The Unpredictability of Trade Marks

Trade mark law is never black and white. When it comes to registering a mark, there are often surprises once the application is examined by the Intellectual Property Office (IPO).

For example, Jeremy Phillips recently reported on this trade mark application which has amazingly passed through the examination process, and is currently being advertised. This says it all about the unpredictability of the trade marking process. The mark is quite non distinctive as is clear from the amusing letter featured on Jeremy’s blog. It is difficult to see how this word mark can operate as a badge of origin, and therefore be registerable, and yet The Village Vet was refused. Even more surprising is that the owners of MyGP have already managed to register MyDentists here.

While it is possible to register the most non distinctive of marks if it is combined with a distinctive logo, MyGP is being let through as a word mark. That means the trade mark owner will be able to object to others using these words by arguing that use of the words caused confusion in the mind of the consumer.

In our experience the IPO tends to raise objections to many a mark that are far more distinctive than MyGP, and there is no way of knowing in advance whether an objection is likely to be made. What is even worse is that trade mark applicants cannot rely on the fact that a similar name has been allowed in the past as a basis on which to argue and persuade examiners to use their discretion to allow an application. So, in the end it is the registrant of the mark that suffers, in sometimes having marks refused, or having to pay heavily to appeal IPO objections.

Predicting how an examiner will treat an application can only be judged by guidelines and the law itself, but there are certainly trade mark applications which are rejected which do seem to have the necessary quality of registerability about them. Check through the list of refusals, and comparing these against successfully examined applications such as MyGP gives a sense that the chances of success in registering a trade mark could very well depend on the examiner and even the mood of the examiner on that particular day!

Data Protection Compliance

As reported a couple of days ago by Outlaw.com, HMRC have in recent years been criticised like many other bodies for their failures in complying with the Data Protection Act 1998 by the Information Commissioner’s Office (ICO). The data breaches and the publicity generated has obvious implications for public confidence in the ability of public bodies in particular to administer personal information in compliance with the legislation.

Businesses should be on guard as they are far from immune to negative publicity generated when a breach of data security is revealed. Financial institutions such as banks and building societies have had their own share of negative publicity due to non compliance with data protection law. It is only a matter of time before such adverse publicity stretches further out into industry as a whole. Data protection laws are no longer a marginal issue, if they ever were. Nor is ignorance an excuse for non compliance.

How do such a vast number of organisations, be it public or private, get data protection compliance so wrong? Whilst the legislation itself is by no means clear, and there are wide industry calls for reform of the current legislation, the ICO have published many editions of data compliance manuals for different industry sectors, and there is no shortage of businesses offering their own data protection compliance services. This is perhaps what makes it more surprising when larger businesses have flagrant breaches of data protection law exposed in the media.

What seems to be at the root of the problem is that businesses may well register with the ICO, develop or enhance their own data protection policies, but fail to put data protection compliance into practice on a day to day basis. What could be fuelling the problem is that policy is filtered through so many channels and departments before it actually reaches the individuals actually delegated to handle data, or perhaps a lack of genuine understanding of obligations from the core policy makers of a business. Whatever the internal causes, making sure all those handling data understand the business’ obligations is key to successful compliance and avoiding the likelihood of a hugely damaging public embarrassment.

Facebook Dispute

Aaron Greenspan’s continuing dispute with Facebook owner, Mark Zuckerberg has taken the form of a petition to cancel Facebook’s trademark registration in the USA mentioned here. The origins of the dispute lay in Greenspan ’s claims to have had the original idea for the social networking company.

Two interesting points arise from this – firstly how the question whether a trade mark is too descriptive can differ based on culture and language. While in the USA ‘Facebook’ is apparently a generic term for the kind of photo directory that many schools have published annually for years – see here. In the UK the word has no such meaning, so that the trade mark FACEBOOK is distinctive.

