IMPACT®

Creative Commons: IMPACT guide to the essentials

Whilst still in his role as an IMPACT® lawyer, Andrew Mills wrote an overview of Creative Commons for the October/November 2007 issue of Computers & Law. What follows is an IMPACT®  guide on Creative Commons, based on Andrew's article.

Amazon: one step closer to DRM free tracks in the UK?

According to a short piece on Guardian Technology, Amazon has announced that DRM-free music tracks will start being sold on certain of its 'international sites' during 2008. Whilst Amazon hasn't said which sites it is referring to, the Guardian presumes that this includes Amazon's UK site. The ecommerce giant is not giving details as to the timetable for rolling out the service to the sites, possibly because talks with the record labels are ongoing.

IMPACT Guide To The Changes To UK Trade Mark Practice

As mentioned in our earlier post as of 1 October 2007, there are important changes to the UK trade mark examination practice and these changes may affect you.

What is the change?

Previously, following receipt of a UK trade mark application, the UK Intellectual Property Office (IPO) conducted a search of prior marks affecting the UK. The IPO would then raise objections to a trade mark application if it felt that any prior marks identified were of concern due to their similarity and/or likelihood of confusion with the pending application. Following formal objections raised by the IPO, trade mark applicants could only continue with their application if they were able to overcome the objections.

Companies Act 2006: what does it mean for you? FC guide

Important provisions of the Companies Act 2006 are due to come into force in October. Some provisions are already in force, and others come into force during the course of 2008.

Our Corporate Finance team has published two bulletins about the Act, which give the lowdown on its implications for businesses:

• Download companies_act_commercial_review_part_i.pdf

• Download companies_act_commercial_review_part_ii.pdf

These are being accompanied by a range of detailed briefing sessions for clients.

How to review a software licence

The IPKat has featured a series of tips on how to review software licences. The tips are designed for existing lawyers new to the field. The current post is probably the most useful, with 19 points from lawyer Richard Bridge.

"1. Which side is she on--user or licensor?
2. Law and jurisdiction (beware effect on the Unfair Contract Terms Act (UCTA) on use of jurisdiction provisions to sidestep the Act)
3. Dispute resolution/binding arbitration/dispute escalation (beware
much the same)
4. Service levels?
5. "There is no such thing as error-free software" - exclusion, limitation (particularly as to which host environments the program might or might not work with), structuring to maximise effect of the schedules in UCTA about the things to which UCTA does NOT apply
6. Backups (offer backup media at a reasonable price), the things
implied in to software licences and barred from them by the CDPA 1988. Source code escrows?
7. The grievous crime of users trying to get round encryption to
exercise such rights!
8. Ownership of media/loan; if loan, access to retrieve
9. Infringment warranties/indemnities (not). If commissioning,
ownership of copyright and proof of subsistence and title.
10. Costs in litigation if litigation can take place outside UK
11. Service (not in litigation)
12. Service (in litigation)
13. Is it the sort of software users might adapt or package? Or does it
package with it other licensed in items? Whole slew of issues here - not to mention what happens when the licensed-in bit undergoes a version change ...
14. Termination of licence, if applicable. Inspection (including by
back-door keys) to check for breach of licence terms.
15. If there are periodic licence fees, software clamping (of that
program, of other programs, of whole machines, by service engineer, or automatically)
16. Wealth creation - some software is used to create other works or
sources of revenue. Should the Licensor participate?
17. Intra-group use - Contracts (rights of third parties) Act and
barring remedies of non-parties.
18. Bespoke items - not posting details and confidentiality.
19. Computer games raise other issues too"

Transferring personal data outside the EU: IMPACT guide to the essentials

This is a quick guide to transferring personal data from an EU country to outside the EU.

If you are intending on making a transfer, whilst this guide will give you a rough idea of the legal issues, always obtain legal advice to ensure that your transfer is compliant with the law.

The law
The use of personal data in the UK is governed by the Data Protection Act 1998 ("DPA") - see our guide to the DPA.

The Eighth Data Protection Principle of the DPA states that: 

“Personal data shall not be transferred to a country or territory outside the European Economic Area unless that country or territory ensures an adequate level of protection for the rights and freedoms of data subjects in relation to the processing of personal data.”

