Archive for the 'Trade Marks' Category

Getting tangled in The Ivy

 A recent dispute concerning the use of the name “THE IVY” by a restaurant in Glasgow has served as a useful reminder of the value in carrying out trademark clearance searches before starting to trade.

Last year, the owners of “Glasgow’s Ivy Bar and Restaurant” received a letter threatening it with trade mark infringement from the owners of The Ivy, the famous restaurant in London, which is owned by Caprice Holdings.  The Glasgow restaurant was forced to change its name and according to The Herald the estimated costs and losses associated with this rebrand are around £30,000.  £20,000 of this is attributed to lost business and £10,000 was incurred in creating a new website, signage and other rebranding for the Glasgow restaurant. 

The law on trade mark infringement

In the UK, a registered trade mark is infringed if a person uses without the owner’s consent in the course of trade (i) an identical mark for identical goods/services and/or (ii) a similar or identical sign is used for similar or identical goods/services which results in actual or likely confusion amongst customers as to the origin of the goods/services and/or (iii) where use of a sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of a famous trade mark.

Caprice Holdings could have had claims against the owners of the Glasgow restaurant under all three heads.  UK case law states that descriptive or semi descriptive elements such as the words “Glasgow”, “Bar” and “Restaurant” are not considered to be part of the sign or real brand being used.  On that basis Caprice Holdings could have claimed trade mark infringement for identical sign/identical services being provided under the key brand name the “IVY”. Even if that was not the case and the trade marks were not found to be identical, the similarity of the respective trade marks and the fact that they are both are used to provide identical services means that there was a strong likelihood of confusion.  Any differences between the respective trade marks are not likely to be sufficient to distinguish Glasgow’s Ivy Bar and Restaurant from The Ivy.  In addition to those arguments, it is quite possible that Caprice Holdings would be able to show that THE IVY is a famous trade mark with a very well known reputation for restaurant and bar services and that by using “IVY” in “Glasgow’s Ivy Bar and Restaurant” they are seeking to ride on the coattails of the famous trade mark.  All such activities could have supported a claim of trade mark infringement.  In addition there could have been a claim of passing off to protect the unregistered trade mark/goodwill built up in THE IVY.  The existence of the trade mark registration however would have made the claim easier to establish.

Prevention is better than cure

This dispute serves as a useful reminder that prevention is better than a cure when it comes to trade mark infringement.  Businesses should carry out appropriate clearance searches before selecting and using a brand or trading name and it could save them having to carry out a time consuming and costly rebrand further down the line.  Although not always fully comprehensive a quick check of the free online trade marks database should have revealed that Caprice Holdings Limited owns a community trade mark (number E6057517) for THE IVY  which is registered in the UK for amongst other things, restaurant, bar and catering services.  Even a simple Google search for “IVY” brings up the London restaurant as the first search result and it is likely that anyone operating in the restaurant scene would be aware of the famous reputation of The Ivy.

If you have any concerns about a business or trading name that you or your company is using or plans to use and you wish advice on this please contact one of our IP team.  One of the options we can discuss with you is our IP Audit Toolkit which can help to identify your intellectual assets and develop strategies to use them.

Mark Cruickshank

IPR infringement and mobile apps – why Apple provides an online reporting tool

Last week’s iOS Dev Weekly email contained an item on the online facility provided by Apple to allow you to report alleged IPR infringement issues with apps on the App Store:

…If you are having copyright or trademark issues [or in fact any other IPR] with your app Apple now have a dedicated App Store process for dealing with this. What I found interesting about the description of this is that it states that it will put you directly in contact with the provider of the disputed app. Surprising.

From Apple’s perspective, this actually makes a lot of sense. Here’s why.

Pretty much anyone can publish an app for distribution by Apple through the App Store. However, whilst Apple does do some quality control on apps that are submitted, it doesn’t have the resources (or time) to carry out an indepth analysis of whether the submitted app infringes any third party IPR. It simply isn’t cost effective for Apple to do so, given the global nature of the App Store – researching whether a particular app infringed third party copyright, patents or trade marks in various countries around the world would cost many, many, thousands of dollars.

