Sunday, 20 October 2013

Someone has stuck one of my photos on his website without my permission. What do I do?

A Brownie Box Camera                                Source Wikipedia

Jane Lambert

It is amazing how often I am asked this sort of question. The topic comes up at least once a month at one of my IP clinics.  I am tweeted about it.  I get messages about it through my contact form.   Occasionally, I get the converse question: "I have just had a bill for a lot of money from an image library? Should I pay?"

Until recently the advice to both sides would have been as follows.   "The cost of litigation is prohibitive." I would have urged photographers to let it go. I would have advised alleged infringers to take no notice for nothing was likely to come of the complaint.  I now give different advice for two reasons.  First, the small claims track provides a low cost and virtually risk free forum for photographers and other copyright owners to pursue their claims for copyright infringement.  Secondly, His Honour Judge Birss QC awarded substantial damages for copyright infringement in Hoffman v Drug Abuse Resistance Education (UK) Ltd [2012] EWPCC 2 (19 Jan 2012) which serves as a deterrent to copyright infringers and an incentive to copyright owers.

The starting point for any discussion on this topic is that photographs are included within the definition of "artistic works" in s.4 (1) (a) of the Copyright Designs and Patents Act 1988 ("the CDPA").  S.4 (2) defines a photograph as "a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film."  So long as the photograph is original in the sense that it is not copied from an antecedent work and the photographer is a citizen or resident of the UK or some other country that is party to the Berne or other copyright convention to which the UK is party then copyright will subsist in the photograph as "an original artistic work" for the life of the photographer plus 70 years.

Copyright in an original artistic work is infringed by any of the acts mentioned in s.16 (1) of the CDPA. These include copying the work, issuing copies of the work to the public, communicating the work to the public and making an adaptation of the work without the copyright owner's permission. If you do any of those acts during the life of the author plus 70 years the copyright owner can claim an injunction (an order from the court to refrain you from doing or repeating the act complained of on pain of punishment for disobedience). damages (that is to say, compensation for the loss or damage that the owner has incurred), costs or other relief.

Now damages for infringement of copyright are intended to put the injured party in the position he would have been in had the infringement not occurred. In the case of a photographer that is computed on the amount a willing user would have paid a willing photographer bargaining at arms length.  In Hoffmann the judge assessed that figure at £10,000 which was considerably less than the £28,000 that the photographer had claimed (see Jane Lambert "Damages for Infringement of Copyright in Photographs: Hoffmann v Drug Abuse Resistance" 25 Jan 2012 NIPC Law). I hasten to add that not all photographers would get that fee. These were rather special photos.

The small claims track of the Intellectual Property Enterprise Court ("IPEC"), which has replaced the Patents County Court, will entertain claims for injunctions and damages or other pecuniary relief for up to £10,000.  I have written extensively about this jurisdiction in a number of articles which I have listed in Patents County Court - the New Small Claims Track Rules 20 Sept 2012 NIPC Law. In "How to bring a Small Claim in the Patents County Court"  12 Oct 2012 I set out a simple step by step guide to bringing an action in the small claims track from the letter before claim to a hearing in The Thomas More Buildings of the Royal Courts of Justice.

It is important to note two developments since I wrote those articles.  First, the jurisdiction of the small claims track increased from £5,000 to £10,000 on the 1 April 2013.  Secondly, IPEC including the small claims track is part of the Chancery Division of the High Court of Justice and not a county court.

I shall be presenting a webinar on the small claims track for the Institute of Trade Mark Attorneys on 12 Nov 2013 between 12:00 and 13:00. I shall also mention copyrights generally in my seminar on "Creative Output - Copyright and Related Rights" at 4-5 Gray's Inn  Square between 16:00 and 18:00 on 30 Oct 2013. If you want to discuss this topic generally or have a specific question to ask, call me on 020 7404 5252 or 023 9316 2030 during office hours. You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing.