The European Commission keeps a list of countries that the EU regards as providing an adequate level of protection.

What if the country to which personal data is to be transferred is not on the EC approved list?

• The European Commission Standard Contract Clauses. These are approved by the EC, and therefore you will achieve compliance with the law provided that you do not make any substantive changes to the documents. There are two versions: controller-to-controller and controller-to-processor.
• The International Chamber of Commerce Alternative Standard Contract Clauses. These are approved by the EC as giving an adequate level of protection. They are generally regarded as being an improvement on the Standard Contract Clauses because they are more ‘commercial’. However, the only approved version is for controller-to-controller transfers - the controller-to-processor alternative clauses are not yet approved for use. Therefore the ICC standard clauses are not always an option.
• Self-assessment. A company assesses that its arrangements for transfer are DPA compliant, even without using either of the above standard contracts. This approach is risky; even if the company spends a lot of time on assessment, there is no guarantee that the Information Commissioner’s Office would regard the arrangement as adequate in the event of a complaint.
• Obtaining a declaration of compliance from the Information Commissioner’s Office. Not a practical route. The Information Commissioner’s Office has only ever approved as adequate the 3 types of standard contract detailed above.
• Obtain data subjects consent to the transfer. Not practical or likely to be effective. To gain consent, data subjects would have to be notified of specific details of the transfer, including the fact that India does not have adequate data protection laws. The Information Commissioner’s Office has stated that consent must be specific, informed, and freely given, meaning that the consent wording cannot just be part of a larger text that data subjects read.
• Binding corporate rules ("BCRs"). BCRs are be a bespoke set of policies about data transfers for a group of companies, where the group includes companies within and outside the EU. The policies must be legally enforceable, both within the group and by data subjects and data protection authorities. BCRs must be approved by the data protection authorities, making their implementation a lengthy and expensive process. At the time of writing, two sets of BCRs have been approved by the ICO.

IMPACT GUIDE to Penalties and Liquidated Damages

As part of the process of negotiating contracts the issue of contractual remedies if something critical goes wrong is key. This is particularly the case with IT systems integration projects where the deliverables are critical to the businesses ability to function. In this area clients often use terminology in discussions that can have a significant legal impact if interpreted literally. The word penalty - when taken outside of the football arena - is a bit of a legal no-no and here's why.

Hyperlinking & the law: IMPACT guide to the essentials

This is adapted from an article that I wrote for the law for the June/July 2007 issue of the Society of Computer & Law's magazine, the accurately titled Computers & Law.

What linking policies should websites apply?
As will be seen, there are a variety of potential liabilities associated with linking to third party websites. The key practical points are:

• Check the terms & conditions of the website you want to link to. If the terms prohibit linking, consider obtaining permission. If you are reluctant to obtain permission, consider whether the prohibition is legally enforceable; if it is unenforceable you do not need permission.
• Do not link to sites containing unlawful material, such as pirated software or music.
• Consider applicable industry rules and codes of conduct.
• Consider whether there are any prohibitions on linking in the relevant jurisdiction.
• Embedded links simply referring to the name of the site linked to are generally okay. Be cautious when using longer texts or images as the link: such text/images could infringe copyright, a trade mark, constitute passing off (or similar) or be defamatory.
• With deep links, follow the same basic rules as for embedded links. Consider asking for permission before deep linking.
• With framing, ensure that it is obvious to the user that a third party website is being displayed as part of the page. Frame all of the relevant web page: avoid only framing parts of the website. Watch our where the frame includes trade marks.

Confidentiality & industrial secrets: IMPACT guide to the essentials

It is possible to protect industrial knowledge and commercial information by relying upon confidentiality or secrecy. This may be by choice or necessity. For example, a process or product may not be capable of protection by patents or other IP rights.

The UK Courts will enforce confidentiality obligations to prevent secret information being used. However, there is always the danger that you will lose the secret and then you may have no protection whatsoever.

If you wish or have to rely on confidentiality, we strongly recommend that you adopt rigorous procedures and put in pace suitable contractual wording, including for example:

• Employment contracts
• Terms and conditions of trading
• Other third party agreements

Designs: IMPACT guide to the essentials

Introduction
This is an overview of the law of designs in the UK. It is aimed at businesses rather than lawyers, so we don't go into oodles of detail about legal issues that are of little interest to most businesses.

