Tag: trade marks

Getting intellectual property right

There were newspaper reports yesterday of Damien O’Regan’s proceedings against Andy Quirke and RTÉ arising out of the Damo character played by the former and broadcast by the latter (O’Regan v. Quirke & RTÉ 2013/9674P).

Damo was not happy to meet the summons server.

The Irish Times and the Irish Independent  report in almost identical terms that Mr O’Regan is

suing … for alleged copyright infringement … [and that] he claims he registered the name ‘Damo’ with the Irish Patents Office.

Mr O’Regan told the court that the use of the name Damo is a clear breach of his trademark and said he had not given his consent for its use by Mr Quirke.

It may well be that Mr O’Regan will be suing on the basis of copyright and trade mark rights, but that seems unlikely. Mr O’Regan holds a registered trade mark for the word DAMO and is suing Mr Quirke and RTÉ for allegedly infringing it. Kate Gorey points out that this may be the first “character mark” case before the Irish courts.

Copyright and trade marks are not the same thing. Confusion about the types of intellectual property that exist and the rights they give is commonplace. We aspire to be a “knowledge economy”. Any economy like ours requires the creation of intellectual property to survive in the contemporary market. So the above story is a good excuse to briefly outline the types of intellectual property that exist.

What intellectual property rights are there?

The following is an attempt to summarise the different rights available so that they can be distinguished. Not all are strictly intellectual property rights but they are often considered together. The main rights are copyright, trade marks and patents. In very simplistic terms: copyright protects things like books and music, trade marks protect brands and patents protect inventions.

  • Copyright: a property right in a work (generally creative works, but it can include compilations of works and databases). In Irish law copyright exists once the work is created. It does not apply to ideas, only the implementation of them. It does not have to be registered. When a work was created is a question of fact but there is no specified way of establishing that. For example, it is not required that you post a song to yourself in order to copyright it, but doing so might help you establish the date of creation. Copyright is governed by the Copyright and Related Rights Acts 2000 to 2007.

FAQ on the Irish law of copyright and designs by FR Kelly

  • Trade mark: a sign capable of being represented graphically (including in text) which can distinguish goods or services of one undertaking from those of other undertakings. Trade marks are registered with the Irish Patents Office (community trade marks, which also have force in Ireland, are registered with the strangely-titled Office for Harmonization in the Internal Market). There are no private trade mark registries. Trade marks are governed by the Trade Marks Act 1996.

FAQ on the Irish law of trade marks by FR Kelly

  • Patent: an invention which is new, involves an inventive step and is susceptible to industrial application. Irish patents are registered with the Irish Patents Office and are governed by the Patents Acts 1992 to 2012.

FAQ on the Irish law of patents by FR Kelly

  • Design rights, industrial designs and database rights: specific forms of intellectual property right. They are comparatively complicated and what is protected can overlap with the other rights. For more see the FR Kelly FAQ on copyright and designs, the IPO on designs or OHIM on designs.
  • Passing off: a tort of passing off goods or services as those of another in a manner calculated to deceive. It is not governed by legislation and does not have the same remedies or enforcement procedures as, for example, copyright, trade marks and patents. It may be thought of as a form of protection for unregistered trade marks (which don’t strictly exist in Ireland).
  • Registered business name: these are not a form of intellectual property but are often mistaken to be one. I wrote about them here.
  • Domain name: these are registered internet addresses. Also not strictly a form of intellectual property but are lumped in with it.

Don’t be fooled by inauthentic registrars

A number of scams have operated in the past decade or so whereby businesses receive letters or emails offering to register some form of intellectual property or protect a right. There are genuine professional service providers like trade mark and patent agents who advise on protecting and registering intellectual property. They can prepare and lodge registration applications and deal with them until they are granted. But they do not, themselves, act as the registrar.

The copyrightyourname.com site appear to offer, for a substantial fee, some form of registration service but the site is highly confused. The website operators cannot offer the service advertised and must know that they cannot offer it. You cannot register copyright in Ireland. You can register trade marks, but only with the Irish Patents Office or OHIM. A private entity like copyrightyourname.com cannot carry out that function.

