Monday, 31 March 2014

Protecting the Brand

The United Kingdom Intellectual Property Office

In "Ballet as a Brand? How to bring More Money into Dance for Companies and Dancers" 13 March 2014 I argued that if dancers are adequately to be paid and companies and theatres properly to be funded they should learn from sport and indeed the other performing arts and tap the potentially enormous sums that could be released from harnessing their goodwill. In order to do that they need to protect that goodwill. The best way of doing that is by registering the names, logos and other signs under which they are recognized by their audiences as trade marks. As I said in my previous article I made a search of the UK Intellectual Property Office trade mark database and was surprised to find how few dancers or even ballet companies and theatres had taken that step.

What is a Trade Mark?
The UK Intellectual Property Office defines a trade mark as
"a sign which can distinguish your goods and services from those of your competitors ........... It can be for example words, logos or a combination of both."
It can be an actual name like "W H Smith", an invented name like "Microsoft" or indeed a logo such as the three red arrows against a black background in the shape of a triangle of the National Westminster Bank.  It can be just about anything that can be the recorded on paper or other medium. In ballet English National Ballet's white stripe against a red background and the words ENGLISH NATIONAL BALLET are good examples.

Protection of a Mark without Registration
You can have a trade mark whether you register it or not and there is a limited degree of legal protection for trade marks in the UK and many other countries under a doctrine that we call "passing off" and other countries "unfair competition" ("concurrence déloyale"). In England and Wales (and similarly in Scotland, Northern Ireland and most other English speaking countries) this doctrine has been developed by the judges in a series of decisions over many years. Essentially, it means that you cannot offer your goods or services under a name, logo or other sign that is the same as or similar to that of another trader. If you do, even inadvertently, that trader can sue you for an injunction (order by a judge to do or refrain from doing something upon threat of punishment if you disobey), damages (compensation) and other remedies. To win such an action the complainant must show that he or she is recognized in the market by his name or other sign, that you have misled his or her customers or potential customers by using a similar sign and that he or she has suffered as a result.

Trade Mark Registration
The trouble with passing off is that it takes a lot of time and costs a lot of money to prove those three things. Moreover the doctrine will not help a new or very small business that has not yet established itself in the market. To avoid those difficulties the UK and most other countries provide a service by which businesses can register their names, logos or other signs and the goods or services for which they use or intend to use those signs with a national or supra-national registry. The registry for the United Kingdom is part of the Intellectual Property Office in Newport (also the home town of Ballet Cymru) but businesses can if they so wish register their mark for the whole of the European Union at the Office for Harmonization in the Internal Market ("OHIM") in Spain. By registering a mark the registered you can prevent anyone else from using the same mark in relation to the same goods or services, the same or similar mark in relation to the same or similar goods or services where by reason of the similarity there is a likelihood of confusion including association with yourself. Registration avoids the need to prove reputation, misrepresentation and damage as is required for an action for passing off.

Why bother to register?
If you have a trade mark you have something to license. A registered trade mark is much more manageable, tangible and substantial than a right merely to sue for passing off. Registration makes it much easier to negotiate deals with major clothing, stationery, toys and games, food and drink and other manufacturers and distributors of those products and thus gain royalties on sales of branded products as a result of such deals. Registration also makes it easier to control the quality of such products because you can insert conditions on materials and workmanship into the contract. A trade mark registration will make it easier to prevent cyber-squatters from registering domain names that incorporate your mark under the Uniform Domain Name Dispute Resolution Policy or Nominet Dispute Resolution Service. If you do have to go to court to prevent others from supplying goods or services that incorporates your mark it is considerably easier and cheaper to do that if you have registered your mark.

What Sort of Sign can I register?
The first thing you need is a trade mark that is capable of registration. S.1 (1) of the Trade Marks Act 1994 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."
Although this is a British statute it implements an EU directive which has to comply with a number of international agreements so there are broadly similar requirements at OHIM and in most other countries. The sign has to be capable of distinguishing your goods or services from those of others. Clearly you can't register "ballet" or "dance" simpliciter because those are activities that everyone in the dance world perform but you can usually register the name of a nation, town or other region for a ballet company associated with that town. Similarly there are some national emblems that you need permission to use. Her Majesty allows the Royal Ballet and Birmingham Royal Ballet to use the royal coat of arms but nobody else has that right.

Secondly, you can't register a trade mark that someone else already uses or is about to use for the same or similar goods or services. As there are many registered marks some of which you are unlikely to have heard of it is always a good idea to carry out a search of prior registrations and applications. You can do some of that work yourself but it is always better to commission a search by a specialist librarian or other professional.

As unregistered marks do not show up on a search it is also sensible to scour the internet and specialist magazines and publications to see whether anyone else is using the same or similar sign as an unregistered mark.

How to register your Mark
As there is a lot of help on the "Applying for a trade mark page" on the Intellectual Property Office website I won't go into too much detail here. You will find all the information you need on the articles linked to that page. There are a few extra points that I would stress. The first is that although there is nothing to prevent you from applying for a mark yourself and plenty of people do it is probably more cost effective and certainly safer to instruct a trade mark agent (also known as "trade mark attorneys"). They will carry out the necessary searches, draft the application in the correct way, deal with queries from the examiners and generally shepherd your application through to grant. They will charge only a few hundred pound extra for their services. Trade Mark agents (like patent agents) and regulated by the Intellectual Property Regulation Board ("IPReg") so if you have a problem with your agent IPReg will investigate it and if necessary correct it. If you do not know any agents you can find one through IPReg's "Find an attorney" page. Secondly, you must be sure that you will use the mark in respect of the goods or services for which you register it within 5 years or you could lose it. Thirdly, there are a lot of sharks who prey on unrepresented applicants demanding money for listing and other services that you don't need and often never get. Be on your guard. The Intellectual Property Office gives loads of warnings about those practices but it is amazing how many businesses fall for this trick.

How much does it cost?
It depends on how many goods or service you want to register, whether you use an agent, what extras you need and whether your application is opposed. Goods and services are grouped in classes and you can register your mark in any number of them. The basic cost for a UK mark is £170 which includes one class and £50 for each additional class. Agents usually charge a few hundred pounds for preparing and filing the application.  They would probably advise you to commission a search which will be another £100. If your application is opposed you will have to spend a lot of money on legal representation if you want to fight though you may get some of that back. Once you get your mark I would recommend your subscribing to a watch service which looks our for applications that are similar to your registration so you can challenge it in good time. Unless you have plenty of money I would also advise you to take out IP litigation insurance so that you can afford to take an infringer to court.

Further Information
I am making this information available to the ballet world pro bono as a thank you for all the pleasure dancers, companies, theatres and schools have given me throughout my life. I have offered to give a free half day seminar on IP relating to dance to Middlesex University which has a very successful dance programme in its performing arts department. I have already lectured on IP in the law school and I hold an IP clinic there once a month. If my offer is accepted I will ask for the University to admit dancers, administrators and others to the seminar free of charge. In the meantime I will answer any questions that anyone has by phone or email. My number is 020 7404 5252 and you can contact me through my contact form, twitter, Linkedin, G+. Facebook or Xing.

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