If you want...

• A general overview of intellectual property rights, see: Intellectual property: IMPACT guide to the essentials
• A guide to intellectual property disputes, see: Intellectual property disputes: IMPACT guide to the essentials

Patents: IMPACT guide to the essentials

Introduction
This is an overview of the law of patents in the UK. It is aimed at businesses.

If you want...

• A general overview of intellectual property rights, see: Intellectual property: IMPACT guide to the essentials
• A guide to intellectual property disputes, see: Intellectual property disputes: IMPACT guide to the essentials

Trade marks: IMPACT guide to the essentials

Introduction
This is an overview of the law of trade marks in the UK. It is aimed at businesses.

If you want...

• A general overview of intellectual property rights, see: Intellectual property: IMPACT guide to the essentials
• A guide to intellectual property disputes, see: Intellectual property disputes: IMPACT guide to the essentials

Copyright: IMPACT guide to the essentials

Introduction
This is an overview of the law of copyright in the UK. It is aimed at businesses rather than lawyers, so we don't go into oodles of detail about legal issues that are of little interest to most businesses.

If you want...

• A general overview of intellectual property rights, see: Intellectual property: IMPACT guide to the essentials
• A guide to intellectual property disputes, see: Intellectual property disputes: IMPACT guide to the essentials

Passing off: IMPACT guide to the essentials

Introduction
This is an overview of the law of passing off in the UK. It is aimed at businesses.

If you want...

• A general overview of intellectual property rights, see: Intellectual property: IMPACT guide to the essentials
• A guide to intellectual property disputes, see: Intellectual property disputes: IMPACT guide to the essentials

IMPACT guide to the WEEE Regulations

Our buddies in the environmental department have been hard at work producing a snappy guide to these strangely named regulations that affect pretty much most businesses.

What are the WEEE Regs?
The WEEE Regs are designed to minimise the impact of waste electrical and electronic equipment (hence "WEEE") at the end of its useful life when it needs to be disposed of safely. They provide for systems for the separate collection, recovery and recycling of WEEE.

Producers (a term covering manufacturers and others) of EEE are expected to finance most of the cost in proportion to the amount of goods they “put on the market”. They will have to join schemes to collect sorted waste from collection points that customer have brought goods to and then undertake the recovery and recycling tasks.

Distributors (covering retailers and others providing equipment) can either themselves take back WEEE from customers who buy from them (and then pass it on to the operator of the producers' scheme) or, alternatively join a scheme that will arrange the points where customers can take waste goods and pass on the sorted waste to the operators of the producers' scheme.

Producers and distributors are required to provide standard information to customers including information about (1) where WEEE can be taken; and (2) what should not be put in a household dustbin.

New company website & email footer rules in force

New rules that came into force on 4 January 2007 state that a company's website and company emails must legibly contain the following information:

• Company registration number
• Place of registration (e.g. England)
• Registered office address

Outlaw.com has produced a good summary of the new UK rules for company websites and email footers. Many companies will already comply with the website rules because they were part of the E-commerce Regulations (see our guide).

Link
Out-law.com story

The public authority Disability Equality Duty becomes law

Today the so-called "Disability Equality Duty" becomes law in the UK. This applies to all UK public bodies, of which there are over 45,000. The Disability Rights Commission has been campaigning for public authorities to "Do the Duty".

The new law is contained in the Disability Discrimination Act 2005, which amends the 1995 Act. This sets out the general duty. This is supplemented by regulations which set out specific duties. I outline both in this note.

The amended Computer Misuse Act: IMPACT guide to the essentials

A while ago we did a series of posts on the Computer Misuse Act, finishing off with a summary of the changes that were going to be made by the Police and Justice Bill. As previously reported, the Bill has now been passed, becoming the Police and Justice Act (P&JA).

At the time the P&JA was passed, it seemed like the changes to the Computer Misuse Act brought in by the P&JA would be the same as those in the Police and Justice Bill as it was at the time of our series. I've since found that the changes to the Computer Misuse Act offences made by the P&JA are wider than those contained in the Bill at the time of our series. The changes are in fact slightly different, narrowing the scope of some changes and adding new ones. It's therefore time for a fresh IMPACT guide to the subject.

