division agreed with Gap that use of the figurative mark GAP Pol in relation to clothing products amounted to a risk of confusion and so it rejected the EUTM application in class 25. However, it rejected the opposition to furniture in class 20.

Both sides appealed to the EUIPO Board of Appeal. Gap Pol appealed the rejection in class 25 and Gap appealed the rejection of its opposition against class 20.

The EUIPO Board of Appeal upheld Gap’s appeal, agreeing both that there was a risk of confusion for clothing in class 25 and that Gap’s reputation in the EU for its GAP mark entitled it to succeed also against furniture in class 20.

In particular, the Board of Appeal accepted Gap’s evidence that it enjoyed a reputation under its GAP mark for clothing products in the United Kingdom. It went on to agree that use of the figurative mark GAP Pol would take unfair advantage of the reputation or distinctiveness of the trade mark GAP. It held that use of the mark GAP Pol would give PP Gappol an unfair advantage in the marketing of its furniture products in the sense that it could benefit from the reputation and image of GAP in order to enhance sales of its own furniture products. On this basis, the Board of Appeal upheld the opposition against furniture products in class 20.

Although Gap’s reputation under its GAP mark concerned clothing products, it succeeded before the EUIPO Board of Appeal in preventing the registration of the mark GAP Pol for furniture products, which are of course completely dissimilar to clothing. This was achieved because of the reputation enjoyed by the GAP brand.

Although the legal battle continued to appeal to the EU General Court with the result that the case was sent back to the EU Board of Appeal so that the EU Board can consider issues it should have dealt with but failed to. Namely, whether the GAP brand enjoys a sufficiently strong reputation or a sufficiently high degree of distinctiveness. In the meantime, the decision has been annulled.

We shall have to wait and see whether the EU Board of Appeal now decides that Gap enjoys a sufficiently strong reputation (or sufficiently high degree of distinctiveness) under GAP in the EU to win under the reputation ground of opposition.

The two important take home points here are:

  • if you can prove that your trade mark enjoys a reputation – especially by concrete documentation such as annual reports, news or magazine or online reports or other independent evidence – you can significantly widen the scope of protection of your intellectual property rights which can be a valuable tool in preventing another trader from taking unfair advantage of your trade mark, even for dissimilar goods or services;
  • in clearing a new trade mark for use or registration, it is important to take into account that if you choose a mark which is the same or similar to a well-known or reputed trade mark even in a different market sector, the owner of the well-known or reputed brand can potentially win a challenge to your registration or use.

It is always advisable, therefore, to consult an IP or trade mark professional like us here at Azrights whenever you are considering adopting a new trade mark. We can help to identify such potential obstacles to use or registration of your mark, including obstacles from sometimes unexpected sources, such as unrelated market sectors. MIND THE GAP!

Copyright – Who’s Hiding Under Your Bed? Hairy Monsters And Non-Literal Copying

You may be one of the eight million or so viewers who have already seen the John Lewis 2017 Christmas television advertisement  – Moz the Monster, featuring a lovable monster who hides under a child’s bed. If so, has it perhaps reminded you of any other lovable monster?

Having viewed the TV advert, the former children’s laureate, Chris Riddell, clearly felt that it copied his 1986 children’s book – Mr Underbed – featuring a big blue hairy monster who rocks the bed and snores loudly. A few days after the launch of the TV advert, Mr Riddell tweeted: “John Lewis helps themselves to my picture book”.

John Lewis has strongly denied any allegation of plagiarism, stating that the story of a big hairy monster under the bed, which keeps a child from sleeping, is a universal tale which has been told many times over the years. The department store went on to say: “Ours is a Christmas story of friendship and fun between Joe and Moz the Monster, in which Joe receives a nightlight which helps him get a good night’s sleep”, adding, “The main thrust of our story is utterly different”.

Non-literal copying

Although there is no indication that Chris Riddell plans to take formal legal action, his tweet highlights the longstanding tricky area in copyright as to non-literal copying, that is, copying of the ideas of an earlier work rather than the literal words or content.

In contrast to entrepreneurial works –  such as films and sound recordings – where, to infringe, the claimant must show copying of a substantial part of the actual film or recording, copyright in authorial works – such as literary, dramatic, musical, and artistic works – provides wider protection, going beyond the actual content itself.

For example, the author of a novel or a play is entitled in principle to object to the copying of the storyline, plot, incidents, and themes, although it may be more difficult to protect mere copying of the identity of a character. The composer of a musical work may object to the copying of melody or orchestration.

That said, at least in the realm of regular literary, dramatic, musical, and artistic works such as books, the UK courts have often struggled to come up with concrete rules for determining the frontier between acceptable and unacceptable copying. As a result, it is somewhat difficult to predict the outcome of legal actions concerning non-literal copying.

Ideas-expression dichotomy

The most common approach of the UK courts is to look to the so-called ideas-expression dichotomy which provides that, generally speaking, the law protects against copying of the expression of ideas contained in a work but not against copying of the ideas themselves. Under this approach, it is not an infringement to take the ideas or concepts behind, say, a book or song and to incorporate them into a later work. The tricky part is deciding what exactly is meant by the word “ideas” in this context.

The fact is that the law does protect against copying of mere “ideas” provided that those “ideas” are sufficiently detailed and involve sufficient intellectual creativity to warrant copyright protection. At the same time, the law does not protect ideas which are commonplace or which are essentially mere facts. Ultimately, while the courts in the UK are keen to prevent obvious plagiarism, they do not want to give a claimant a monopoly of knowledge or historical research.

In the well-known Da Vinci Code novel case in 2006, the Courts rejected a claim of copyright infringement brought by the authors of “The Holy Blood & The Holy Grail” who claimed that Dan Brown’s world-wide best-seller, the Da Vinci Code, infringed their book. In particular, they argued that Dan Brown’s page-turner had taken a substantial part of the “manner” in which they had expressed their ideas. The Courts rejected this argument, stating that while Dan Brown had expressly drawn on the ideas in their book, such use was merely to provide background material. In this case, the Courts were not prepared to find that the historical research and “facts” about the alleged real meaning of the “Holy Grail” enjoyed copyright protection.

What, then, might be the outcome if Chris Riddell were to claim that the John Lewis “Moz the Monster” TV advert was infringing copyright in his Mr Underbed book? Anyone familiar with the book Mr Underbed and who has watched the TV advert, may notice that both do indeed feature a large hairy, albeit friendly, monster. Visually speaking, both monsters share a large red nose and protruding triangluar-shaped teeth from both ends of its mouth. In terms of scenario, both monsters hide under their respective child’s bed, thus keeping the child from sleeping.

Conclusion

However, it would seem that the scenario of a monster hiding under a human’s bed is commonplace in story-telling and in literature. A friendly monster is likely to have features such as being hairy, having a big nose and protruding teeth. Moreover, young children are notoriously reluctant to go to sleep at night, especially if there is mention of a creature lurking in the dark.

On this basis, although for at least some viewers  – especially perhaps those with young children themselves – the John Lewis TV advert might have brought Mr Underbed to mind, it seems unlikely that this resemblance would be found to go beyond the mere “idea” of Chris Riddell’s book.

But, who really knows what may be hiding under your bed.

Co-written with Kieran Heneghan