This means that there is a very real risk that apps available for sale on the App Store might infringe a third party’s IPR – whether through deliberate infringement, unintended copying, being unaware of a pre-existing patent (whether in the same territory or abroad) or simply the sale of an app by, say, a British registered trade mark holder in a country where the trade mark in question is already owned by someone else.

The dispute process
When an IPR infringement claim does come to light, for the reasons given above it is not practical for Apple to investigate it. It just isn’t worth its while as there’s no financial benefit to Apple from doing so, and Apple is unlikely to have the information required to respond to the complaint. So, instead, it makes much more sense for Apple to provide a facility for complainers to submit a claim straight to the person or organisation that submitted the allegedly infringing app so that the two parties can sort out the dispute directly.

In the meantime, in my experience Apple will suspend (or threaten to suspend) the allegedly infringing app. This keeps Apple in the clear in terms of any alleged infringement by Apple (remember, Apple is simply an agent (or Commissionaire) – it doesn’t licence/sublicence non-Apple apps to end users) and its obligations under the DMCA, as it has taken action as soon as it became aware of the issue, and puts the onus on the recipient of the infringement claim to sort it out so that it can get its app back on the market.

Of course this approach isn’t without its problems – particularly for those on the receiving end of an infringement claim, as the online reporting tool is open to vexatious and frivolous claims, with the onus on the recipient to then demonstrate to Apple that there isn’t an issue. But for aggrieved rights holders it provides an effective way of raising IPR infringement issues directly with the alleged infringer.

Be prepared
It also emphasises the importance of thinking about your IPR before you launch your app.

Are you comfortable that your chosen brand won’t infringe that of a third party? Have you thought about who owns IPR in foreign jurisdictions before you launch an app globally? Are you sure that any third party code utilised in your app is properly licensed? Have your developers assigned across ownership of any code they create? Have you taken steps to register any regiserable IPR that you create?

To learn more about protecting your IPR, download our free guide.

PS It’s not just Apple. A quick check reveals similar facilities on Google Play for copyright infringement and trade mark infringment (although on the latter it appears that Google will actually carry out some investigation itself).

A deep fried Mars a day…… TechBlogger quoted in BBC News story

Scotland is famous for many culinary delights, including haggis, Irn Bru and of course the deep fried Mars bar. 

According to press reports a few months ago, the Carron Fish Bar in Stonehaven (which claims to have created the latter deep fried delicacy) was considering applying for Protected Geoographical Indication status (on which my colleague John McGonagle has blogged previously). 

The deep fried Mars bar story has caused quite a stir in the media, following news earlier this week that Mars, manufacturer of the Mars bar (and owner of various trade marks, including “Mars” and “Mars bar”) had written to the owners of the Carron to ask them to post a disclaimer on their menu, distancing the confectionary company from any endorsement of the a snack not in-keeping with Mars’ “commitment to promoting healthy, active lifestyles”.

The story raises a number of interesting intellectual property law issues, and I appeared on BBC Radio Scotland’s Newsdrive Programme on Wednesday 5 September 2012 to discuss these.

To find out more, you can listen to the broadcast here (it starts at 21.30 minutes). My comments were also picked up and quoted in a BBC News online article here.

The story is a good lesson in the importance of understanding what intellectual property a business owns or uses. In this case, the Carron has got some good publicity out of the PGI application, but has also now attracted the attention of Mars’ lawyers.

To find out more about intellectual property rights, download our free guide to protecting your IP, or come along to our forthcoming seminars, where we’ll be discussing what businesses can do to maximise the value of and return from their investment in IP.

Mark Cruickshank

Let the Games begin – but beware of the brand!

My colleague Robert Buchan and I have written an article on the current hot topic of brand protection of the London Olympics. 

The article looks at the wide ranging law in place to prevent non sponsors from seeking to associate themselves with the London Olympics.  In particular, the article will be of interest to any businesses or individuals who are hosting any Olympic themed events or who are thinking about issuing any promotional material which refers (even discretely!) to the Olympics.

You can read the full article on the Brodies’ website here.

How do you deal with the IP issues? Let us know by taking part in our survey on how organisations value and exploit their intellectual assets.  

Mark Cruickshank

Sharing your user generated content from the Olympics – what can and can’t you do?

Are you going to the Olympics this year?

Then before you get your camera/smartphone out you should have a quick read of LOCOG‘s terms and conditions.