This is a a summary of the Computer Misuse Act offences as amended by the Police and Justice Act.

Computer Misuse: new law comes into force

The Police and Criminal Justice Act has finally been passed, meaning that the law on computer crime has received a much needed (according to some critics) upgrade.

I reported on the new law as part of our series on the Computer Misuse Act - read the report.

Other resources

• Techworld.com story
  
• Out-law story
• Naked Law story

Data Protection Act: IMPACT guide to the essentials

Introduction
The Data Protection Act 1998 (the “DPA”) tries to balance the rights of individuals against the rights of organisations that hold and use information about those individuals. 

The DPA governs the “processing” of “personal data”.  If you operate a business, you almost inevitably hold and use personal data. For example:

• The contact details of your customers and suppliers is personal data if those contact details contain information about individuals (e.g. the name, phone numbers and email address of your main contact at a customer)
• The details of your employees constitute personal data

Breach of the DPA can result in criminal as well as civil liability. The DPA is enforced by the Information Commissioner.

Starting a business

We often get clients approaching us because they are setting up a new business from scratch or a new venture. In many cases my team get involved where there are IP issues or the business is a technology-based business.

In this article, I set out a simple checklist of some of the key things to think about to cover off the issues around intellectual property, data protection and IT law.

Email marketing: IMPACT guide to the essentials

• Direct marketing by email is governed by a number of different Acts, regulations and codes of conduct.
• These laws and rules lack consistentency and there is a degree of overlap.
• For this reason it is best to stick to current "best practice" in your email marketing.
• The Data Protection Act is also relevant to email marketing.

IP in the growth of a business

Yesterday, 19 September 2006, I gave a talk to the Midlands Aerospace Alliance at their training day in Birmingham. In this post you will find a podcast (audio recording) of my talk plus links to relevant posts on this blog.

• Download andrew_mills_ip_lifecycle_19906.mp3
• What is Intellectual Property?
• Brand Creation Top Tips
• Filter out "bad" brands for free
• Free brand policing tools
• Intellectual property: IMPACT guide to the essentials
• Free patent searching tools

In the session, I gave a very whistle-stop tour of the different types of IP by using the example of a can of Guinness! I then went through the things to think about at the formation, giving birth, growth and maturity stages of a business.

Selling to consumers online: IMPACT guide to the essentials

Introduction
A number of our clients sell goods to consumers over the internet, so we've produced this guide to the essentials.

Why is this guide about selling to consumers and not businesses?

There are a number of reasons for this:

1. Most people who ask us about this are interested in selling to consumers, or already do so.
2. It's often impossible to know for sure that you're selling to a business, rather than a consumer. Our view is that it's easier to have one sales process that definitely complies with the law, rather than having 2 online sales processes and structures.
3. Do you really want your business customers to perceive you as giving them less benefits/value than you do to consumers?
4. We're hearing rumours that there is going to be a change in the law in the near(ish) future, meaning that those selling to businesses online will have to follow the same rules as those selling to consumers online. To future-proof online sales processes, those thinking of selling online to businesses should design their sales processes as if they were selling to consumers.

Service Levels: IMPACT guide to the essentials

Introduction

A service level agreement (“SLA”) provides the key definition of a service that a supplier is contracted to provide.

The SLA provides the means by which the performance of that service will be judged against specified performance targets, usually called “Service Levels” or sometimes “Key Performance Indicators“ (KPIs). Financial sanctions (“Service Credits”) will usually apply if a given Service Level is not met. SLAs must therefore be very carefully drafted. 

We’ve prepared this document to assist businesses with deciding on and drafting the service levels/KPIs.

IP disputes: IMPACT guide to the essentials

Introduction
This is a guide to IP disputes in the UK, put together by the IMPACT team.

The law
In the UK, the civil law is made up of:

• Legislation made by Parliament
• Decisions of the Courts
• European Law

There is no Civil Code and the Courts have to follow the decisions on the same legal points made by Courts of a higher status (for example, the County Court follows decisions from the High Court). In some cases, the Courts have to follow the decisions of a Court of the same status.

Freedom of Information Act 2000: IMPACT guide to the essentials

Introduction

The Freedom of Information Act 2000 was designed to promote greater transparency and openness by public bodies. The Act came into full effect on 1 January 2005 and gives individuals a ‘right to know’ what information is held by such bodies.

