United Kingdom

1. TRADE MARK

1.1. Sources of law

The principal source of law for trade marks is statute. There are also several international treaties (the Paris Convention, the TRIPS Agreement, and so on). However, an English court would first look at the UK Trade Marks Act 1994 ("TMA") for UK trade marks and the EU Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks (the "Directive").

  The UK is a common law jurisdiction which operates a system of precedent. When a conflict arises, the courts will follow the statute whilst also taking into account the precedent set by previous court decisions as a guide to interpretation of that statute. Any decision when a conflict arises is therefore likely to reflect both statute and case-law. 

1.2. Substantive Law

Marks which are not registered with effect in the UK but which are well-known (or "famous") in the UK are protected under 6bis of the Paris Convention (see Section 56 TMA).

  Marks which are registered with effect in the UK and enjoy a reputation are protected under Sections 5(3) and 10(3) of the TMA and equivalent provisions of the Regulation (Articles 8(5) and 9). These provisions allow brand owners to allege that, as a result of use of a third party sign, the relevant public perceives there to be a link with the owner's mark and the third party's sign, and that use of that sign has or will:

  • be detrimental to the mark's distinctive character or reputation; and/or 
  • take unfair advantage of the mark's distinctive character or repute.

  Clearly, these provisions are potentially very helpful to luxury brands.

  There is significant authority in case law to support an argument that trade marks belonging to the "luxury industry" are more susceptible to damage (particularly from cheaper imitations which are confusingly similar) and that infringements are more likely to be detrimental to a mark's distinctive character or reputation, and to take unfair advantage of a mark's distinctive character or repute. See, for example, Copad SA v Christian Dior Couture, where the Court emphasized the prestige attached to luxury goods by stating that the quality of luxury goods results not only from their material characteristics but also from their "allure and prestigious image", such that damage to the aura of luxury would affect "the actual quality of the goods". 

1.3. Enforcement

Enforcement can be brought before the Intellectual Property Enterprise Court (IPEC) or the High Court. The types of evidence that can be brought before both are broadly similar.

  Evidence is initially provided in the form of sworn witness statements. In general, when seeking to prove reputation, or that a mark is well-known, independent evidence which shows that the relevant public is aware of a mark's reputation is essential.

  Witnesses and experts may be called to be cross-examined on their written statements during a trial. Survey evidence (usually to assess the relevant consumers' view of a brand's reputation) can be of material assistance. However, the courts now apply a cost benefit test when considering whether to permit survey evidence. Permission to submit a survey is currently granted less often than was previously the case.

  There is no specific threshold. Whether or not a mark is entitled to protection as a well-known mark or a mark with a reputation will be decided on a case by case basis.

  In order to successfully enforce a trade mark against the registration of a domain name, the trade mark owner must prove that:

  • the domain name is identical or confusingly similar to the trade mark; 
  • the domain name owner has no rights to (or legitimate interests in) the domain name; 
  • the domain name was registered in bad faith. 

  In addition, use of a domain name, which makes reference to certain goods or services or to the trade name of a company, constitutes a form of representation that is made to potential consumers and suggests to them that they will find, under that name, a website relating to those goods or services, or relating to that company. A domain name may, moreover, be composed, partially or entirely, of laudatory terms, or be perceived, as such, as promoting the goods and service to which that name refers. As such, use of a domain name can infringe trade marks.

  A trade mark can be enforced against a trade name, unless the use of the trade name falls under the defence provided by Section 11(2) TMA, namely that the use of the trade name is use by a company or person of its or his own name and that the use is in accordance with honest practices.

  There is no restriction on the types of signs that are capable of infringing a trade mark.

  If metatags, which correspond to the names of a competitor's goods and its trade name, suggest to the internet user who searches against those names that a website is related to his search, such use is considered as a form of indirect advertising which is capable of influencing the economic behaviour of consumers. Therefore, a trade mark may be enforced against use of metatags.

  There is no defence simply because a mark is being used in social media. The usual infringement test applies.

