The five things every charity should know about IP
We had the opportunity to speak to numerous charities at the LoveBrum Causes Conference last week, in our role as LoveBrum Patron and sponsor. Many of the causes supported by LoveBrum, and present at the conference, are grass roots charities – doing amazing work on minimal funding. So why is Intellectual Property important to charities and what should charities keep in mind in relation to IP?
What use is IP to charities?
Like businesses of any kind, charities rely on an association (and hopefully a positive one!) in the minds of the public. For example, people donate to, and accept help from, charities they know and trust.
Charities need to raise funds in order to operate, which are typically in the form of public donations. Donors will donate to charities that they know and trust and these charities can be identified and differentiated by their trade marks – typically their name and logo. By registering these trade marks it protects the vital link to the charity in the mind of the donor.
It works in much the same way where charities are developing trust with vulnerable recipients in order that they are comfortable to accept their services.
What charities need to know about IP
We’ve picked out the five things that we believe every charity should be aware of when it comes to IP:-
1. Companies House won’t protect you
It is a common misconception that a name registered at Companies House means that you have a right to use that name (or even to stop others from doing so). Unfortunately this is wrong – all it means is that no-one else can register a company with an identical name.
Mistakenly relying on Companies House registration can cause two main problems:-
1) If someone has already registered your name as a trade mark then they can stop you using it. You might be able to agree coexistence, but it’s up to the trade mark owner, not you! If they don’t agree then you may be faced with having to rebrand, which is not only costly but also undermines the reputation that you have established so far.
2) You also don’t have the right to stop other people using your name. Put simply, you won’t be able to stop other people using the same or similar names for the same or similar goods and services. This causes confusion in the marketplace, and will erode your charity’s brand.
The best way to deal with these problems is to:-
Undertake a trade mark search to check for problems before you start using your trade mark.
Register your trade mark!
2. The web is not enough
We’ve heard time and time again from companies that:- “we checked the web and no one was using that name so we assumed it was free to use”.
Registered trade marks are not always in use, as the owner has up to 5 years from the date of registration to use that mark before anyone can revoke it for non-use. Therefore, the only way of finding out whether a name is available to use is to search the trade mark registers.
There are two types of searches available:-
1) Basic search – this looks as whether there is an IDENTICAL mark registered in an IDENTICAL class of goods and services. Low cost but less comprehensive.
2) Advanced search – this looks at whether there is an IDENTICAL or SIMILAR mark registered for IDENTICAL or SIMILAR goods and services. Higher cost but more comprehensive.
Taking the time to carry out one of these searches before deciding on a name can save a significant amount of cost and heartache later!
3. Be distinctive
You may have a name in mind but if it is devoid of any distinctive character then you can’t register it as a trade mark. For example, APPLE is a lousy trade mark for an orchard and WINDOWS is a lousy trade mark for a glazier.
It could be argued that if you can’t register it then no-one else can either. This is true, but it doesn’t get away from the issue that the fundamental function of a trade mark is to protect the association between the mark and your charity in the mind of the donor or recipient. Therefore, if anyone can use it, you are not building up trust in your charity.
You may be a little nervous that if you move away from a descriptive mark that no-one will know what you do. This is a valid concern, however good trade marks are used as adjectives. Take for example LEGO construction toys or KLEENEX tissue.
It is worth noting that improper use of a trade mark (for example as a noun) can result in it losing its distinctiveness- for example ELEVATOR, CORN FLAKES and YO-YO. In each case the name has lost distinctiveness over time because of improper use.
If you still have a burning desire to using descriptive text, then consider instead registering your stylised logo as a trade mark. Stylisation can add distinctiveness, which in turn will increase the likelihood of getting it registered. Two good examples of this are shown below:-
Just be aware that you won’t have a monopoly on the words alone, at least at first!
4. Own it
A very straightforward thing all charities can do is be aware of the ownership of their IP. Typically if employees of the charity create work that attracts IP during the course of their duties, it is usually owned by the employer, although it doesn’t hurt to make sure this is weaved into employee contracts.
However, this is not the case for third party companies such as photographers, graphic designers, web designers and coders. Unless there is a contract to the contrary, they will retain ownership and you may only receive a licence to use the work.
Therefore, make sure you know what you are getting. Check the contracts you have in place with third parties. For all new suppliers you are engaging with – ask the question.
5. Don’t do it yourself
You’re probably thinking, ‘you would say that’! Although preparing a trade mark application may look simple, it is actually a specialist job. The goods and services in the application need to be properly defined and it is not unusual for the application to run into problems. A poor specification can also cause expensive problems down the line.
Registering a trade mark through an attorney is not as expensive as you might think. Attorney firms should be able to provide you with accurate quotes, and there is no harm in shopping around (although do make sure you are dealing with a chartered attorney!).
If you get into a sticky situation, there is a service available which provides advice and legal support in intellectual property cases for those who cannot afford to pay. This service has been designed to help small businesses and individuals who are involved in a dispute about an intellectual property right such as a patent, trade mark, protected design or copyright. You can find out more at www.ipprobono.org.uk
If you are looking for help registering a trade mark or you have a query about IP then please do get in contact with us.