Generally, any authority that exercises public functions will fall within the Act  - these include central government; local authorities, the NHS, maintained schools and educational institutes, and the police.

The Secretary of State can designate as a public authority any person who exercises functions of a public nature or works under a contract for a public authority – this could catch information held, for example, by sub-contractors.

Computer Misuse Act: offences under the Act

28 November 2006 note: This post refers to an old version of the Computer Misuse Act. We have posted a new guide to the Computer Misuse Act which should be referred to for the current version of the Act.

Our clients sometimes ask us for information about the Computer Misuse Act 1990 ("CMA") so we've produced this brief overview. This will be followed up later in the week by more information on the Act and on legal developments in this area generally.

The CMA was introduced to deal with "hacking". It tried to deal with this problem by creating a number of criminal offences...

Offences under the CMA
There are 3 offences:

1. Attempting to gain, or gaining, unauthorised access to a computer program or to data.
2. Doing the above with intent to commit or facilitate commission of further offences.
3. Causing unauthorised modification of the contents of a computer.

Punishment for committing an offence
The offences are punishable as follows:

• Offence 1. Up to 6 months' prison and up to £5,000 in fines.
• Offences 2 and 3. Up to 5 years in prison and any size of fine (there is no limit).

Tomorrow we'll give a quick overview to the sort of criticisms that have been levelled at the CMA over recent years, and then we'll discuss some cases to do with Denial of Service attacks, which are a big issue at the moment. Later in the week we'll also talk about the changes to the CMA that are coming into force later this year.

Using trade mark notices

Introduction

Clients often ask us about the ™ and ® symbols and what they mean. See Alex’s separate post about how to interpret things when you see people using these.

However, how to you correctly apply them to your brand?

Registered trade marks

If your brand is a registered trade mark, you may use it with the ® symbol, for example:

“brand®”

You should also consider using wording such as:

“brand” is a registered trade mark of «company name»"

Please note two important restrictions on the way you use the ® symbol and the wording I suggest above:

• If your trade mark registration is not for the trade mark words alone (for example, stylised words or a logo) then be careful how you refer to it. You should only refer to the form of your trade mark that is actually registered when using the ® symbol and when using the wording I suggest above. There are criminal sanctions in the UK and other countries’ legislation if you get this wrong.
• If you use your trade mark in a country in which you do not, in fact, have it registered, it will probably be illegal in that country to use the ® symbol or the wording I suggest above in connection with that trade mark.

Unregistered trade marks

Where the brand is an unregistered trade mark, you may use it with the ™ symbol, for example:

“brand™”

You should also consider using wording such as:

“brand” is a trade mark of «company name»"

Intellectual property: IMPACT guide to the essentials

Introduction

This note sets out, in very brief terms, key points about the main types of legal rights that make up what we call "intellectual property" (abbrieviated to "IP" or "IP Rights" or "IPR").

Free brand policing tools

About this post

• If you have put time and effort into creating a brand then you need to consider looking after it.
• Ask about our separate guidance notes about brand creation and searching.
  This short guide tells you how you can take positive steps yourself, free of charge, to monitor for unauthorised use of your brand.
• Some of these steps will involve diarising and repeatedly carrying out actions. This may seem a pain but carrying out once a month, for example, is not a huge burden.
• Free resources contain only limited information and will not reveal as much as subscribing to professional services.
• Contact Andrew Mills if you would like to know about our watching services.

Trade marks

• Check for new trade mark applications for marks that are exactly the same as or start with your brand at the UK Patent Office search page.
• This will let you check for marks that claim rights in the UK.
• You will have to regularly check this service yourself.

Domain names

• Regularly check for identical domain names for those domains that you do not own.
• Use a domain search service such as NetNames or FreeParking.
• You can set up a single, free domain name watch (for certain domains only) at Whois Source.

Company names

Regularly check for current companies by using the free search service at Companies House.

Directories

These are good, free directory services. They do not include everything in the paper versions but are worth searching regularly. Try without geographical limitation or by nature of business first and then narrow down.

• Yellow Pages
• Thomson Local
• BT telephone directory

Google Alerts

• This is a free service provided by the Google search engine. It lets you set up searches that Google will automatically execute for you and email the results.
• Go to Google and click on “more” and then “alerts”.
• You will need to register for the service  but its free.