  Trade mark law balances the desires to permit advertisements which objectively compare the characteristics of goods or services, while ensuring that comparative advertising is not used anti-competitively and unfairly or in a manner which affects the interests of consumers.

  Use of the mark that creates a likelihood of confusion, or discredits or denigrates a mark, or takes unfair advantage of the reputation of a mark, or presents goods or services as imitations or replicas of goods or services bearing a mark, will infringe.

  There is currently no parody defence available. That said, parodic use may of course entitle the alleged infringer to argue that damage (such as confusion, detriment and unfair advantage) is not likely.

  In the UK there are no unfair competition laws. The closest provision that exists is the tort of passing off.

  An action for passing off may be brought in conjunction with an infringement proceeding. It may also be brought separately.

  It may be advisable to file a simultaneous passing-off action when the infringer is also imitating the 'get-up' of the goods or services sold under the trade mark. Get-up is not protected by infringement provisions; however, it is protected under the law of passing off. 

 

2. COPYRIGHT

2.1. Sources of law

The principal legislation governing copyright law in the UK is the Copyright, Designs and Patents Act (CDPA) 1988, which has recently undergone significant amendments. UK and EU court decisions are also important in interpreting and clarifying the statute.

  EU harmonization has had a significant impact on UK copyright law in recent years. This is largely due to the fact that the UK common law tradition has historically differed greatly from the civil law traditions of most European countries in the protection afforded to copyrighted works and their authors. A number of EU Directives have been published in an attempt to harmonize law and practice in relation to copyright protection across the EU. Arguably the most important of these is the Directive on Copyright in the Information Society.

  UK copyright law is also subject to a number of international treaties, the most important of which are as follows: the Berne Convention on the Protection of Literary and Artistic Works; the Rome Convention 1961; The TRIPS Agreement 1994; the WIPO Copyright Treaty 1996; the WIPO Performance and Phonograms Treaty (1996); the Beijing Treaty on Audiovisual Performances (2012); and the Marrakesh Treaty for the Visually Impaired (2013).

  Because England and Wales is a common law jurisdiction, both legislation and judicial precedent apply. In most circumstances, an English court will first look at the CDPA and case law. 

2.2. Substantive law

Traditionally, the UK has operated a closed list system encompassing the following eight categories of copyrightable work:

  • literary works; 
  • dramatic works; 
  • musical works; 
  • artistic works; 
  • films; 
  • sound recordings; 
  • broadcasts; and 
  • published editions (typographical works). 

  The closed list system has been challenged by recent decisions of the CJEU which imply that anything that constitutes an "intellectual creation" should be protected by copyright.

  However, these eight categories remain the starting point for assessing whether copyright subsists in a work under UK law. Under section 16 of the CDPA 1988, the owner of a copyrighted work has the exclusive right to do the following acts in the UK:

  • to copy the work; 
  • to issue copies of the work to the public; 
  • to rent or lend the work to the public; 
  • to perform, show or play the work in public; 
  • to communicate the work to the public; 
  • to make an adaptation of the work or do any of the above in relation to an adaptation.

  The following moral rights are also protected under the CDPA 1988 (Chapter IV): 

  • the right to be identified as author or director; 
  • the right to object to derogatory treatment of a work; 
  • the right to object to false attribution; 
  • the right to privacy of certain photographs and films. 

  Under section 11 of the CDPA 1988, where a literary, dramatic, musical or artistic work is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary.

  It is important to distinguish between employees and independent contractors, for example, design agencies or other third parties, as this is not the case for the latter category. That said, if an independent designer (for example) is commissioned to create a work, then it may well be found that the commissioner rather than the designer is the equitable owner of the work. It is important to ensure that all rights (not just copyright) that relate to the project (whenever they were created) are assigned. Any assignment of copyright will need to be formalised in writing and signed by, or on behalf of, the assignor in order to be valid. No other formalities are required, no particular words must be used and the assignment does not have to be registered to be valid.

  It is also possible to assign future copyright in a work, as in, to assign the copyright before the work itself is created.

  Moral rights are not assignable, though they can be waived.

