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Learning From The Mistakes Of Others

Learning From The Mistakes Of Others

In my first blog in this short series I discussed the pitfalls associated with the issue of groundless threats; determining ownership of copyright and negative publicity arising from issue of cease and desist letters.  Continuing the theme of learning from the past mistakes of others, this blog will consider: risk of losing unused trade marks; the implications of a loss of confidential information and the importance of not forgetting the poor cousins of IP law - moral rights.

Again, I would acknowledge that my fellow IP practitioners receiving this will be very familiar with these risks, but I hope this blog serves as a useful reminder.  For those less familiar with IP law, perhaps they may help you avoid a pitfall or two.

1. LOSS OF TRADE MARK RIGHTS

It is important to bear in mind the risk of a trade mark becoming vulnerable to revocation through non-use.  For trade marks, the maxim “use it or lose it” applies.  In the UK, if sufficient use is not made for a five year period then an application can be made for the trade mark to be revoked.  Some other countries have a three year period.

A significant risk here is that a trade mark is being used for certain classes for which it is registered, but not all.  If faced with a non-use revocation challenge the trade mark holder needs to evidence adequate use in all classes, otherwise there is a risk of partial revocation.  If planning to make a non-use revocation challenge it is normal to inform the trade mark holder of that asking them to provide evidence of use.  If evidence is not produced, the challenger may feel comfortable in bringing the non-use revocation challenge in the belief they are on strong grounds.  Unfortunately for the trade mark holder it will be too late to swing into action and commence use of the trade mark on receipt of such a challenge as any use made within three months of the non-use application being made is disregarded.

So, what constitutes use?  Certainly token use is not sufficient.  The trade mark holder needs to prove genuine commercial use in the country for which it is registered.  In the case of an EU trade mark sufficient use in just one significant member state may be enough.  Use on a sign above a sweet shop in Malta may not quite cut it.

Those that think they can get around this by applying for new trade marks every five years should bear in mind the risk of revocation for bad faith application.  “Bad faith” can be inferred if there is no intention of actually using a trade mark, despite the efforts made to register it.

2. WHEN CONFIDENTIAL INFORMATION BECOMES JUST “INFORMATION”

Every day in Scotland a business will lose confidential information and trade secrets.  The news headlines will make us believe that we need to watch out for foreign military powers cyber-hacking our systems.  In reality, the risk is far closer to home for many.  By far the greater hazard is that posed by disaffected employees and contractors who will have access to your IT systems for a period of time and then leave, taking sensitive information with them. 

When we are instructed on these cases we typically need to tackle the challenge to show adequate steps have been taken to keep information secret.  Often that is not the case.  It is important to show that the business has kept the information locked down and have treated it as being confidential, to show that it should be protectable.  This can be achieved by storing it in a secure part of your IT system, marking appropriate information as being confidential and limiting access to it to designated employees who have signed bespoke acknowledgments as to the nature of the information.  When (or if!) implemented, the EU Trade Secrets Directive 2016 is likely to require companies claiming protection of information that “reasonable steps under the circumstances…to keep it secret” have been taken.

3. DON’T FORGET ABOUT MORAL RIGHTS

Moral rights relate to the right of acknowledgement as author and prevent derogatory treatment of work.  They require to be asserted on the publication of any work. 

When considering rights in a literary or artistic work we very often consider the economic rights associated with copyright, preventing reproduction, distribution etc.  It is often forgotten that such works can have different value to the author who has invested time and emotion in their creation.  Moral rights protect those non-economic interests. 

Moral rights extend to giving the author a right for the work to be attributed to them, to object to false attribution and the right to object to derogatory treatment of the work.

When acquiring a work protected by copyright it is important to bear in mind that, unlike economic rights, moral rights cannot be sold or assigned.  In such circumstances, before acquiring copyright in a literary or artistic work it is important to have the author waive these rights.  Otherwise, moral rights could present a trip wire.

By Colin Hulme
Partner, Dispute Resolution

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