General Internet searching

• It is a good idea to regularly carry out general internet searches against your brand and see what comes up. Try search engines like MetaCrawler (which searches Google, Yahoo, MSN and ASK all at once) or AltaVista.
• Consider searching individual search engines and look for advertisers using your brand name as the advert catchword.

Getting professional help

• Contact Andrew Mills if you would like to know about how our tailored watching services can help you.
• Subscribing to a professional service will mean you do not need to spend time carrying out repeated searching yourself.
• We can help you take action against unauthorised use of your brand.

Final Warning

If you have a registered trade mark:

• It will not look after itself; and
• You should not threaten anyone with trade mark infringement without getting legal advice – it can expose you to a particular legal risk.

By monitoring for unauthorised use of your brand, you are more likely to spot issues early and this always makes resolution easier and less expensive.

Filter out "bad" brands for free

About this post

• Clearing a new brand name a complex subject that requires professional help.
• However, you can screen potential brand names for obvious problems using many free resources on the web.
• Whilst this might not confirm that a name is available for use and/or protection, it may help you drop the ones with obvious problems.
• Using this approach will help you maximise the benefit from your use of professionals.
• This guide only describes how to search for rights that affect the UK.
• Free resources contain only limited information and full searching without payment is not possible because you will either need to pay someone else to search for you or pay a subscription to access a dedicated search resource.
• Check the posting about brand creation top tips.

What is a Brand?

• A brand is a way of identifying the goods or services of one organisation from those of another.
• Registered trade marks give the best legal protection for a brand.
• A trade mark is a type of intellectual property right.

About Intellectual Property Generally

• UK Government IP portal
• IP Europe project

Trade marks

• All possible goods and services fall into 1 or more of 45 international trade mark classes.
• Figure out what classes apply to your goods and services first at the classification section of the UK Patent Office website. At this section you can also view the guide to classification.
• Next, search for your brand in all classes and then the relevant classes using the search facility at the text search section of the Patent Office website.

Designs

If your brand features a logo then you need to search against registered designs.

• Firstly, all possible designs are classified under the Locarno classification system.
• Search for UK designs at the designs image search section of the UK Patent Office website. This lets you drill down through the classification system.
• Search for EU community registered designs at the RCD-Online section of the OHIM website. This page has a helpful link the classification index for EU Community Registered Designs.

Dictionaries

• Check to see if your brand has any meaning that relates to your products or services.
• A good multiple dictionary-search site is OneLook.
• It is also worth looking to see if your brand is a known acronym for your type of products or services. Try Acronym Finder. 

Gazetteers

A gazetteer is a dictionary of place names. Check your brand to see if it is place name at the Getty Thesaurus of Place Names. If it is, check to see if the place is known for your type of goods or services in particular. Try a general Google search.

Encyclopaedia

• There are many on the web and for detailed content you will need to buy a subscription. For free, you might want to try putting your brand into Wikipedia or Encyclopedia.com and see what turns up.

UK company names

• Although a forming a company with a name does not in itself give any rights in that name, the existing of companies with names like your potential brand might be an issue.
• Use the WebCheck facility to search for names. Using the Enhanced Index search can be helpful for "wild-card" searching.
• For a particular company, look at its SIC code to get an idea of its field of business.

Business Directories

• These are good, free directory services. They do not include everything in the paper version but are worth searching.
• Try without geographical limitation or by nature of business first and then narrow down.
• Yellow Pages
• Thomson Local 

Telephone directories

• There are now many ways to conduct directory enquiry services in the UK.
• Try BT Phonebook or 118 118 or click here to conduct a suitable Google search.

Internet Domain Names

There are multiple domain-name search engines. However, these two are quite effective for a wide range of domains:

• Freeparking

• NetNames

Getting professional help

• We can help in brand creation, whether working with you on the strategy or by actually creating brand options for you.
• We can also provide practical advice and act as a “critical friend”.
• We can carry out much more sophisticated searching than is available using free web resources.
• We can discuss with you strategies for protection and what other rights might be relevant.
• Talking to us might help you see the bigger picture of legal protection.
• Contact Andrew Mills.