The length of time copyright protection can last varies, depending on the type of work in question, as set out in the table below:

Literary, musical, dramatic, artistic works Section 12(2)  Life and 70 years from the end of the calendar year of the author's death 
… ... of unknown authorship Section 12(3) 70 years from end of the calendar year in which the work was made OR from the end of the calendar year in which it is first made available to the public
Computer-generated works Section 12(7)

50 years from the end of the calendar year in which the work was made 

Sound recording Section 13A(2)  70 years from recording OR from being published OR from being made available to the public 
Films Section 13B(2
Life and 70 years from death of last author Joint authorship- four measuring lives (set out by Directive vs. two authors only for UK commercial reasons) 
Broadcasts Section 14 (2) 
50 years from broadcast 
Typographical arrangement of a published edition Section 15 25 years from publication  

 

2.3. Enforcement

Copyright is an unregistered right in the UK. Further, copyright notices are not required and there are no adverse consequences of failing to display a notice.

  In order to establish copyright infringement, the claimant must prove that there is a causal link between the copyright work and the alleged infringing work, that is, that the work was created through copying (including subconscious and indirect copying) a "substantial part" of the copyrighted work. This causal link can be proved either directly (that is, with actual evidence showing that copying has taken place) or indirectly (for example, by showing that the infringing work was produced later in time than, and bears a close resemblance to, the copyright work, and that the defendant is likely to have been familiar with the copyrighted work).

  Copyright can be enforced against its unauthorized use in social media, provided that such use falls under one of the restricted acts outlined above.

  Copyright can be enforced against its unauthorized use in comparative advertising, provided that such use falls under one of the restricted acts outlined above. This is out of keeping with the provisions for trade mark use in comparative advertising, despite the fact that copyright can subsist in a trade mark. This inconsistency was highlighted in the "O2 bubbles" case (O2 v Hutchinson 3G Limited) in 2006, but the position remains that there is no comparative advertising defence to copyright infringement in the CDPA or the Comparative Advertising Directive.

  Under the recent changes to UK copyright law, a specific "parody, caricature and pastiche" exception has been introduced. Prior to the introduction of this exception in October 2014, if a person were found to reproduce a substantial part of the original copyright work when parodying it, they would be liable for infringement of the copyright in that work.

  Use of a copyright work in parody must still constitute "fair dealing" in order for the exception to apply. CJEU case law has indicated that the essential characteristics of parody are, firstly, that it evokes an existing work while being noticeably different from it and, secondly, that it constitutes an expression of humour or mockery.

  Even when a claimant can show prima facie copyright infringement, there are a number of defences that may be available to the defendant, including fair dealing for various purposes.

  These include:

  • quotation; 
  • parody; 
  • protection of public interest; 
  • making of temporary copies; 
  • research and private study; 
  • criticism or review of that or another work; 
  • news reporting; 
  • incidental inclusion of copyright material; 
  • making a single accessible copy for personal use; 
  • multiple copies for visually impaired persons; 
  • things done for purposes of education, instruction or examination. 

  If an infringer tries to rely on one of these defences, courts will take into account factors such as how the work was obtained, how much of the work has been used and whether this amount is proportionate to the purpose for which it has been used, whether the work has been used for a commercial purpose and whether the claimant has experienced any commercial loss or reputational damage as a result.

  Assuming that the copyright is valid, and aside from the defences outlined above, English courts still have absolute discretion not to grant relief. This discretion is rarely exercised, but may be used, for example, if the work in question offends against public policy considerations (for example, is obscene). 

3. DESIGN

3.1. Sources of law

The principal source of law for designs is statute. UK registered design rights are governed by the UK Registered Designs Act 1949, as amended to comply with the Community Designs Directive 98/71/EC. UK unregistered design rights are governed by the UK Copyright, Designs and Patents Act 1988. Registered and unregistered Community design rights are governed by the Community Design Regulation (EC) No 6/2002. The Intellectual Property Act 2014 also has provisions pertaining to UK registered and unregistered designs and registered Community designs.

