#law

The rudimental rules of copyright infringement

Rosie Burbidge

Sep 29, 2021
2 min

The rudimental rules of copyright infringement

The popular song Waiting All Night by the band Rudimental was not copied from a 2007 song Can You Tell Me, performed by Kelly-Marie Smith, according to a ruling by Mr Justice Zacaroli on 11 August 2021 (Smith v Dryden & Ors [2021] EWHC 2277 (IPEC)). Ms Smith brought the action for copyright infringement in the English IP Enterprise Court (IPEC), claiming that both the music and lyrics of Rudimental’s song constituted copyright infringement. Waiting All Night was primarily wri

Rosie Burbidge

Jun 23, 2021
2 min

Is Cybersquatting a big problem?

In short, "yes". Cybersquatters are a growing threat to brands. This trend has accelerated as e-commerce grows and consumers spend more time online. A new report suggests that cyber-squatters are cannier and more cunning than you might imagine. For brand owners, resolving domain name issues and filing defensive registrations eats up considerable time and effort. But as many have found to their cost, ignoring cybersquatting can lead to consumer confusion, loss of sales, fraud

Rosie Burbidge

Jun 14, 2021
2 min

What does MADE IN BRITAIN mean?

After the many logistical issues posed by both Brexit and the pandemic and with sustainability at the forefront of everyone's mind, it is perhaps not surprising that there has been a 130% increase in businesses accepted to use the MADE IN BRITAIN mark on their goods. (Many more have applied but not met the relevant criteria.) What is the legal framework that underpins this brand name and what exactly does "Made In Britain" mean? Can anyone use MADE IN BRITAIN? Made in Great B

Rosie Burbidge

May 11, 2021
2 min

Chanel and Huawei logos are dissimilar

The EU General Court has upheld a Board of Appeal ruling in a dispute between Chanel and Huawei, finding that Huawei’s EUTM application for a figurative H/U shape was not similar to Chanel’s Double-C trade mark (Case T-44/20, 21 April 2021). Huawei applied to register the EUTM for goods in class 9 in 2017 (far left). Chanel opposed the Huawei application based on two French trade marks (middle and right): (1) a figurative mark for “Cameras, sunglasses, glasses; earphones and

Rosie Burbidge

May 1, 2021
2 min

Database extraction was authorised

This was a complex dispute concerning a claims management database. It involved alleged infringement of a database right, misuse of confidential information and breach of fiduciary duty. It was decided by His Honour Judge Cawson QC, sitting as a judge of the High Court in Manchester, on 19 March 2021. The claim was brought by claims management company DRSP against Thomas O’Connor and Octax Limited. Mr O’Connor worked for DRSP until February 2018, after which he became a consu

Which IP rights subsist in an XML Schema?

Rosie Burbidge

May 1, 2021
3 min

Which IP rights subsist in an XML Schema?

Disputes relating to software are often complex, with multiple parties and issues involved. However, they can also illuminate important questions. Software Solutions Ltd & Ors v 365 Health and Wellbeing Ltd & Anor, a judgment by HHJ Melissa Clarke in February 2021, is a good example. While numerous companies were involved in the case at various stages, the question essentially was whether version 5 of a mental health application called Beating the Blues (BTB v 5) infringed co

Who owns copyright works that an employee creates at home?

Rosie Burbidge

Mar 9, 2021
2 min

Who owns copyright works that an employee creates at home?

One of the highlights of the pandemic has been the opportunity to catch up on a lifetime's worth of TV. Fortunately, there are some truly great TV shows including the comedy Silicon Valley. It is not for nothing that this great TV show has been described as a documentary! It confronts many of the business issues that face the tech industry in the US and beyond. One of my favourite episodes is a mini courtroom drama (a binding arbitration, if we're going to be precise). The ep

Influencers are advertising... and the ASA is watching

Rosie Burbidge

Feb 23, 2021
2 min

Influencers are advertising... and the ASA is watching

Influencers are advertisers. This has been clear for some time. But now influencers are trending for the wrong reasons as the Advertising Standards Authority starts to clamp down on the use of filters for beauty products and failure to identify paid content. Use of filters Advertisers should not use filters on photos promoting beauty products on Instagram if the filters are likely to mislead or exaggerate regarding the effect the product was capable of achieving. This was th

Why contracts are in writing: lessons from an oral trade mark co-existence agreement

Rosie Burbidge

Feb 22, 2021
2 min

Why contracts are in writing: lessons from an oral trade mark co-existence agreement

A recent decision by the Intellectual Property Enterprise Court reveals the problems that can arise when businesses that once shared name fall out and do not have a clear agreement in place. The case covered 22 issues(!) in total, including copyright infringement, trade mark validity and infringement and passing off. Following a two-day trial in November, Deputy High Court Judge David Stone handed down his judgment on 18 January 2021. The case was brought by Cormeton Fire Pro

Targeting and trade marks - Beverly Hills Polo Club takes on the Amazon

Rosie Burbidge

Feb 22, 2021
3 min

Targeting and trade marks - Beverly Hills Polo Club takes on the Amazon

When is an online marketplace “targeting” consumers in a particular jurisdiction? This was the question that Mr Justice Michael Green wrestled with in his judgment in Lifestyle Equities CV & Anor v Amazon UK Services Ld & Ors [2021] EWHC 118 (Ch). The case involved trade mark infringement and passing off claims brought against Amazon regarding the sale of goods bearing the Beverly Hills Polo Club trade marks on amazon.com. The claimants are familiar faces in the English High

Rosie Burbidge

Jan 19, 2021
3 min

Legal Innovation = Microsoft Office?