For those that don’t want to read the terms and conditions in full, I have set out a commentary (not a critque) on the key terms below.

Can I share my photos and video clips from the Games on social media websites?
The terms and conditions of purchase prevent spectators contain fairly restrictive conditions on what spectators may do with photos, videos and sound recordings that they take whilst attending the Games:

Images, video and sound recordings of the Games taken by a Ticket Holder cannot be used for any purpose other than for private and domestic purposes and a Ticket Holder may not license, broadcast or publish video and/or sound recordings, including on social networking websites and the internet more generally, and may not exploit images, video and/or sound recordings for commercial purposes under any circumstances, whether on the internet or otherwise, or make them available to third parties for commercial purposes.

Note in particular the prohibition on commercial exploitation (understandable, given that extensive commercial broadcasting and photography arrangements are already in place) and sharing content on social networking websites “and the internet more generally.”

“Games” means the London 2012 Olympics and London 2012 Paralympics. This will clearly include footage of the actual sporting events and stadiums, but does it go further? Given that these restrictions form part of the ticketing terms and conditions I think they can only apply to media created by spectators within the ticketed areas – so inside Olympic Park and the other venues.

So if you want to take a photo of the stadium using Instagram (to pretend that you are actually at the 1968 games in Mexico City), tag some friends in a video of an event at the North Greenwich Arena on Facebook, or even simply tweet a photo of the view of Olympic Park from the top of The Orbit, then tough.

If you share a photo of the Olympic stadium taken from outside the perimeter of Olympic Park, or the Olympic Rings hanging from Tower Bridge, then you are presumably ok.

But there are millions of spectators. Will LOCOG actually enforce this?
Whether and how LOCOG will actually enforce this restriction remains to be seen. With millions of spectators attending events, it’s hard to see how it can monitor uploads to all the social media networks, never mind ensure that non-compliant content is taken down.

And what about athletes and support staff? They won’t be subject to the terms and conditions of purchase. Have they had to accept similar restrictions on their use of social media?

The conundrum for LOCOG is the difficulty in balancing the legitimate interests of it commercial rightsholders (both broadcasters and sponsors) and inoffensive personal use of social media networks by millions of spectators.

Legally, these terms might protect those commercial rights, but whether they will work in practice is another question.

So can I share content on the London 2012 website?
Perhaps confusingly, LOCOG does appear to invite spectators to share content on its own website. But, again, you might want to check the terms of use before you do this.

As you might expect, by uploading content onto the London 2012 website you grant LOCOG a fairly wide licence to exploit and reproduce your user generated content (UGC). That licence is, on the face of it, non-exclusive, so in theory you could also grant a similar licence to other entities and (provided that you are not breaching the spectator terms and conditions mentioned above) share it on other social media websites, or offer it for commercial licensing through, say, Flickr and Getty Images.

But there is a sting in the tail. Firstly, you waive your moral rights (so have no right to be acknowledged as the creator of the UGC). Secondly, the licence is perpetual, so once uploaded it is unlikely that you can bring it to an end by, say, removing your UGC from the website. And thirdly:

…you grant us an option (“Option”) to acquire the exclusive rights to utilise such UGC in all media by way of an assignment by you to us…(“Assignment”), which Option we may exercise on giving you notice by email within 90 days from the date on which you upload the UGC, and you agree that: (A) during that 90-day period and for 30 days thereafter, you will not utilise or authorise anyone else to utilise such UGC in any commercial medium or in any public, non-commercial medium without our prior written consent; (B) within 30 days following our giving such notice, you and we shall negotiate (both acting in good faith and reasonably) on an exclusive basis a sum to be paid to you in consideration of the Assignment (“Option Sum”); (C) if the Option Sum is not agreed within such 30-day period, we shall thereafter have a right of last refusal, under which (1) you will give us written notice by email setting out the proposed terms of any bona fide third-party offer…and we shall have a 30-day period in which to acquire the same on the same terms and (3) if we decline, you may only enter into such third-party agreement subject in all applicable respects to our and our licensors’ proprietary rights and then on the exact terms offered; and (D) in the event that the Option Sum is agreed, you shall promptly following our request sign a written confirmation of the Assignment…

what does this mean in plain english?
What this means is that LOCOG has the right to acquire ownership of your UGC, should it so wish. If it gives you notice that it wishes to do this then you will have to remove the UGC from any other social media website for a period of 120 days, whilst you agree a fee for the assignment. If you don’t agree a fee then LOCOG has the right to match any fee agreed with any third party. However, the value to any third party agency may be diminished by the extensive (and perpetual) rights already granted to LOCOG when uploading the UGC to the London 2012 website.