  The UK is a common law jurisdiction which operates a system of precedent. When a conflict arises, the courts will follow the statute whilst also taking into account the precedent set by previous court decisions as a guide to interpretation of that statute. Any decision when a conflict arises is therefore likely to reflect both statute and case-law. 

3.2. Substantive law

Under Article 3(b) of the Community Design Regulation and the UK Registered Designs Act 1949 as amended, the following products may be protected: any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs.

  Under Section 213 of the Copyright, Designs and Patents Act 1988, a protectable unregistered design right subsists in any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, provided said design is original and is not commonplace in the design field in question at the time of its creation.

  To obtain a UK registered design right the owner must be a citizen of the UK or any dependent territory or colony thereof, or any country that enjoys reciprocal protection, or they must be a citizen of a member state of the EU. Alternatively, they must be a body corporate or other body having legal personality which:

  • is formed under the law of a part of the United Kingdom or any dependent territory or colony thereof, or any country that enjoys reciprocal protection, or is formed under the law of a member state of the EU; and 
  • has a place of business at which substantial business activity is carried on in the United Kingdom or any dependent territory or colony thereof, or any country that enjoys reciprocal protection, or in a member state of the EU. 

  To obtain a Registered Community Design ("RCD") the owner must be an individual or legal entity capable of owning intellectual property.

  In order to obtain a valid design right, there must be a "design", the design must be "new", the design must have "individual character", the applicant or right holder must be entitled to the design and the design must not conflict with earlier relevant rights (such as earlier design applications, trade mark rights and copyright).

  Where a UK or Community design is created by an employee in the course of his employment, his employer is the first owner of any design right in the design (section 215(3) CDPA and Article 14(3) of the Community Design Regulation).

  Where a design was created in pursuance of a commission prior to 1 October 2014, the person commissioning the design is the first owner of any design right in it (section 215(2) CDPA). However, any design created in pursuance of a commission since the Intellectual Property Act 2014 came into force on 1 October 2014 belongs by default to the individual(s) who designed it. If the consultants have been commissioned to create a design, ownership of said design would be determined by these provisions. In this respect, the Intellectual Property Act 2014 brings UK law into line with the law for Community designs, under which commissioners of designs have no initial entitlement.

  In all instances and irrespective of what the statute says, it is safest to include a clause in a contract with employees, consultants, shareholders, directors and suppliers that explicitly states who owns any designs created by them.

  An assignment of design right is not effective unless it is in writing signed by or on behalf of the assignor (section 222(3) CDPA).

  It is prudent to make sure that any design assignment agreement explicitly refers to the transfer both of equity and title and to pertinent rights (whether design or otherwise) that were created prior to the date of engagement.

  The designer of a Registered Community Design (RCD) has the moral right of attribution - that is, he or she has the right to be identified as the designer before the Office and in the register. However, the procedural rules do not require an application to include the name of the designer(s). A designer may retain his or her anonymity and, in this sense, may waive his or her moral right of attribution.

  UK registered designs and Registered Community Designs can be renewed every five years up to a maximum of twenty-five years.

  UK unregistered design right expires:

  • fifteen years from the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever occurred first; or 
  • if articles made to the design are made available for sale or hire within five years from the end of that calendar year, ten years from the end of the calendar year in which that first occurred. 

  Community unregistered design right lasts three years from first disclosure to the public. 

3.3. Enforcement

Design infringement is assessed from the perspective of the "informed user". The test is whether the allegedly infringing article produces the "same overall impression" on the informed user.

  For UK registered designs and Registered Community Designs, protection is absolute. In other words, it is not necessary to show copying to establish infringement. Independent creation is not a defence to infringement of registered UK or Community designs.

  For UK and Community unregistered designs, however, the claimant must show copying to establish infringement. Whether a design has been copied is a question of fact but courts may infer copying from the circumstances of the case. Factors which may lead to an inference of copying include similarities between the designs, evidence of the defendant's access to the claimant's work and the likelihood or otherwise of independent creation.

  Infringement of a UK registered design, a Community registered design or a Community unregistered design is defined as "the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes" (Designs Directive, Article 12).