What rights the registration of a name as a trade mark provides is a more complicated question. You can, by all means, join copyrightyourname.com and part with your money, but you will not be getting a trade mark in return and you will not be getting any additional copyright protection.

Battle of the Bakers: Round 2 (and an interesting update re Round 1)

Exhibit A
Exhibit A: McCambridge bread

I had assumed that the McCambridge v. Brennan brown bread case was solely one of intellectual property infringement but the judgment of Mr Justice Peart, which has now been published, shows that there is more to it (an Irish Times report of the case is here).

Indeed, Peart J notes that McCambridge do not “have any proprietary rights as such over that type of re-sealable bag, its shape or indeed the shape and size of the loaf of bread inside.” The company itself accepted that it does have such proprietary rights, nor rights over the shape and colour or ingredients of the bread itself.

Notwithstanding that, Peart J agreed that the overall impression on consumers satisfied the conditions for passing off (a form of action used to protect unregistered intellectual property rights).

[I]t would take more care and attention that I believe it is reasonable to attribute to the average shopper for him or her not to avoid confusion between the two packages when observed on the shelf, especially when these are placed adjacently or even proximately so.

Peart J indicated that an injunction should be granted to prevent further passing off. However, the interesting element of the case comes next: he also considered whether McCambridge are entitled to an injunction under section 71 of the Consumer Protection Act 2007 on the basis that Brennans were engaging in a misleading commercial practice.

The Minister for Jobs, Enterprise & Innovation recently announced a planned overhaul of consumer legislation, arguably ignoring that the 2007 Act was supposed to be just that (I wrote about it here in April 2011). The 2007 Act was quite significant, but appears to have been barely used, particularly by the National Consumer Agency. Indeed, Peart J states that they held a watching brief in McCambridge v. Brennan but, strangely, adopted “a neutral position”.

(The failure of the Agency to adopt a position is reminiscent of the refusal of the Data Protection Commissioner to involve his office in the EMI v. eircom case. Ironically, he recently went on to order eircom to halt the three-strikes system which resulted from that case.)

Exhibit B
Exhibit B: Wot, no McCambridge?

Peart J decided that McCambridge were not entitled to an injunction under section 71, apparently (my interpretation) on the basis that the design of its packaging was not a commercial practice involving marketing or advertising.

Peart J was to hear the parties in relation to the exact terms of his proposed injunction, but the decision to grant an injunction has since been appealed to the Supreme Court by Brennans.

As stated, my interpretation of Peart J’s comments (at paragraph 45) is that an injunction was not available because packaging was not “marketing or advertising”. I would have thought that the European Communities (Misleading and Comparative Marketing Communications) Regulations 2007 were aimed at preventing misleading advertising and that the (quite similar) provisions of the 2007 Act were of broader application such as would capture packaging. The 2007 Act is the Irish implementation of the Unfair Commercial Practices Directive which, in the UK, was implemented by statutory instrument. Guidance from the UK’s Office of Fair Trading gives the following example of a prohibited practice:

A trader designs the packaging of shampoo A so that it very closely resembles that of shampoo B, an established brand of a competitor. If the similarity was introduced to deliberately mislead consumers into believing that shampoo A is made by the competitor (who makes shampoo B) – this would breach the [Regulations].

Of course, Peart J had decided that Brennans’ passing off was not deliberate, and so could not have found them to have intended to “deliberately mislead consumers”. Nevertheless, it appears to be a case where the views of the Consumer Protection Agency would have been of use.

Use of registered trade marks in secondary branding

My case note on the Irish Supreme Court decision in Danone v. Glanbia has been published in the Journal of Intellectual Property Law & Practice. I summarise the significance of the decision as follows:

The use of trade marks as non-primary branding is increasingly a feature of consumer product marketing and it will be of reassurance to companies engaged in such marketing to note Macken J’s observation that she does ‘not consider there is anything in law which prevents an ingredient from being part and parcel of the marketing or promotion of the product of which it is an essential component’.

