Categories
Intellectual Property

The Economic Tort of Passing Off-Galway Free Range Eggs Case Clarifies

When it comes the economic tort of passing off there is an accepted 3 part test which a Plaintiff needs to pass in order to win an intellectual property case involving passing off.

The test is as follows: you must prove

  1. Goodwill or reputation in a product
  2. Misrepresentation by someone which may lead to confusion between one product and another in the minds of the public
  3. Damage to the goodwill or reputation as a consequence of the misrepresentation.

This test was approved by the Supreme Court in McCambridge Limited v Joseph Brennan Bakeries and prior to this in Jacob Fruitfield Limited v United Biscuits (UK) limited.

Galway Free Range Eggs

This test was reviewed again in a case involving free range eggs in Galway.

Galway Free Range Eggs Limited had gone to the High Court for an injunction preventing a competitor, Hillsbrook Eggs Limited, from selling their eggs under the name of “O’Briens of Galway Free Range Eggs”.

Galway Free Range Eggs Limited claimed passing off by Kevin O’Brien, Carmel O’Brien and Hillsbrook Eggs Limited as they claimed there was likely to be confusion in the minds of the public concerning their eggs and those of the Defendants. The High Court had refused the application for an injunction. Galway Free Range Eggs Limited appealed to the Court of Appeal.

Background

Galway Free Range Eggs Limited were unhappy when the defendants began selling their eggs as “O’Briens of Galway Free Range Eggs”.

The High Court had held that the Plaintiff had failed to prove misrepresentation leading to confusion by the defendants and found consumer survey evidence to this effect of limited value.

Court of Appeal

The Court of Appeal held that Galway Free Range Eggs Limited had established that the defendants had engaged in passing off and were entitled to an injunction to protect its good name and reputation. The Court also held that the High Court had erred in dismissing the survey evidence and EU regulations which obliged the defendants to label their eggs as free range did not mean they had to include the words “free-range eggs” in their brand name.

Applying the 3 part test

1. Goodwill/reputation

The Court of Appeal accepted that Galway Free Range Eggs Limited had established goodwill in the use of the word “Galway” in connection with the words “free range eggs”.

2. Confusion

The Court held that the appropriate test to be applied was whether the public were likely to be victims of confusion arising from the Defendants use of the words “Galway free range eggs” in its packaging and found that the High Court had erred in failing to apply this “confusion” test once it found that the Plaintiff had failed to find misrepresentation leading to confusion.

The Court of Appeal also held that the High Court should have had regard for the survey evidence adduced by the Plaintiff and that it was permissible to admit survey evidence; it was then a matter for the Court as to how much weight was given to that evidence.

The survey evidence showed that there was confusion amongst the 29% of the population and that this was sufficient to establish confusion and fulfill the 2nd part of the test. The Court of Appeal also found it was not necessary to put particular members of the public into evidence to give evidence about confusion and survey evidence could be relied upon.

3. Damage

The Court of Appeal held that it was not necessary to show that the Plaintiff had actually suffered damage but it was the appropriation of goodwill which was sufficient to establish damage for the purposes of the 3rd part of the test and to obtain the remedy-an injunction-sought.

You can read the full Court of Appeal decision in Galway Free Range Eggs Ltd v Kevin O’Brien, Carmel O’Brien and Hillsbrook Eggs Limited here.

Categories
Business and Company Law Intellectual Property

How Safe is Your New Idea from Theft? The Vital Components of Confidentiality/Non Disclosure Agreements

non-disclosure-agreement

Can we be honest?

Good ideas are hard to come by.

They’re like hens’ teeth.

Have you a good idea, but you’re afraid to discuss it for fear it will be robbed or copied?

You’re well aware that you can register a trade mark or a patent, and you know you enjoy copyright protection for your original work.

But ideas are different.

You can’t copyright an idea.

If you’re thinking about a new business venture, or product development, or potential investment, you would be right to be worried about your discussion becoming known to others, and your good idea, and hard work being exploited by somebody else.

Well, there is a solution to the problem.

And it’s a smart move if you want to protect yourself and avoid being ripped off.

It’s a well drafted, contractual document-a confidential/non disclosure agreement.

New business venture,product development, potential investment, business arrangement?

A confidentiality/non disclosure agreement can cover all these situations. And your document does not have to be 5 plus pages long and impossible to understand.

A one/two/three page agreement will do the job, provided it is drafted properly and has some vital elements.