  Infringement of UK unregistered design is defined as "copying the design so as to produce articles exactly or substantially to that design" (section 226(2) CDPA 1988) or making a design document recording the design for the purpose of enabling such articles to be made.

  If a trade mark, a later registered or unregistered design or a patent meets these infringement tests, then a design may be enforced against it.

  Given those definitions of infringement, however, it is difficult to see how a design could be enforced against a domain name, trade name or other IP right.

  There is no parody defence to design infringement.

  An alleged infringer may have a defence if the act was done privately and for non-commercial purposes; if the act was done for experimental purposes; if it was an act of reproduction for the purposes of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source (Designs Directive, Article 13(1) and Intellectual Property Act 2014).

  In the case of UK registered designs only, an alleged infringer may have a defence if the act was committed prior to the grant of the registration.

  In the case of UK unregistered designs, an alleged infringer may have a defence if the alleged act of design infringement is an infringement of copyright in that work (section 236 CDPA 1988).

  There is a "repair clause" in the UK. The right in a registered design of a component part which may be used for the purpose of the repair of a complex product so as to restore its original appearance is not infringed by the use for that purpose of any design protected by the registration (section 7A Registered Designs Act 1949; Article 110 Community Designs Regulation).

  A similar provision exists for UK unregistered designs: "Design right does not subsist in features of shape or configuration of an article which (i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or (ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part" (section 213(3)(b) CDPA 1988).

  The Limitation Act 1980 provides a time limit of six years from the day on which the cause of action arose within which an action can be brought. However, it is worth noting that in IPO cases it is likely that there will be a series of infringing actions, each of which triggers its own six-year period and so effectively resets the clock.

  There is no system of unfair competition in the UK. A design holder cannot take action claiming both design infringement and copyright infringement for the same set of facts (sections 51 and 236 CDPA 1988). 

 

4. RIGHT OF PUBLICITY

5. PRODUCT PLACEMENT

The circumstances in which product placement is permitted in programmes under English law are set out in the Communications Act 2003 (CA) and Ofcom's Broadcasting Code (OBC); both stemming from the Audiovisual Media Services Directive 2007 (AVMS). The rules encompass the placement of not only products, but also services and trade marks.

  It should be noted that the definition of "programme" within section 368H(16) CA does not include radio transmissions or advertisements; although both of these are addressed in the OBC guidance.

  Product placement in programmes.

  Product placement is prohibited in programmes whose focus is news (section 9.7(a) OBC), religion (section 9.12(a) OBC; schedule 11A(6)(1)(a) CA), consumer advice (section 9.12(b) OBC; schedule 11A(6)(1)(a) CA), or current affairs (9.12(c) OBC; schedule 11A(6)(1)(a) CA), and in those aimed at persons under the age of 16 (section 9.7(b) OBC; schedule 11A(3) CA). As a catch-all provision; product placement will also be prohibited in any circumstances where it is deemed "unsuitable" (schedule 11A(6)(1)(c) CA).

  Within permitted genres, placement of the following products is specifically prohibited; cigarette or tobacco products (section 9.11(a)-(b) OBC; section 9.13(f) OBC; schedule 11A(4)(a)-(b) CA; schedule 11A(6)(2)(a) CA), medicinal products (section 9.11(c) OBC; section 9.13(e) OBC; schedule 11A(4)(c) CA; schedule 11A(6)(2)(b) CA), alcoholic drinks (section 9.13(a) OBC; schedule 11A(6)(2)(c) CA) where the placement is aimed at persons under the age of 18 or where it encourages excessive consumption (section 368H(5) CA), food or drinks high in fat, salt or sugar (section 9.13(b) OBC; schedule 11A(6)(2)(e) CA), gambling (section 9.13(c) OBC; schedule 11A(6)(2)(f) CA), infant formula (section 9.13(d) OBC; schedule 11A(6)(2)(d) CA), and any product, service or trade mark that is not allowed to be advertised on television (section 9.13(g) OBC).