In short, this clause appears to be another way of limiting the ability of third parties to commercially exploit Olympics related content.

So, if you take a fantastic photo of the Olympics atmosphere that you think could become an iconic image, then think carefully before sharing it on the London 2012 website.

As the terms and conditions say:


You have been warned!

PS do you accept user generated content on your website? How do you deal with the IP issues? Let us know by taking part in our survey on how organisations value and exploit their intellectual assets.

Is ACTA dead in the water?

The European Parliament has delivered a resounding veto to the Anti Counterfeiting Trade Agreement (ACTA).

In my previous blog on ACTA, I wrote about the widespread opposition to ACTA on the grounds that it contains:

…vaguely worded provisions which could potentially allow internet service providers to monitor and disconnect repeat infringers and that it makes available unfair statutory damages for online music infringement to rights holders.

It could also have:

…given customs officers much greater powers to search and seize goods which are suspected of infringing intellectual property to prevent them from crossing national borders.

It will come as no surprise therefore that the European Parliament voted against ratifying ACTA on 4th July. The margin by which it was rejected, 478 votes to 39 (with 165 abstentions), is indicative of the unpopularity of this agreement.

What does the rejection mean?
It now means that none of the EU Member States can join ACTA.  In truth, the veto will have little impact for the internal laws of many member states (particularly in Scotland and the rest of the UK) because most of the proposals set out in ACTA are already present in domestic and European law. 

However, the rejection has more significance in terms of international enforcement and co-operation.  ACTA aimed to allow greater cross border protection against intellectual property infringement and it would have allowed rights holders and customs officers enhanced powers in countries where those powers did not already exist.

Where now for ACTA?
The rejection of ACTA will be celebrated by its opponents, such as supporters of open rights groups but is this really the end for ACTA? Perhaps not.

Prior to the European Parliament’s vote, the Court of Justice of the European Union had been asked to rule on ACTA’s compatibility with European law.  That decision will still be issued (irrespective of the European Parliament’s veto) and the EU Trade Commissioner will then discuss with the other international sponsors of the Agreement how ACTA wil be taken forward, if at all.

ACTA could also still come into force in its current form in other sponsor countries if six members of the agreement ratify it. However, without the approval of the EU (and potentially the US) its impact will be much less forceful.

Nevertheless, this is likely be the end of the road for ACTA in its present form (certainly in the EU) as it would require wholesale modification before being re-submitted to the European Parliament. 

Given the opposition to ACTA so far, perhaps it would be better simply to acknowledge the widespread unpopularity of the Agreement and consider alternative means of trans-national intellectual property enforcement.

Mark Cruickshank

Our view on YouView

In a revelation that will probably strike terror into the heart of my bosses here at Brodies, a few years ago I actually applied to be on The Apprentice.

I didn’t get asked to partcipate, presumably because my CV didn’t make enough wild claims about having “invented electricity” or “cured cancer”.  I mention The Apprentice because its star, Lord Sugar, is the chairman of YouView, which was finally launched yesterday – around 2 years behind the original schedule.

What is YouView?
YouView is a free UK internet protocol television (“IPTV”) service sponsored by the BBC, ITV, Channel 4, Channel 5, Arqiva, BT and TalkTalk, combining the UK’s freeview digital channels with on-demand programming. It hopes to appeal to the 13-15 million British households unwilling to pay for TV from BSkyB or Virgin Media. To date the interested parties have spent a total of £70m on the YouView project.

YouView is being made available in two ways:

  • From retailers with no further subscription payments necessary. They will begin stocking set-top boxes later this month, made by South Korean manufacturer Humax and priced at £299.
  • From internet service providers BT and Talk Talk as part of one of their broadband packages. It’s understood that these BT and Talk Talk offerings will include a set-top box costing significantly less than £299.