Lesser known crimes: is that trade mark really registered?

Do you use the ® symbol and, if so, do you know what it means? If you don’t, you might be committing an offence.

I have written before about the different legal structures under which a business may be run. The only reference to trade mark law in that post was to point out that a registered business name is not, of itself, a trade mark.

The Trade Marks Act 1996 defines a trade mark as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.” This is an example of legalese.

The Patents Office, which handles the registration of marks, offers a more helpful definition:

A trade mark is the means by which a business identifies its goods or services and distinguishes them from the goods and services supplied by other businesses.

You might identify your business using a company or registered business name and therefore use it as a trade mark. However, it is not a registered trade mark. A registered trade mark provides a monopoly on the use of trade mark: it stops others from using it. Of course, there are limitations to that monopoly and not all marks can be registered. See here for a good FAQ on registered trade marks.

Whatever about the detail of trade mark law, the ™ and ® symbols are familiar to us all. But what do they mean?

  • Using the symbol indicates that you are using a name or logo as a trade mark. It does not offer specific protection. However, you might take an action for passing off (which is like suing on the basis of an unregistered trade mark) and will obviously require evidence of using the mark as a trade mark. Use accompanied by the ™ sign may assist.
  • Using the ® symbol indicates that the name or logo is registered as a trade mark.

The difference is not merely technical. Section 94 of the Trade Marks Act 1996 provides that it is an offence to falsely represent that a mark is registered. The fine was originally a maximum of £1,000 with a further fine of up to £100 per day for a continuing offence.

The recent Fines Act 2010, which has been signed into law by the President but has not yet been commenced by the Minister for Justice and Law Reform, will increase these fines. If my reading of the Act is correct, a section 94 offence will become a Class C offence and therefore carry a maximum fine of €2,500, with the daily fine for continuing offences becoming a Class E offence with a fine of up to €500 per day.

Registered business names

The nature of a registered business name (RBN) is a common source of confusion and misunderstanding. A frequent misconception is that an RBN is a form of trade mark: it is not. Having an RBN is a simple compliance requirement and does not offer any protection in the name registered.

Couldn't they have used something snappier?
Couldn’t they have used something snappier?

Running a business

There are a range of ways in which a business can be operated:

  • By an individual (as a sole trader). An individual running a business is personally and fully liable if sued. Sole traders do not have to register with the Companies Registration Office (CRO) and are governed by the general law, rather than any specific regulatory law.
  • By a partnership. The individual members of the partnership are jointly and severally liable if sued. Most partnerships do not register with the CRO. They are governed by the Partnership Act 1890. When sued, the defendant is listed with the individual partners named individually along with the partnership name (eg. Joe Bloggs v. Jane Bloggs, Jack Bloggs and Joanne Bloggs, practising under the name and style of Bloggs & Partners Solicitors).
  • By a limited company. There are various types of limited company and additional incorporation options have been proposed. Unlike a sole trader or partnership, a limited company is a legal person in its own right, distinct from its shareholders. The liability of shareholders is limited in accordance with the share structure of the company. The Companies Acts regulate the operation of limited companies.

Using a business name

Whatever of the above structures one uses to carry on business, an RBN will often be necessary. Where a name is used in the course of business that is not true name of the business, the Registration of Business Names Act 1963 requires that the name is registered with the CRO.

The following are common examples of when registration is required:

  • Jane Bloggs runs a corner shop. If she calls the shop Bloggs’ Stores, she must register that as an RBN. She will then be Jane Bloggs trading as (t/a) Bloggs’ Stores.
  • Joe Bloggs runs a construction company, Joe Bloggs Construction Limited. If the company trades as Bloggs’ Builders it must register that name. The company will then be Joe Bloggs Construction Limited t/a Bloggs’ Builders. A company cannot trade as another company – eg. Joe Bloggs Construction Limited t/a Bloggs Limited.