Wednesday, 9 October 2013

Introduction to Trade Marks

Trade marks everywhere! But how to get one?    Photo Wikipedia

Jane Lambert

In "What is IP? Why do Folk want it? How do they get it? How to learn more?"  20 Aug 2013 I explained that
  • IP (intellectual property) is the umbrella term for the bundle of laws that protect investment in intellectual assets,
  • intellectual assets are things such as brands, design and technology that give one business a competitive advantage over other, 
  • some IP rights ("IPR") such as copyrights and related rights and the right to bring a claim for passing off arise automatically while others such as registered trade marks have to be applied for.
Here I discuss trade marks, whether it is necessary to register a trade mark, where to register a trade mark, legislation, whether you need professional representation, costs, enforcement, revocation and invalidation and make some suggestions for further reading.

What is a Trade Mark?

The definition in s 1 (1) of the Trade Marks Act 1994 is "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."


Even for lawyers. 

Last Friday the highest court in England and Wales handed down judgment in two appeals on what constitutes a "sign" and what is meant by "capable of being represented graphically". One of them concerned chocolate so I analysed it for my patent attorney and specialist clients in "The Colour Purple - Société Des Produits Nestlé S.A. v Cadbury UK Ltd." 4 Oct NIPC Law.

Basically a "sign" can be more or less anything that can be seen or sensed and the Trade Marks Act 1994  gives a few examples: "words (including personal names), designs, letters, numerals or the shape of goods or their packaging."  

The words "capable of being represented graphically" mean that it must be possible to describe the trade mark in words, numbers or some other way. The case I mentioned discussed that point.

"Undertaking" is a high faluting Eurocrat term for a business or enterprise. Not necessarily to do with funerals though undertakers do have trade marks just like any other business. Last year I advised in a trade mark dispute between two firms of funeral directors.

The words "capable of distinguishing goods or services" are important. The sign must identify the goods or services of a business.  It can't do that if the mark is or could be used by everybody in the trade.   For example, "Bread" won't do for a bakery because all bakers bake bread but maybe the image of a loaf coupled with the baker's name might. Unless of course the baker is called Mr. Baker.  Also, a trade mark can't exist in a vacuum.  It must relate to the goods and services of a business.

So in everyday language a trade mark means any name, logo or other sign that can be described in writing which identifies a business's goods or services in the market place.


Trade marks may be registered or unregistered.

If a mark is registered the owner of the registered mark has the exclusive right to use the mark for the goods or services for which it is registered. "Use" for that purpose includes placing the mark on goods or their packaging and advertising, importing or exporting goods or services under the mark.

A mark that is unregistered may still be protected in the United Kingdom by the law of passing off.  That is a judge made law that forbids traders from leading the public to believe that their goods or services as those of another trader by, for example, using the same or similar trade mark or style of packaging.  In many other legal systems there is a similar doctrine known as the law of "unfair competition".

Why bother to register a Trade Mark if it can be protected by the Law of Passing off?

There are two important advantages of registration.

The first is that it is a lot cheaper and easier to prove trade mark infringement than passing off.  In an action  for passing off a claimant has to prove that his or her trade mark is recognized in the market place which is usually done by producing sales figures, advertising and marketing expenditure and samples of advertising which can be expensive and time consuming to assemble.  Then he or she has to show that the defendant has misled or mislead the public by the use of the same or similar trade mark or in some other way. If the defendant disputes that the public has been misled the claimant may have to call witnesses who have been misled or even commission market surveys.  Finally, the claimant has to show that he or she has suffered loss or damage as a result of the defendant's activity such as loss of sales.  In an action for trade mark infringement the claimant has only to point to his or her registration and produce evidence of the defendant's use of the same or similar mark.

The second important advantage of registration is that the exclusive right is backdated to his or her application. The owner of a registered mark who is known as "the registered proprietor" does not have to prove that he or she has started to use the mark in the first 5 years after that application whereas in an action for passing off the owner does for he or she cannot otherwise prove that he or she is known in the market.

