Article

Charities and Intellectual Property

Campaigns are an essential part of a charity's activities and a lot of time and effort goes into planning every aspect of such campaigns - not least its name. Because of this, TS&P are often asked to advise on whether, and to what extent, it is possible to protect campaign names. As a general, preliminary comment, while this article focuses on campaign names, the same considerations apply to charities' names too. Charities will often spend a lot of time and money devising a name for a new fundraising or awareness campaign, only to find that it cannot then be registered as a trade mark, either because there is a similar existing mark, or because the chosen name is not registrable as a trade mark since it is too descriptive, i.e. is not capable of distinguishing the goods and services of one entity from the goods and/or services of another entity.

In order to discover what marks may already be registered, charities are advised to carry out a comprehensive trade mark search at an early stage of any campaign; this will enable them to consider the likelihood of (a) their application being refused on the grounds of the proposed mark being similar to an existing mark, and (b) if the mark is granted, any infringement action being brought further down the line, by a proprietor of an earlier mark who considers that members of the public might be confused that
the new mark is somehow associated with the earlier mark. Carrying out a search would reveal the existence of any earlier conflicting marks and mean that another name could be chosen before considerable time and expense have been incurred in preparing promotional materials. With regard to the distinctiveness of a mark, it is important to take proper advice on this. The threshold of distinctiveness has been set, because a trade mark gives the proprietor of the mark monopoly rights in relation to a name or logo (in respect of the classes of goods or services for which that name or logo
is registered). The distinctiveness requirement therefore prevents the situation arising where a registration prevents third party organisations from using every day words. For example, a lot of charities and businesses that use "…Solutions" face great difficulties when trying to register their names as trade marks, since "solutions" is commonly used in a lot of industries in both the goods and the services sectors.

The one exception to this is where a mark acquires distinctiveness over a period of time in which that mark has been used. Usually a minimum of 5 years is required, although in very exceptional cases, less may be accepted. We are not aware of any campaign names which have been registered in this way, however, examples of charities who have managed to register their names in this way are Breakthrough Breast Cancer and the National Association of Citizens Advice Bureaux. A non-charity example is that of Mr Kipling and "Exceedingly Good Cakes". Where a charity finds that its campaign name is probably not distinctive enough to attract trade mark protection, but would still like to protect it in some way, it may be possible to present the campaign name in a highly stylised form and/or with a logo and register a logo (or "device"). But charities doing this should bear in mind that this would not afford the campaign name itself protection, but rather just the presentation or device. Of course - except where there are infringement considerations - the fact that a campaign name does not meet the registration requirements does not mean it cannot be used. However, if a third party then uses that name in relation to similar services or campaigns, a charity may not be able to prevent that use. The action of passing off is the traditional remedy relied on in relation to unregistered marks. Passing off is an action to protect goodwill and reputation; it prevents a third party from trading off an organisation's established reputation. Where a campaign has not been launched or a name has not been used for very long, or it is descriptive, it may be very hard to demonstrate that goodwill has accrued and has, therefore, been damaged by that third party's use. It may also be very hard to demonstrate that there is a likelihood of confusion on the part of the public (another requirement of a successful passing off action). This is another reason to take the time to do it properly: the costs of a search and proper advice regarding the issue of distinctiveness at the beginning of a project vastly outweigh the costs of getting it wrong.

For further enquiries please contact Elizabeth Cairns (view full profile) on 01892 510000 or email elizabeth.cairns@ts-p.co.uk.

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