Disclosing party and recipient party

The starting point for your contract/agreement will be the parties-who is the disclosing party and who is the recipient party?

The type of information that will be disclosed, and for which you will be seeking protection, needs to be spelled out.

Technical and financial information would be common inclusions, but new ideas, strategies, tactics could also be protected.

Confidentiality of information

The principal job that you want your contract to do is to protect the confidentiality of the information you disclose to the other party (‘recipient party’).

You would also want to provide for the return of same if, for example, you shared documents or software.

What happens if there is a default?

Default or breach of the agreement? Your agreement should provide for injunctive relief and/or damages. This means you can to to Court and seek an injunction to prevent the continued disclosure of the information, and/or compensatory damages.

Other Important clauses

Your confidentiality/NDA contract should also contain a number of other important clauses:

  1. that there is no representation being made by you, the disclosing party, as to the  accuracy and completeness of the information disclosed;
  2. the agreement is being drawn up at the request of the disclosing party, so it would be enforceable by the disclosing party; also, any variation or waiver would be at the behest of the disclosing party;
  3. the duration of the agreement-5 years would be typical but will depend on the type of information which is disclosed, because what is worthy of protection in some industries will change pretty rapidly;
  4. there should be provision that the NDA cannot be assigned to another party;
  5. the applicable law should be stated and the and binding effect of the NDA-your agreement should provide that Irish courts have exclusive jurisdiction over the agreement;
  6. signing places-both parties need to sign the agreement, and have their signatures witnessed.

A sound, well drafted Confidentiality/Non Disclosure agreement can provide you with protection, and peace of mind, in relation to your discussions.

There is no need to hide your new ideas or novel products, to the point where they will never see the light of day.

You can easily progress talks about your new business arrangement, new partner, or joint venture.

You just need to take some basic, prudent precautions, the most important of which is having goodwill and trust on both sides.

And a sound, effective Confidentiality/Non Disclosure Agreement.

Categories
Intellectual Property

Music Royalty Claims Against Retailers by Phonographic Performance Ireland (PPI) in Doubt

If you are a retailer, a recent District Court decision in a case brought by the Phonographic Performance Ireland (PPI) organisation against a retailer in Dublin will be of interest.

The PPI is licensed to collect royalties for leading music labels such as Sony, Warner, EMI and it issues notices to retailers for collection of royalties for music played in shops.

In this case, the PPI sought to collect in excess of €2,000 from the owner of two shoe shops in Dublin for the playing of a radio in the shops. In addition, it sought €6,348 (the District Court limit) in aggravated damages.

The defence case was based on arguments accepted in recent European Court of Justice cases viz
1. Only small numbers of people were hearing the music at any one time and
2. The shops were not playing the music for profit and it was not a factor in influencing whether or not people entered the shops in the first place.

Judge Collins of the District Court in Dublin accepted these arguments and dismissed PPI’s claim and awarded costs against it.

Smyth’s Hardware, Mullingar

A similar outcome has been achieved in a PPI case against Smyth’s Hardware, Mullingar where a case brought against Smyth’s hardware by PPI was not proceeded with by PPI.

PPI had invoiced Smyth’s for royalties dating back to 2002 and sought €6,350 in damages and royalties in the District Court.

PPI confirmed to Smyth’s solicitors that it was not proceeding with the case.

Categories
Intellectual Property

Community Trade Mark (CTM) Benefits-Trade Mark Registration

A CTM (Community Trade Mark) is effective across all 27 states of the European Union.

community-trade-mark

However as it has unitary effect, that is recognised in all 27 states, if your trade mark registration application fails in one state then your application for a CTM will fail.

Benefit of a Community Trade Mark

The big benefit of the community trade mark procedure is that it allows

  • A single application for all 27 EU states and any new members
  • A single administrative centre
  • One language to be dealt with
  • Very cost effective compared to registering a national trade mark in a number of countries.

Should your application for a CTM fail you do have the option of applying to register in individual states but clearly this will require lawyers or agents in many different countries and other costs such as translation of documents, many administrative centres and files to deal with.

Maintaining your CTM

In order to maintain your community trade mark you will have to use it in at least one member state within 5 years of registration but using it in only one member state will allow you to maintain your CTM across the European community. (See also trade marks in Ireland)

Enforcing your CTM

To enforce your CTM there are essentially two avenues open to you-

  1. Issue proceedings at the Community trade mark courts
  2. File requests with EU customs offices to retain allegedly counterfeit goods under their control.