Registration of a trade mark does not affect the right to bring a claim for passing off.  The two rights are different though there is a lot of overlap. There are circumstances where it is possible for a claim for passing off to succeed and a claim for trade mark infringement to fail and vice versa.   Often a claim for trade mark infringement and passing off are brought in the same action.

Where to register a Trade Mark

If you want a trade mark for the UK alone you should apply to the Intellectual Property Office ("IPO") in Newport.

If you want to register a mark for the whole European Union including the UK you should apply to OHIM (Office of Harmonization in the Internal Market (Trade Marks and Designs)) in Alicante.

If you need a trade mark for any other country you should apply to the intellectual property office for the country or group of countries concerned.  The World Intellectual Property Organization (the UN agency for intellectual property) publishes a directory of intellectual property offices.  If you want to apply for trade marks in several countries at the same time the British government is party to an international agreement known as the Madrid Protocol that allows you to do so.

Applicable Laws

The basic legislation for the UK is the Trade Marks Act 1994 which has been amended several times.  The IPO publishes a useful unofficial consolidation of the latest version of the Act.  The Act is implemented by The Trade Mark Rules 2008.

In order to create a level playing field for businesses throughout the EU the national governments and European Parliament have adopted Directive 2008/95/EC known as the Trade Marks Directive which requires all national trade mark laws to be substantially the same.  Our Act and Rules have to comply with that directive.

Trade marks granted by OHIM are known as Community trade marks ("CTMs") and the legislation providing for CTMs is called the Community trade mark or CTM regulation (Regulation (EC) 207/2009). The basic provisions of the CTM regulation are very similar to the Trade Marks Directive.

Professional Representation

It is not compulsory to instruct a professional representative to apply for a trade mark and many business people have registered trade marks without any difficulty.  Applications in the UK and many other countries can be made on-line and the IPO, OHIM, WIPO and national intellectual property offices provides lots of useful information.

However, I would nevertheless strongly advise business owners and managers to consider seeking professional advice.   Their priority is to launch or manage their businesses and the time they spend on looking up the law, making searches and drafting and filing an application has to be taken into account. Trade mark attorneys have spent many years studying and practising trade mark law and know it inside out. They can make searches, form judgments as to what signs will or will not be accepted for registration and draft specifications and file them in a fraction of the time that it would take most businessmen or women to do the same and attirneys are much more likely to be right first time. They are also regulated by the Intellectual Property Regulation Board ("IPReg") and are insured against professional negligence.   The few hundred pounds that a trade mark attorney would charge for such work is likely to be money well spent.

The professional body for trade mark attorneys (who are also called "trade mark agents") is The Institute of Trade Mark Attorneys ("ITMA").  ITMA has a searchable database of trade mark attorneys with their websites and contact details.  Also, we have worked with many trade mark agents throughout the UK over many years and if you want a recommendation our clerks will gladly give you 2 or 3 names of firms who have done a good job in the past.  Call them on 020 7404 5252 during normal office hours or use their contact form.

How much will it cost?

If you make your own application on-line for a range of goods or services in the same class in the UK the IPO will charge you £170.

Goods and services are grouped in classes according to a treaty known as the Nice Agreement. If you want to register your mark for goods and services in more than one class the IPO will charge you £50 for each additional class.

To those basic filing fees you must add attorneys' or other professionals' fees or your own time for carrying out searches, drafting specifications and filing the application.   It is worth shopping around but it should be possible to find an attorney who is prepared to do all those things including on-line filing for around £500 plus VAT.

If the IPO or a third party objects to, or opposes, your application you may have to argue your case before an official known as "a hearing officer". An unsuccessful party made be ordered to pay some costs to the successful party but these are usually a fraction of the amount the successful party will have incurred in presenting a case to the hearing officer.  These costs could amount to several or even tens of thousands of pounds depending on the nature of the case and the representation. There is also the possibility of an appeal to the court or an independent lawyer known as "the Appointed Person."