Lord Sugar was brought in to front the stalling YouView project last year, presumably on the grounds that he “understands” set-top box technology (via Amstrad’s involvement as a supplier of set-top boxes for Sky Digital) and also that he “understands” television.

Both of these propositions are open to debate – BSkyB became Amstrad’s sole customer, to the extent that there was a takeover in 2007, while I think it’s fair to say that the format of The Apprentice is very tired and in serious need of a revamp (as an aside, if you are interested in the legal aspects of TV formats, you may wish to read an article I wrote on the subject for the Law Society of Scotland Journal a few years ago). 

Certainly, the industry consensus is that the launch of YouView has been rushed to co-incide with th Olympics, with set-top boxes still undergoing beta testing as I write.

On a superficial level, YouView has been accused of recklessness in launching a major brand that could be considered confusingly similar to the existing international online video-sharing service YouTube.  Unsurprisingly, the present status of the “youview” mark seems unclear, with the UK Intellectual Property Office listing it as “Opposition Outstanding” – meaning that somebody or something is objecting to it. 

There have also been strong suggestions led by Sky and Virgin Media that the service is an anti-competitive cartel.  These complaints have been (provisionally) refuted by Ofcom.  The introduction of Sky’s NOW TV as one of two launch “content partners” (the other being Scotland’s digital media company STV) looks like a gesture to defuse these concerns, but they are not likely to vanish.

On a technical level, there remain serious questions about the viability of such a content-rich offering. Will UK broadband be up to the task?  Will average households have internet connections physically close enough to their television so that the Wi Fi-less YouView box can be connected to the internet?  Will a lot of customers unwittingly watch too many programmes and incur substantial costs? A quick look at YouView’s terms and conditions  shows a prominent “health warning” regarding broadband limits, with Clause 7.3 also stating:

Your internet usage is subject to the terms and conditions which your internet service provider applies to your use of its services. You should be careful that you do not exceed any cap on use of your broadband connection which applies to your broadband account with your internet service provider. If you are not sure whether or not you are subject to any cap on use of your broadband connection you should check with your internet service provider.

Has YouView missed the boat?

In addition to these concerns, there is also a suggestion that YouView has left it too late to enter a marketplace already crowded with catch-up services (such as the iPlayer and ITVPlayer), and digital channels available on Freeview. Critics claim that YouView’s originally innovative features – such as an electronic programme guide (“EPG”) that allows users to scroll back seven days to access a catch-up service – are no longer so revolutionary. Indeed, some commentators go as far as to claim that “second screening” will render the EPG obsolete.  And will the BBC, ITV, BT et al actually want to completely back a service that may eclipse their existing catch-up TV offerings?

I will leave you with the views of outgoing Director General of the BBC Mark Thompson, who on 18 June attended a “Valediction”, or farewell meeting, with the Culture, Media and Sport Committee to discuss his achievements over the past eight years and the future of the BBC.  When asked by the Select Committee if YouView had missed its commercial window, he gave an interesting answer:

The key thing is IPTV turns out to be quite difficult to do. Google and Apple are two of the most successful and most powerful technology companies in the world. I think if they were here today they would accept that neither Google or Apple are yet satisfied that, despite the fact they have been working very hard on this, they have yet found a killer solution. I believe that the philosophy we are bringing to bear with YouView, which I have had a significant part in formulating, which is essentially that people will want this device or want a television-like experience.”

Holy social media lawman…should lawyers use Twitter and Facebook?

The legal profession and social media
To tweet or not to tweet, that is the question.

Numerous surveys indicate that social media networks are an important source of new work and we are all glued to our smartphones and tablets sharing views and information with a global audience. It therefore seems a rhetoric or after the event question to ask whether and how lawyers should use social media. 

However, when you delve beneath the surface of social media, questions arise for example about confidentiality and the appropriateness of on-line connections between lawyers involved in ongoing transactions or disputes or even between lawyers and judges. In addition issues about liability for employees activities and on-line reputation management need to be factored in too.

Scottish guidance
Clear guidance and policies on social media are key but are still not in place in many organisations.  The good news is that guidance is at hand for Scottish lawyers. Recently the Law Society of Scotland issued guidelines on the use of social media covering topics such as business opportunities, ethical and professional considerations and security of confidential information. A copy can be located here.