Legal innovation is often equated with one of the incredible new AI tools that are unveiled at tech events on a regular basis. However, the key software package that lawyers use on a daily basis throughout the world remains Microsoft Office. Like it or loathe it, this is where legal innovation is for the vast majority of lawyers. This is a fact to be embraced and celebrated! Once you have a quick rummage under the Microsoft Office hood, there is an array of useful tools which

Rosie Burbidge

Aug 19, 2020
2 min

Brexit & IP - what you need to know

Brexit may be nearly upon us. If this happens after 29 March there are various short term consequences to registered rights in the UK and EU. You don't necessarily need to refile a UK mark but forewarned is forearmed. Registered EU trade marks All existing EU trade marks will still cover the UK post Brexit but they will change identity. From Brexit day, EU trade marks in the UK will automatically convert into “Comparable Trade Marks (EU)”. No fee is payable and the owners of

Rosie Burbidge

Aug 19, 2020
1 min

What trade mark should you register?

The most obvious and important trade marks to register are the name of your game/app together with any logo you have adopted. It is wise to get specialist advice both in terms of the marks you select and the precise goods and services you decide to protect. In addition to registering your core brand. As your business grows, or other symbols become more closely associated with your business, it is worth conducting a regular review to identify other possible trade marks to regi

Rosie Burbidge

Aug 19, 2020
1 min

Trade marks and priority

An important feature of the trade mark system around the world is the six month priority period. This is incredibly helpful for all businesses whether big or small. The world of trade marks operates on a first to file system. This means that the first person to file a trade mark is the first owner of the mark. But sometimes you're not sure which trade mark you want to go for (or which will be granted) and you don't want to spend a lot of money filing a trade mark in lots of d

Rosie Burbidge

Aug 19, 2020
2 min

What is a trade mark?

Trade marks give you the exclusive right to use a particular "sign" in your business for particular goods and services. They can potentially last forever provided that you keep using the trade mark and keep paying fees to the relevant intellectual property office. What is a sign? A sign is anything which distinguishes one business from other business. Commonly this is a word or a logo but in Europe, it can be anything provided it can be recorded in some form of permanent medi

Rosie Burbidge

Aug 19, 2020
2 min

How to create a new brand (legally)

This post is about the legal issues you need to consider when selecting a new brand name and logo. This is primarily a question of trade mark law. There are three main things to consider: Does it meet the criteria for a trade mark? Has anyone else registered it as a trade mark first? Will it pose any problems for me in the future? Trade marks must be distinctive and not generic descriptions of the products sold. As post-modern as a hat brand called HAT may be - you are very u

Rosie Burbidge

Aug 19, 2020
2 min

How do you terminate a contract?

It is common for business priorities to change and relationships to improve or sour over time. At some point you will want to end a distribution agreement, franchise or agency agreement. Ending a contract is not always that straightforward... The first step is to look at what the contract itself says but this is not the end of the process. There are many terms which are implied by different countries in Europe. France has particularly complex provisions. The notice period tha

Rosie Burbidge

Aug 19, 2020
2 min

European contracts - part two

Defining terms Definitions make contracts easier to read. They are often known as "defined terms" and are a mini dictionary at the start of a contract. This means that, for example, rather than repeating the specific trade mark which is licensed, the "Trade Mark" is defined at the start and then the contract can simply refer to the Trade Mark in the rest of the document. Defined terms can save a lot of reading time and improve simplicity but if you get the definition wrong,

Rosie Burbidge

Aug 19, 2020
1 min

How to handle confidential information

Nobody wants their business secrets getting shared. This can happen broadly online or directly to a particular competitor. Both can be very damaging for the business. In fashion businesses, confidential information will often include strategy, factory connections, manufacturing processes or new designs (i.e. intellectual property rights). Remember that if a design has been shared online or registered with an intellectual property office, it is now public and consequently not

Rosie Burbidge

Aug 19, 2020
1 min

European contracts - part one

Every time you order goods from a factory or sell your products to a wholesaler, shop or end consumer, you are entering into a contract. You don't need to have anything in writing in order to create a legally binding contract but it is helpful to do so as it means that everyone is on the same page as far as the commercial deal is concerned. Pre-contractual liability Many EU Member States, such as Italy and France, have specific laws that apply even before you enter into a for

European TECH Law

Stay in the loop with our monthly Tech Law newsletter