Copyright, trademarks, contracts, confidential information – IP is important for your business.We advise and assist on all aspects of intellectual property, including IP contracts and licences, investigation of infringements, copyright actions and in many other areas.
For many business, intellectual property is amongst their most valuable yet vulnerable assets and many small businesses don’t fully recognise that just because they may not be software designers or invent products, IP is important and crosses over into many other areas of law.
We can help in many ways, including but not limited to :-
• Non-disclosure and confidentiality agreements
• Protecting your IP as far as staff are concerned via employment contracts and policies
• Database rights
• Website and online assets legal advice
• Employee fraud/theft of confidential data
• Misuse of computers
• Trademark advice and applications
• IP litigation expertise including applying for injunctions where necessary, urgent and appropriate
• intellectual property licences and assignments
• software licence and development agreements
• distribution agreements
• Media and advertising law advice
Our litigation team, headed by David Rosen, can help if you need advice on an IP dispute.
Copyright is a private right which arises automatically and can apply to any medium and can protect literary, dramatic, musical artistic works amongst many others. However, it does not protect ideas for work, only when it is tangible and fixed, such as in writing. Having a copyright allows an individual to protect their work, preventing others from copying their work without their permission. The length that a copyright lasts depends on the category of protection.
Copyright owners have certain rights regarding their work. This includes prohibiting or authorising certain usages of their work. Where either a significant amount, or the whole, work has been copied without the owner’s permission, this is said to be infringement. It is possible that a small portion of the work being copied can still constitute a substantial part, so it is always advisable to seek advice on whether a certain piece of work can be used.
In addition, copyright owners can prevent the public from being issued or renting their work. They can also prevent any performance of the work to the public, broadcasting or adaptations of the work. When any of these occur where there has been no permission by the owner, copyright is said to be infringed, irrelevant of whether it was done expressly or impliedly, concerning either the complete work or a portion of it.
The legal definition of passing off is where a person or business offers goods or services as another business or with the consent of someone else in a way that deceives the consumer into believing that they are buying the goods or services of that person or business that they trust and are familiar with.
The effect of passing off is that the consumer is misled into buying goods he/she does not want and :-
• the licensed business loses the revenue on unsold ‘real’ products and services
• the licensed business reputation can be damaged if the products or services were not up to standard
• the business selling the licensed business’s products or services receives unlawful payment
The law on passing-off is complicated and requires strong evidence in order to be successful.
The onus is on the claimant (licensed business) to prove that:
• it has goodwill
• the defendant misrepresented the public which led to confusion
• misrepresentation damaged the goodwill of the claimant
It is time consuming to prove theses elements and the biggest difficulty is in proving that the goodwill exists.
What is passing off?
Passing off occurs where a person or organisation sells goods and/or services and purports to be another person or organisation when that is not in fact true irrespective of whether there was any intention to do so. Passing off is a fairly broad tort action relating to unregistered trades marks and attracts strict liability, meaning the defendant will be liable even where he was unaware of the fact that he was using trade marks or ‘good will’ (see below) belonging to another business.
Claims for compensation can be made by the business who’s reputation and potential revenue streams have been damaged by the defendant.
Legally, the claimant must show it had goodwill, that the defendant misled the public such that a distinction between the claimant and defendant could not be made and the goodwill of the claimant was damaged by the misrepresentations of the defendant.
What does misrepresentation mean in the context of passing off?
The term misrepresentation is used quite widely in the law and can exist in negligent and fraudulent forms within contract law. However, as described before, passing off is a tort which attracts strict liability meaning that the defendant’s intention is irrelevant in defining misrepresentation.
A misrepresentation can be an apparent statement of fact or conduct which is untruthful and has mislead other persons into believing that something was in fact truthful. So, if I were to offer legal services using a certain strap line, name or logo which belongs to another firm and the public were lead to believe that I was the firm with ownership of the trademarks, that would be considered a misrepresentation in the context of passing off.
What is goodwill?
Proving the existence of good will is not an easy task. However, it can be defined as something intangible (such as reputation or unique selling points) which attracts the customers to the claimants particular business and not others. It could also include the marketing and advertising activities used by your business and some specific values or business practices used. For example, my particular business could be renowned for its high level of service and customer satisfaction, which may in itself entice customers to come to me and is thus an aspect of my business’s goodwill.
What remedies are there for passing off ?
There are two main remedies available. You can apply for an injunction to stop the defendant using your trademarks or goodwill and sue for compensation where damage to your reputation or you have lost potential revenue.
A trademark is a sign or symbol which distinguishes the goods/services of a particular individual or entity. Many businesses would describe their trademark as their “brand”; something which identifies and distinguishes them in the market. For example, Apple Inc. has one of the most widely recognised trademarks in the world.
A trademark can take many forms and can include words, logos or a combination of both. Nevertheless, unless the trademark is registered with The Intellectual Property Office, there is little to protect it.
How to protect a trademark
Registration of a trade mark is optional but highly advisable. Registration of the trademark with The Intellectual Property Office confers on the registered proprietor(s) a statutory right to the exclusive use of the trade mark in connection with the goods or services for which it registered.
Registration thereby affords the registered proprietor(s), a right to sue for trademark infringement if there is unauthorised use of an identical or similar mark where such use has caused or is likely to cause confusion to the general public. For example, if Samsung placed an apple on the back of its mobile phones, it is highly likely to cause some confusion amongst consumers as to its origin.
On the contrary, if a trademark is not registered, there is significantly less protection. The only real available option is a common law “passing off” action which is notoriously time-consuming and expensive.