The guidelines were prepared in conjunction with the Law Society of Scotland Technology Committee and as a committee member I know they formed part of a wider global research programme on the impact of online social media on the legal profession carried out by the International Bar Association (IBA).

An international overview
The IBA report (The Impact of Online Social Networks on the Legal Profession and Practice) is described as the first global report on the issue of social media use in the legal fraternity canvassing the attitudes of 47 bar associations. The submission made by the Law Society of Scotland is referred to and quoted throughout the IBA report and demonstrates a practical and positive attitude towards the use of social media. A copy of the report can be found here.

It is interesting to note that in many countries there are significant concerns about whether it is appropriate for lawyers to use and engage on social media platforms and cultural differences may need to be borne in mind when aiming to connect with lawyers and professionals in other countries.

Clearly social media is a key part of day to day professional and personal life opening up fantastic business and networking opportunities. The genie is not going to go back in the bottle, and nor should it, but the old adage of think before you click/tweet/post/link is even more important as our digital footprints grow.

Robert Buchan

Brodies launches Intellectual Property survey on how organisations value their intellectual assets

In conjunction with ADS, SCDI and ScotlandIS, Brodies is launching a 60 second survey to identify how key intellectual property (IP) assets are dealt with and the IP issues which matter most to businesses today. We want to hear your views and appreciate your participation.

Year on year investment in the UK in intangible assets such as IP is higher than investment in traditional physical assets such as machinery or premises. IP rights, whether to a brand, design or manufacturing process, are often the most valuable asset that a business owns.

For any business to maintain a competitive advantage in the marketplace and maximise the return on investment, IP rights require to be properly managed or they will simply go to waste. Are you confident that you are making the most of your IP?

Please click here to take part (anonymously) in our 60-second survey and let us know what matters most to you in intellectual property.

We look forward to sharing the results with you.

Thanks for taking part!

Robert Buchan

PS here is our launch advert from this morning’s edition of The Herald. Use the QR code or the link above to let us know your views:

Brodies advert in The Herald 20 June 2012 launching the IP survey

Law Society of Scotland World IP Day Conference 2012

This year’s Law Society of Scotland World IP Day Conference was held at the Faculty of Advocates on 27 April 2012. The conference boasted two top notch speakers Pete Wishart MP and Aileen Alexander who will be active players in the field of IP over the next few years.

Mr Wishart is the MP for Perthand North Perthshire (and fomer member of Scottish band Runrig!).  He spoke about the importance of creative industries in Scotlandand the UK and the value that they bring to the economy.  He stressed the importance of adequate robust legal protection for the creative industries to ensure new content continues to be generated. He spoke in support of the Hargreaves Report (Digital Opportunity – A Review of Intellectual Property and Growth), which is aimed at modernising the UK’s IP laws to stimulate innovation and to allow it to be adequately protected and rewarded in the digital age.  One of the main themes of Mr Wishart’s talk was the creation and development of the Digital Copyright Exchange (DCE).  The DCE was propsed by Hargreaves to offer a quick and efficient licensing network of copyright works which had ‘opted in’ to the scheme. It would for example, allow someone wishing to use a piece of music in a film to quickly and efficiently find out who the owner is and the terms/cost on which they can use the track. Mr Wishart could provide an inside track view and advised that Richard Hooper will report on his recommendations to introduce the DCE in the summer of this year with a view to having the DCE up and running within the year.  Given the various legal challenges which the Digital Economy Act and previous Intellectual Property Reviews like the Gowers Review have faced, the progress and possible enactment of such a key plank of the Hargreaves’ report will be very interesting and could create a world first DCE.

The second speaker Aileen Alexander, is a senior legal manager of Glasgow 2014 Limited, the Organising Committee of the Glasgow 2014 Commonwealth Games. She provided an interesting insight into the variety of steps which have been and will be taken to protect the intellectual property associated with the Commonwealth Games (a link to the act can be found here). This included the registration of the Glasgow Games’ trade marks and logos both in the UK and in other Commonwealth Countries, the measures they will take to monitor and prevent ‘ambush marketing’ (when unauthorised companies try to promote themselves at the games to the detriment of the official sponsors).

 Many thanks to the organisers of this excellent and thought provoking event!


Mark Cruickshank

Twitter: @BrodiesTechBlog feed

December 2017
« May    

%d bloggers like this: