31785: Intellectual Property Trade Mark Infringement Licensing Passing Off

In September 2006, Nike agreed to pay Hackney Council 300,000 for the unlawful use of the Councils H logo. Nike had not obtained Hackney Councils permission to use the logo. The settlement figure was calculated by taking into account the total global sales of Nike merchandise, and an appropriate percentage was established.

Logos, such as the H logo, can be registered as trade marks or registered designs and copyright may also subsists in a logo as artistic works governed by the Copyrights, Designs and Patents Act 1988 as amended. This particular case was interesting as Hackney is a public sector organisation, and usually these types of disputes are between companies. Most public sector organisations do not see the need to register logos as trade marks or registered designs, especially as many of their designs are quite old. This case shows that it can be in their financial interest to ensure that their intellectual property rights (IPRs) are protected.

Due to the advent of the Internet, cases involving disputes over IPRs are on the increase. This is due to the fact that when someone creates some material which infringes the rights of another, the infringing material can be found relatively easily. Many companies now invest a substantial portion of their capital in assets which are protected by intellectual property, and this is the main contributing factor to the increase in the formal assertion of IPRs. A company that does not actively police its rights is potentially losing a large amount of income through the exploitation of assets which should really be licensed out. Many companies simply do not realise this.

Copyright law protects works from being copied without permission. Not everything is capable of being protected by copyright, and it is important to note that copyright cannot protect an idea, a name, a title or an advertising slogan. An expression of an idea can only be protected if it meets the necessary requirements.

For instance, if you consider a magazine title there is no copyright protection in a title. However, the work may be protected as a registered trade mark and/or under the common law action of passing-off. In order for there to be passing of in this case, there has to be evidence of a misrepresentation, a likelihood of confusion on the part of the public and the likelihood of damage such as to the goodwill of the better known magazine.

Comment: It is very expensive to collate evidence of confusion which is usually done by survey evidence.

RT COOPERS, 2006. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

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Visit http://www.rtcoopersiplaw.com or http://www.rtcoopers.com/practice_intellectualproperty.php

31785

Tuesday, November 27, 2007

Intellectual Property Trade Mark Infringement Licensing Passing Off

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