Protecting your name against deliberate or accidental copying by others may be simpler and cheaper than you think.
Many charities do not protect their intellectual property rights, particularly those in their names and brands. Sometimes this is on ideological grounds: a deliberate refusal to see the charity’s name, which can be little more than a description of what it does, as the marketing man’s ‘brand’, in the same sense, if not of the same scale, as Coca-Cola or Vodafone.
However, this high moral stance, where it means not taking action to protect a charity’s name against others infringing its rights, runs the risk of funding being diverted, its good name being tarnished, or – worse – effectively losing the right to its name altogether.
A problem for charities looking to enforce rights in their trade marks is expense. The ultimate sanction to take the infringer to court, seeking an injunction to stop use of the offending name. But even a straightforward action of this kind can cost in the five-figure range.
But there are effective ways of taking action far more cheaply – if the trade mark owner takes positive early action and is prepared to apply creative solutions.
Before we look at the tactics that are available, there are two basic points that apply to any names or brands you want to protect:
1. Register your name
The first is to protect the name of your organisation, as well as key campaigns and initiatives, by registering them as trade marks. This is your way of cementing your ‘claim’ to that name. A registered trade mark makes it much easier to stop another using a name that’s too close to yours.
2. Take action when it is infringed
Secondly, you should take action as soon as you become aware of any infringement of your rights. Your first step should not be court action, but might well be a stronglyworded lawyer’s letter. Writing a letter is cheaper than suing someone, and depending on the strength of your case, the other party may well give in without a fight.
If the allegation of infringement is not sufficient to resolve the matter, you need to look at alternatives. Court is one option, but there are other alternatives that may work better and are almost certainly cheaper.
Involve the Charity Commission
If your opponent is another charity, then the Charity Commission may be prepared to intervene. Charity law gives the commissioner the power to force a charity to change its name in a number of situations, including where:
- the name of the charity is likely to give the impression that the charity is connected in some way with any body of persons or any individual, when it is not so connected; or
- the name of the charity ‘is the same as, or in the opinion of the Commissioner too like, the name, at the time when the registered name was entered in the register in respect of the charity, of any other charity
A direction to change its name on the register of charities will not in itself prevent a charity from using that name as a working name. However, such a direction may provide compelling reasons for a name change. Most importantly, a finding of the Charity Commission that two names are ‘too like’ each other is likely to assist the holder of the earlier name, should it then bring court action for infringement of its rights. If the other party has resisted up to this point, this is the sensible time for it to back down.
The internet has its own rules
The laws governing trade marks extend to the internet – material published on a website can infringe a trade mark owner’s rights in the same way as printed publications, television advertising etc. Also, there are a number of internet-specific rules that can be used to your advantage.
One option may be to request the domain name registrar cancel the other party’s domain name, on the basis that it conflicts with your trade mark. However this is not always straightforward – you need to demonstrate that the domain name was registered in ‘bad faith’. This is difficult to prove except in the most egregious cases – e.g. someone setting up a ‘scam’ website to cause deliberate confusion with your organisation.
A more general-purpose option may be to write to the other party’s internet service provider (ISP) pointing out that they are hosting material that infringes your trade mark rights, and insisting that they remove the relevant pages. While mere hosting of web pages may not make the ISP liable for infringing your rights, many ISPs are not prepared to take the risk.
If the ISP is prepared to remove the website, you will have achieved a significant success by writing a single, uncomplicated, letter. One problem is that the infringer can simply move its website to another ISP (maybe one overseas that is less fussy about the material it hosts). However, this tends not to happen – the infringer will recognise that you are willing and able to enforce your rights, and will back down.
Can Trading Standards help?
A final alternative to court action is using Trading Standards to help you enforce your rights. Trading Standards will usually only become involved where a criminal act has taken place. Frustratingly, whilst selling goods under another party’s registered trade mark is a criminal offence, providing services, or fundraising, are not necessarily so.
Nonetheless, in more clear-cut cases of infringement, and particularly where there is an element of dishonesty involved, it is often possible to find a criminal ‘peg’ on which to hang the infringing acts. Also bear in mind that less scrupulous types may be unfazed by a threat of civil action, but are more likely to balk at the prospect of criminal prosecution.
The two golden rules of involving Trading Standards people are:
(i) give them as much information as you possibly can (including things they have not asked for, if you think they are relevant); and
(ii) in the nicest possible way, keep on at them. They are busy people and will have other fish to fry – whilst you need to keep them on your side, you need to make sure that your case is being taken seriously.
The above should make clear that enforcing rights in your brands/names/trade marks – whatever you want to call them – is possible in practice as well as in theory.
Posted on 28/10/2015 in BWB PublicationsBack to Knowledge