If your application is successful and you are granted a trade mark you may have to sue infringers in the Chancery Division or a county court which could cost you tens or even hundreds of thousands of pounds. Unless you have, or your business has, plenty of resources you should consider taking out insurance against the cost of suing third parties and indeed the cost of third parties suing you for revocation or invalidation of your mark.

There are of course different costs for searches of, applications to, and proceedings in OHIM and foreign intellectual property offices. Information about those costs can be obtained from their websites or from your trade mark attorney.


You must sue for infringement of a British or Community trade mark in the High Court or in a county court that is attached to a chancery district registry.  As there are no chancery district registries in South East England your nearest court is the High Court of Justice in London.

If you claim is relatively straightforward, you seek damages limited to £500,000 and the case can be disposed of at a trial lasting no more than 2 days you can bring your claim in the Intellectual Property Enterprise Court ("IPEC").  On 1 Oct 2013 IPEC replaced a specialist jurisdiction of the Central London County Court known as the Patents County Court and has inherited most of its rules and practice.   If you sue in IPEC you will usually be allowed to recover more than £50,000 in costs from the other side if you win but, by the same token, they cannot recover more than £50,000 from you.

The IPEC also has a small claims track for injunctions and claims for up to £10,000 where recoverable costs (and the risk of adverse costs) are limited to a few hundred pounds.  I have written a lot of articles and given a presentation on the small claims track which are listed in "Patents County Court - the New Small Claims Track Rules" 20 Sep 2012 NIPC Law.  I shall also give a talk on the small claims track to ITMA over the internet on 12 Nov 2013 between 12:00 and 13:00.

If your claim falls outside IPEC's jurisdiction you have to sue in the Chancery Division.  There your liability for costs and that of the other side is unlimited.

As trade mark law is not straightforward be use to instruct litigators and counsel with expertise in IP law.   Though there are plenty of other good law firms with knowledge and experience of IP you are assured of such expertise if you instruct solicitors who are members of the Intellectual Property Lawyers Association. There are also a number of patent and trade mark attorneys who are accredited to conduct litigation in the High Court.

Similarly, if you instruct counsel or a solicitor or a patent or trade mark attorney advocate make sure that he or she has the necessary expertise.  Most barristers specializing in IP law are members of the Intellectual Property Bar Association.

If you try to enforce your rights without a specialist lawyer you could find yourself in serious trouble. For instance, s.21 of the Trade Marks Act 1994 provides a right of action against persons who threaten others with trade mark infringement proceedings without justification. Anybody making such threats can be sued for declarations, injunctions, damages and costs which can amount to many thousands of pounds.

Revocation and Invalidation

You should be aware that your trade mark can be taken away from you after it has been granted for a number of reasons.  For example, it may be revoked if you never use it or suspend your use for up to 5 years for no good reason. You could also lose it if becomes the common name in the trade for a product or service for which it is registered.  It may be that a judge or the IPO decides that you should never have been granted the trade mark in the first place in which case the court or IPO will invalidate your registration.

Applications for revocation or invalidation of a registered trade mark may be made to the IPO or court. You should not be surprised if a defendant to an infringement action counterclaims against you for revocation or invalidation of your registration.

"Trade Marks" or "Trademarks"

"Trademark" is the American spelling and "trade mark" is the spelling used in the UK, EU and much of the Commonwealth.  However, nobody in the UK will complain too much if you use the US spelling here.

Further Information

I gave a presentation on the law of branding which covered trade mark law and passing off on 25 Sept 2013. You can download myt slides and notes which provide links and make suggestions for further reading from Slideshare.

This article plus my presentation will be a foundation for further talks and articles on different aspects of trade mark law.

If you have any questions about this article or trade mark law generally, call me on 020 7404 5252 during office hours or use my contact form.