Images Magazine June 2018

BUSINESS DEVELOPMENT www.images-magazine.com 18 images JUNE 2018 ■ According to the latest Global Trade Barometer from WorldFirst, UK SMEs are gearing up for a new future of international post-Brexit trade as more payments begin to flow outside of the EU ■ Research by Dr Roberto Flören, professor of Family Business at Nyenrode Business Universiteit, has found that family business owners are more innovative than owners of non-family businesses, but are restricted by limited financial resources Harley-Davidson was recently awarded $19.2 million against the US online print fulfilment firm SunFrog for trademark infringement. Could it happen in the UK? If this case had been brought in England and Wales, the claim would have reached a similar conclusion. To have a strong infringement claim, a claimant need only prove that someone is using a mark that is identical to their registered mark for identical goods or services. Slight variations to well-known marks aren’t sufficient and can still lead to a successful case if the claimant can prove a likelihood of confusion between the two sources. What happens if a trademark hasn’t been made? Unregistered intellectual property may still be given protection if a company is accused of ‘passing off’ another’s mark, word or image. To make a successful claim, a claimant must prove three things: • Goodwill or reputation in their mark • Misrepresentation by another leading to consumer confusion • Financial, reputational or other damage There are many types of copyright, but businesses similar to SunFrog should be most concerned with artistic copyright that protects images, drawings and artistic works. As copyright is an unregistered system, infringement is difficult for claimants to pursue as they must prove the required elements for protection, but it is equally difficult for printing companies as they must satisfy that an image they use isn’t protected. A work will gain protection of copyright where it is original, has the minimum required effort and has been recorded. A printing company that copies or adapts a copyrighted work could expose themselves to a claim for copyright infringement, as well as accusations of providing the means to make infringing copies. Am I liable? With regards to trademark infringement, the legal definition requires that the infringing mark is used in the course of trade. Therefore, companies that print goods to be sold bearing the mark could be liable for infringement if they are using and facilitating others in using the marks. In cases of copyright, printing companies could be liable for two types of infringement, individually or simultaneously. The first is indirect primary infringement, which is where infringing copies are produced without access to the original work but through copies of it or works deriving from it. For printing companies, copies are provided by customers. Secondary infringement includes importing copies (if the printing company’s production is outside the UK), possessing or dealing with infringing copies, and providing the means to make infringing copies. Protecting your position The most important step to take when protecting yourself is to have strong sifting and anti-counterfeiting processes. This can be time-consuming and costly, but can prevent facing costs for infringement in the future. Some steps can be taken at basic levels, – anyone can search trademarked words or images online through the UK Intellectual Property Office. The process by which customers provide words or images to printing companies can also be strengthened. For example, if a customer claims to own a trademarked word or image, they should be required to provide evidence of this (such as the trademark number and certificate). If the customer claims to have permission to use a trademark or copyrighted work, they should be asked to produce relevant documents, such as licences and assignments. Finally, you may wish to adapt this process so that the printing company is provided with a licence to use the words or images the customer has provided. This could include express provision to rescind the agreement in the event of misrepresentation or recover costs should a printing company need to pay out for infringement claims. If a defence to trademark or copyright infringement or passing off is unavailable or unsuccessful, the consequences could be costly. Infringers may be required to pay damages or account for profits, or remove, deliver or destroy goods. Counterfeiting also carries criminal sanctions. The best advice is to never assume a word or image is commonplace and unprotected if it has been seen from a variety of sources. Expert advice on the business of running a garment decoration company David Bondt is a senior associate in JMW’s commercial litigation team, which assists with a range of business disputes. Areas of expertise include intellectual property disputes, media/ reputation management, contract disputes and professional negligence. www.jmw.co.uk Q&A