When charities clash in court over names and brands, there are no winners. This was the message delivered loud and clear in the recent case involving Open College Networks and Open College Network Credit4Learning and their respective logos. It underlines that charities need to think tactically about protecting their rights in their names and brands.
Recent proceedings in the Intellectual Property Enterprise Court – the forum before which many trade mark disputes are heard – further emphasise the need for charities to think carefully about protecting their rights in their names and brands.
In a recent case, the claimant charity, NOCN, was an educational coordinator and registered charity. It held itself out as the umbrella body for ‘Open College Networks’, which are organisations that help adults find routes into higher education. It owned registered word and logo trade marks including ‘OCN’ and a number of ‘swoosh’ elements as below:
The defendant charity, ‘Open College Network Credit4Learning’ was a breakaway organisation, which had adopted some arguably provocative branding:
The case raised some complex legal issues, but there are a number of lessons for charities. The Court’s view was, in summary, that :
- The Claimant could not stop the Defendant using the letters OCN - as the name ‘Open College Network’ was descriptive, then so were the initials. The law has long resisted attempts by organisations to obtain exclusive rights in otherwise descriptive names or phrases (unless the name or phrase has become well recognised as referring to one particular organisation, which wasn’t the case here).
- However, the defendant’s use of the graphics shown above was liable to lead to confusion with those of the claimant, so an injunction was granted to stop their further use.
The case emphasises that more distinctive or unusual elements of a name or brand identity are easier to protect than descriptive ones, but also highlights two further and fairly commonplace issues:
(a) Former local and regional partners can present a significant risk for charities where names and brands are concerned. In the case of international charities, this can include country offices and regional hubs. Putting your trade mark and brand protection in order will help ensure that, if there is a parting of the ways, your charity retains control of these key assets. This means registering key names and brands as trade marks where possible and (as the parties had failed to do here) entering into a clear agreement with your partners in respect of intellectual property issues. The latter can be particularly important where a name may not be capable of trade mark protection (as was the case with ‘Open College Network’.)
(b) As tends to be the case when two charities clash in court, the Court had firm words to say about the fact that charitable funds (over £400,000 in total) had been spent on the litigation, noting that the people who these charities aim to help will suffer.
It’s hard not to wonder what has gone so wrong when two charities get to this point. Even if the parties can’t sort the dispute out unaided, there are a range of alternative dispute resolution options open to charities in these situations, including negotiation through discussion or a more formal mediation, and possibly even getting the Charity Commission or other regulatory bodies involved. There can certainly be more cost effective and reputationally safer ways to resolve matters than rushing off to court.
Our experience is that charities can and do effectively and economically police and enforce their trade mark rights. But it’s crucial they take the right strategic decisions at the right time. We have helped hundreds of charities protect their rights and resolve such issues. We understand the dynamics of the sector and can help guide your charity through these complex areas in a pragmatic and holistic way.
For more information, please contact our Trade Marks team.
Posted on 09/12/2015 in Legal UpdatesBack to Knowledge