The whole system of CTM (community trade marks) is administered by the OHIM (Office for Harmonisation in the Internal Market) in Alicante, Spain.

Priority of an earlier national trade mark

If you are the owner of a national trade mark for the CTM application that you now wish to make then you can claim the priority of that previous mark in your CTM application which safeguards your previous trade mark rights even if you choose not to renew the national mark.

CTM application fees

The application fee for a CTM is €900 if you do it online and €1,050 for a paper based application and this includes 3 classifications or classes of goods/services. Each extra classification costs €150.

Keep in mind that you will also have additional professional fees for a solicitor/lawyer/trade mark agent.

If you have a question or concern, please use the contact form below. We respond within 24 hours, guaranteed.

Categories
Intellectual Property

Copyright Law in Ireland-The Essentials

copyright-law-ireland

Copyright is the legal term, which describes the rights given to authors/creators of certain categories of work.

Copyright protection extends to the following works:

1.original literary, dramatic, musical or artistic works sound recordings, films,broadcasts, cable programmes
2.the typographical arrangement of published editions,computer programmes,
3.original databases.

The owner of copyright is the author and within the Copyright and Related Rights Act, 2000 the author has a very specific definition

21.—In this Act, “author” means the person who creates a work and includes:
(a) in the case of a sound recording, the producer;
(b) in the case of a film, the producer and the principal director;
(c) in the case of a broadcast, the person making the broadcast or in the case of a broadcast which relays another broadcast by reception and immediate retransmission, without alteration, the person making that other broadcast;
(d) in the case of a cable programme, the person providing the cable programme service in which the programme is included;
(e) in the case of a typographical arrangement of a published edition, the publisher;
(f) in the case of a work which is computer-generated, the person by whom the arrangements necessary for the creation of the work are undertaken;
(g) in the case of an original database, the individual or group of individuals who made the database; and
(h) in the case of a photograph, the photographer

For example a photographer is the owner in the case of a photograph.

However, as copyright is a form of property, the right may be transferred to someone else, for example, to a publisher. Where an employee in the course of employment creates the work, the employer is the owner of the copyright in the work, unless an agreement to the contrary exists.

Copyright is a property right and the owner of the work can control the use of the work, subject to certain exceptions. The owner has the exclusive right to prohibit or authorise others to undertake the following:

1. copy the work
2. perform the work
3. make the work available to the public through broadcasting or recordings
4. make an adaptation of the work.

Copyright takes effect as soon as the work is put on paper, film, or other fixed medium such as CD-ROM, DVD, Internet, etc.

No protection is provided for ideas while the ideas are in a persons mind; copyright law protects the form of expression of ideas, not the ideas themselves.

Rights related to Copyright

Rights are not restricted just to the creators of the works themselves but certain other rights may apply.

For example, the record company has certain rights in a sound recording of the performance of a song, in addition the author(s) of the lyrics and the music will also have certain copyrights. Similarly performing artists have certain rights in their performances. The legislation also provides for moral rights, such as the right to be acknowledged as the author of a particular work and also the right to object to derogatory treatment of that work.

The primary legislation governing copyright in Ireland is the Copyright and Related Rights Act, 2000 (No. 28 of 2000)

Copyright Protection

In Ireland, there is no registration procedure for owners of a copyright work.

Basically the act of creating a work also creates the copyright, which then subsists in the physical expression of the work.

Copyrights are protected by law and illegal use of these rights can be contested in the Courts, the technical term for this misuse is infringement.

The legislation provides for criminal offences and consequently infringers could face both civil liability and criminal convictions.

Professional advice should be sought by copyright owners with regard to the options and the remedies available where infringement of their work occurs.

It is most important that the originator of a work can show subsequently when the work and the consequential copyright were created as it may be necessary to commence or defend infringement proceedings, at some later stage.

One way of doing this is to deposit a copy of the work with an acknowledged representative who may be a bank or solicitor in such a way as to allow the date and time of the deposit to be recorded or notarised.

Alternatively, one may send a copy of the work to oneself by registered post (ensuring a clear date stamp on the envelope), retaining the original receipt of posting and leaving the envelope containing the copyright work unopened thus establishing that the work existed at that date and time.

The Copyright Notice and Symbol ©

It is important to show that copyright is claimed in a work. Works should be clearly marked to show who the copyright owner is and the date from which copyright is claimed.

copyright-symbol

The internationally recognised symbol © is normally used to indicate that a work is protected by copyright.