Final Warning

Using a brand without clearance searching first might mean you infringe someone else’s rights (you don’t even need to know they exist to infringe). A successful infringement action against you might mean:

• Stopping use of your brand name;
• Disclosing details of how much you have sold under the brand name and to whom;
• Paying damages; and
• Paying legal costs.

Being caught up in a legal case like this will take up not only financial resources but also valuable time.

Avoiding a risk is much less expensive than not looking or not caring and taking the risk anyway.

Brand Creation Top Tips

About this post

• Clearing a new brand name and protecting it is a complex subject that requires professional help.
• Choosing the “right” brand creation strategy makes a huge difference to the “quality” of a brand from a legal point of view
• This guide will help you avoid the most common legal problems with a brand (other than the rights of others).
• Do not use a new brand name without first making sure that others do not already have rights in it!

What is a Brand?

• A brand is a way of identifying the goods or services of one organisation from those of another.
• Registered trade marks give the best legal protection for a brand.
• A trade mark is a type of intellectual property right.

About Intellectual Property Generally

Here are a couple of useful websites:

• UK Government IP portal
• IP Europe project

Why choose a “legally strong” brand name?

• It is less expensive and simpler to protect;
• The less likely that anyone will use the same brand for the same goods or services as you;
• The more likely that you will be able to stop someone using the same or similar brand for similar goods or services.

"Good" brands...

• Invented words: great because they have no “baggage”. KODAK for photographic film;
• Words that have no natural relationship with your products or services. PENGUIN for books;
• Acronyms. FIAT for cars;
• Combinations of different words or part of words. SLUMBERLAND for beds;
• Logos and designs, but only if they do not relate to your products or services. The Nike "swoosh” for footwear & clothing;
• Words that relate to the benefits or values of your products or services. JAGUAR for cars.
• Foreign words sometimes work too. FORMICA for plastic laminates (“formica” is ant in Italian).

"Bad" brands…

• Words that describe the products or services, or features of them. KETTLE CLEAN for preparations for cleaning kettles;
• Words that are highly suggestive of the products or services or features of them. FROOT LOOPS for cereals in the form of fruit favoured loops;
• Geographical place names;
• People’s names (except for really unusual names);
• “Talking up” words. SUPER, CLASSIC or PREMIUM;
• Common terms in the industry or business sector in question. DRILL DOWN for database software;
• Marks that are only 1, 2 or 3 characters long;
• Marks that consist of numbers less than 5 characters long;
• Unconventional trade marks (such as colours and sounds).

About descriptive trade marks

• For many organisations, the obvious way to create a brand is to link it to the product or service. After all, you want to communicate this to the public. Right?
• In the last few years, of the top 100 brands in the world (according to Interbrand), only 1 actually described the goods or services of that business, and that is all that business did! It was PIZZA HUT.
• The most successful brands say nothing about any product and so work across a wide range of goods and service. For example, the VIRGIN brand works on cola, air travel, beauty products and financial services to name a few.
• Think about this: are you ever likely to use the brand in a way that you are not also going to want to use other words or images to say something about the product or services. If this is the case, why shouldn’t the brand be distinctive and non-descriptive?
• If you use descriptive words, the chance are so are your competitors. How are you ever going to stand out if you use the same language for your brands? A car is a car, but a ROLLS ROYCE car is not the same as a KIA car.

Getting professional help

• We can help in brand creation, whether working with you on the strategy or by actually creating brand options for you.
• We can also provide practical advice and act as a “critical friend”.
• We can discuss with you strategies for protection and what other rights might be relevant.
• Talking to us might help you see the bigger picture of legal protection.
• Contact Andrew Mills

Final Warning

• Using a descriptive brand might mean you can never get rights in your brand and that other can use it without you being able to stop them.
• Using a brand without clearance searching first might mean you infringe someone else’s rights (you don’t even need to know they exist to infringe).

Making websites open to all

Websites have a legal duty to be accessible to disabled people. With new laws on accessibility likely and a strong commercial case for making websites accessible, businesses need to take this issue seriously.

It is ten years since the Disability Discrimination Act (“DDA”) became law. The legal duties imposed by the DDA come into force gradually. Most businesses that we have spoken to seem to think that the obligations only began applying to websites in 2004. In fact, websites have had a legal duty to be accessible to the disabled since 1999.