Why must you register?

The system of business name registration allows other people to find out who runs the business. This is not a problem if a business is run under a person’s own name or under a company name, which can be searched against in the CRO. But if an assumed name is used, how is a customer or supplier to know what legal entity is behind the business? The question often arises as follows: who do I sue?

The requirements of the Registration of Business Names Act 1963 are often not observed and, it would seem, enforcement is not a priority. The equivalent legislation in the UK was repealed in 1982 and business name registrations are no longer possible there.

What a business name is not

  • A form of company. You might register a business name with the CRO, but this is not incorporation. The registration merely puts on public record that the registrant carries on business using the registered name.
  • A trade mark. A registered business name is not a form of intellectual property and it offers no exclusive right to use the name registered. It is not a trade mark, registered or otherwise. In fact, duplicate entries are often found in the register of business names. By contrast, a particular trade mark can only be registered once.

Letting people know

If a business uses a registered business name, all business letters, circulars and catalogues on or in which the business name appears must contain the following information in legible form:

  • in the case of an individual, his/her present name, any former names, and his/her nationality, if not Irish; and
  • in the case of a partnership, the present name and any former names, and the nationality, if not Irish, of all the partners in the firm.

An additional set of disclosure rules apply to Irish-registered companies, whose letters, notices, publications, order forms and websites must contain specific information.

File under: “Not what trade mark protection was made for”

The Sunday Times recently carried a report on the bowdlerization of an ad being run to encourage people to pay for their TV licence.

In the commercial a woman specifically attributed her frozen facial expression to the trademark anti-wrinkle injection [Botox]. Allergan, the American company that manufactures Botox in Westport, Co Mayo, complained about the advertisement to An Post, which collects the licence fee, and to RTE last June.

The broadcaster agreed to pull the commercial and replace it with a version that didn’t refer to Botox by name … Rory Coveney, a spokesman for RTE, said the advert was not pulled because it implied the character could not express emotion. “Allergan put in a request to An Post to change the ad because the term Botox is a trademark and they then wrote to us,” Coveney said. “We are ultimately responsible for putting the ad on air. The mistake was that Botox was used as a colloquial term, but just like Hoover, it’s a trademark.”

The mere fact that Botox is a trade mark doesn’t grant Allergan absolute control over how it is used and the example given by Coveney is interesting, as trade mark protection doesn’t prohibit the colloquial use of the mark. Allergan, Hoover, Google and others rightly monitor the use of their trade marks very carefully but they cannot require the media to remove all reference to their products when it suits them.

Could Allergan mount a complaint under section 14(3) of the Trade Marks Act 1996, that the use of the word Botox in the ad was without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark? Taking such a complaint to court would necessarily involve an exploration of the effects of Botox on one’s capacity for facial expression and an argument that the ad unfairly suggests that Botox diminishes that capacity for expression.

Or is the real issue to do with adverstising codes?

Janet Kettle, a spokeswoman for Allergan in the UK, said the company was concerned the RTE ad breached advertising rules. “Botox is a prescriptive product and you can’t advertise it directly to consumers,” she said. Allergan has brought cases to defend the name of its product in 75 countries, including Ireland.

There is something of the ridiculous to this justification for demanding alterations to the ad and it is difficult to see how RTÉ could be found in breach of any advertising rules, as suggested. Neither could it seriously be suggested that RTÉ could be in breach of the comparative advertising rules in the Consumer Protection Act 2007 or the Misleading and Comparative Marketing Communications Regulations.

Rather, this appears to be a case of using intellectual property rights to achieve an end which does not concern IP. The episode is reminiscent of recent road safety ads broadcast on RTE in which the logos were removed from cars used in the making of the ads, at the request of the car company (Renault and Ford).

These incidents don’t raise serious freedom of speech concerns of themselves, but do suggest a worrying rush to capitulation by advertisers and broadcasters when it comes to threats received from over-sensitive companies.