Example:

© Copyright Business and Legal 2009.

Examples of more detailed copyright notices may be found in published versions of literary works. The inclusion of a copyright notice does not legally constitute proof of ownership, but does indicate a claim to copyright, which may prove useful if it is necessary to defend that claim or to deter possible infringement.

It is usually necessary to obtain permission to use copyright material. Persons with a copy of a work can look for an indication on the work regarding copyright. This can assist making contact with the author/ original creator of the work in order to obtain their permission to use the work for any act, which is prohibited by copyright legislation.

Length of Copyright Protection

The duration of copyright protection varies according to the format of the work. In respect of the following works the term of protection is:

Literary, dramatic, musical and artistic works

Copyright protection expires 70 years after the death of the author/creator

Films

Copyright protection expires 70 years after the last of the following dies, the director, the author of the screenplay, the author of the dialogue of the film, or the author of the music composed for use in the film.

Sound recordings

Copyright protection expires 50 years after the sound recording is made or if it is made available to the public then 50 years from the date it was made available to the public.

Broadcasts

Copyright protection expires 50 years after the broadcast is first transmitted

The typographical arrangement of a published edition

Copyright protection expires 50 years after the date it is first made available to the public

Computer-generated works

Copyright protection expires 70 years after the date it is first made available to the public

Chapter 3 of the Copyright and Related Rights Act, 2000 (No. 28 of 2000) deals in greater detail with the duration of copyright in Ireland.

Benefits of Copyright Protection

Copyright protection provides a vital incentive for the creation of many intellectual works.

Without copyright protection, it would be easy for others to exploit these works without paying any royalties or remuneration to the owner of the work. Copyright therefore encourages enterprise and creates a favourable climate to stimulate economic activity.

Copyright protection provides benefits in the form of economic rights which entitle the creators to control use of their literary and artistic material in a number of ways such as making copies, performing in public, broadcasting, use on-line, etc. and to obtain an appropriate economic reward.

Creators can therefore be rewarded for their creativity and investment.

Copyright also gives moral rights to be identified as the creator or author of certain kinds of material (known as the paternity right), and object to the distortion and mutilation of it.

An author’s right to object to the modification or derogatory action in relation to his or her work is known as an integrity right. Chapter 7 of the Copyright and Related Rights Act, 2000 (No. 28 of 2000) deals in greater detail with moral rights applicable in Ireland.

Commissioned Work and Copyright

Prior to the Copyright and Related Works Act, 2000 the commissioner of certain types of work would own the copyright to that work.

That is no longer the case.

If you commission artistic work and wish to have the copyright transferred to you, it will be necessary to have a written agreement to do so.

In Irish law, the assignment of copyright in a work must be effected in writing and signed by the person assigning the copyright (section 120, Copyright and Related Rights Act, 2000).

(3) An assignment of the copyright in a work, whether in whole or in part, is not effective unless it is in writing and signed by or on behalf of the assignor.

However, if an employee creates a work in the course of his/her employment, the owner of the copyright in that work will be the employer.

Copyright and Other Intellectual Property Law Provisions Act 2019

Copyright law in Ireland will change when the Copyright and Other Intellectual Property Law Provisions Act 2019 commences. It was signed into law on 26th June 2019.

Some of the changes will include:

  1. The jurisdiction of the District and Circuit Courts to deal with breaches of the copyright legislation; this will make the Courts more accessible for the owners of copyright and not just confined to those who can afford to go to the High Court;
  2. Fair dealing-section 12
    It is not an infringement of the rights conferred by this Part if a copy of a work (other than a photograph) on current economic, political or religious matters or similar matters is made by a media business (within the meaning of section 28A(1) of the Competition Act 2002) and communicated by the media business to the public if— (a) such use is not expressly reserved, and (b) the copy and communication are accompanied by a sufficient acknowledgement.
  3. Education-section 15
    This section extends the exceptions for the use of copyright work in education establishments
  4. An exception for the use of copyright works in caricature, pastiche and parody
  5. With regard to photographic works it is now an offence to tamper with the metadata of photographic works
  6. Exceptions for text and data mining for non commercial purposes (section 14)
  7. Section 22 relaxes the use of recordings of spoken words in lectures and political speeches

You can check out the detail of the act here: Copyright and Other Intellectual Property Law Provisions Act 2019

Please note that this act has not yet commenced and will not be effective until a commencement order is signed by the Minister.