The other point of interest is the way in which people want to claim ownership of an idea – as if it is the idea which is responsible for the success that is achieved with it. Anyone who has been in business knows that it is how you implement an idea that determines whether it succeeds or not. But if you do think yours is a brilliant idea then the only way to protect it is to keep it to yourself, and only disclose it to someone else if you trust them, and have a good, properly drafted confidentiality agreement in place. The agreement does need to be tailored to the situation in hand if it is to have any value whatsoever.

Joint Copyright appeal favours Procol Harum

The recent ruling in the Procol Harum copyright dispute illustrates the dangers of joint copyright. It is a huge practical problem which anyone whose business involves copyright works should pay heed to.

In the case it was decided that Matthew Fisher became a joint author of the musical work for the song ‘A Whiter Shade of Pale’ by composing the distinctive 8 bar melody of the organ solo, including the variation during its second repetition during a recording studio performance. The organ solo was described as "significant and as hugely famous."

So, if you develop a product and another party does further work on it – beware that if their contribution is substantial enough, they could wind up having joint ownership of your work. This could have a number of unpleasant consequences, the most obvious one being protracted litigation. What may not be so well understood is that joint copyright has the potential to kill off your ability to use your copyright work. This is because if you and the other joint owner do not agree on your plans for the work, you are in a stalemate situation, with nobody having the right to exploit the commercial value in the work.

What does it take to create joint ownership? If a work is produced by the collaboration of two or more authors, where the contribution of each is not distinct from that of the other author(s), then there will be joint ownership.

So, for example, if two people jointly write a book, collaborating on all the chapters, researching it all - then they are likely to both own copyright in the final work. On the other hand, if they agree to split the workload so that one writes chapters 1-5, while the other writes chapters 6-10, then they will each have copyright over their own separate portions of the book - because their contributions will be separate and distinct. Where there is joint ownership over the whole book the parties would need each others’ consent in order to exploit the work.

So, if one party uses the material commercially without the other’s consent, they would be infringing the other’s copyright. Joint ownership can end up in messy litigation, so whether you are in the music industry, or in technology, or any other sector that generates copyright, it is critically important to sort out the copyright position before embarking on a project. So, my advice is:

1. Avoid the possibility of joint ownership arising as this is asking for trouble later on.

2. Don’t rely on a court of law as your failsafe option. It is far more cost effective to avoid fighting over a product.

3. Always make a point of discussing and agreeing copyright ownership questions in advance. Record your agreement in writing and make sure it is signed by appropriately authorised representatives of both businesses.

Domain Drop Catching

Domain names are always an important part of any business. For web based businesses they are sometimes a lifeline. So, what do you do if you do not own a domain name you want? One of the available options is to use a domain drop catching service.

This involves registering your interest with a service provider such as Snapnames.com. The provider will then try to acquire the domain when it becomes available (that is, if the current owner fails to renew it), and then offers it to the highest bidder who has registered its interest in acquiring the domain name.

What guarantee is there that you will get your domain name? None. There are many drop catchers out there, and whichever one gets the domain first will get the domain for its clients. Performance is hard to measure, and service providers will be quick to point out that you only pay if you get your domain. This seems fair enough. Given that you can’t expect guaranteed results, the best policy is to register with as many service providers as possible. Registering with Pool.com, and Godaddy as well as Snapnames should give you a good chance of successfully acquiring the domain name.

Procedure

The procedure for using a drop catching service is to arrive at their site, search for the product (the domain name) you would like to have, add it to your online basket and checkout. You are then effectively registering your interest in the domain. Most providers do not charge you at this point but if they manage to acquire the domain, it is important to remember that they own the domain – you still have to buy it from them.

If no one else has registered an interest in the domain following the service provider’s acquisition, you will ultimately get the domain. It is more complicated if others are also interested in the domain name, in that you will end up in an online auction competing with them for the domain.

It can be a tentative process to successfully acquire a domain name using a domain drop catching service and the fundamental point should be remembered – the domain must expire in the first place to have any chance of success!