  Within permitted genres, and where featuring permitted products, the following conditions as set out in schedule 11A(7) CA are imposed on product placement:

  • Condition A is that the programme in which the product, service or trade mark, or the reference to it, is included, is a film made for cinema, a film or series made for a television programme service or for an on-demand programme service, a sports programme, or a light entertainment programme (also reiterated in section 9.6 OBC). 
  • Condition B is that the product placement has not influenced the content or scheduling of the programme in a way that affects the editorial independence of the provider of the television programme service in which the programme is included. 
  • Condition C is that the product placement does not directly encourage the purchase or rental of goods or services, whether by making promotional reference to those goods or services or otherwise. 
  • Condition D is that the programme does not give undue prominence to the products, services or trade marks concerned. 
  • Condition E is that the product placement does not use techniques which exploit the possibility of conveying a message subliminally or surreptitiously. 
  • Condition F is that the way in which the product, service or trade mark, or the reference to it, is included in the programme by way of product placement does not (a) prejudice respect for human dignity; (b) promote discrimination based on sex, racial or ethnic origin, nationality, religion or belief, disability, age or sexual orientation; (c) encourage behaviour prejudicial to health or safety; (d) encourage behaviour grossly prejudicial to the protection of the environment; (e) cause physical or moral detriment to persons under the age of eighteen; (f) directly encourage such persons to persuade their parents or others to purchase or rent goods or services; (g) exploit the trust of such persons in parents,teachers or others; or (h) unreasonably show such persons in dangerous situations.

  In addition, any programme featuring product placement must signal that this is the case by means of a universal logo at the beginning of the programme, at the recommencement of the programme after any commercial break, and at the end of the programme (section 9.14 OBC; schedule 11A(8) CA).

  Product placement on the radio.

  The main purpose of section 10 OBC is to ensure that there is appropriate signalling and separation of product placement from radio content; to ensure transparency of commercial communications such that consumers are not confused into thinking that the product placement forms part of the radio programme itself. 

  There are prohibitions on product placement in or around news bulletins (section 10.3 OBC) or in children's programmes (section 10.4 OBC). Additionally, product placement will not be permitted if it may influence the selection or rotation of music for broadcast (section 10.5 OBC).

  Product placement in advertisements.

  Any product placement in an advertisement must clearly signal a separation between the advert and any other programmes before or after to ensure transparency of commercial communications such that consumers are not confused into thinking that the product placement in the advertisement forms part of another programme (section 9.2 OBC).

  Wherever there is an alleged breach of any condition or requirement of a licence or of the OBC generally, the usual procedure is for the brand owner to make a complaint to Ofcom. After investigation of the alleged breach, Ofcom has the power to impose statutory sanctions against the infringing broadcaster. These sanctions may include a decision to (a) issue a direction not to repeat a programme or advertisement; (b) issue a direction to broadcast a correction or a statement of Ofcom's findings which may be required to be in such form, and to be included in programmes at such times, as Ofcom may determine; (c) impose a financial penalty up to the value of £250,000 or 5% of the broadcaster's "Qualifying Revenue", (whichever is greater); or (d) shorten, suspend, or revoke a licence.

  Since licensees are treated by English law as contractual agreements; the brand owner may also claim damages in the event of a breach. In addition, it will be open to him to seek equitable injunctive relief from the court; such as a prohibitive injunction preventing the broadcaster from continuing to use the featured product.

6. . PROTECTION OF CORPORATE IMAGE AND REPUTATION

Legal entities/corporations may bring actions for infringement of a trade mark, infringement of a copyright, infringement of goodwill, breach of confidence and defamation. The right to privacy arising under the Human Rights Act, on the other hand, is limited to natural persons.

  No additional requirements are imposed on legal entities/corporations when bringing the actions listed above, except in a defamation claim where a body which trades for profit must show that the statement has caused, or is likely to cause, serious financial loss in order to meet the "serious harm" requirement (section 1(2) Defamation Act 2013).

  In order to protect corporate image a provision prohibiting resale to resellers whose image is below a certain defined standard is possible but only through a selective distribution agreement. This is because in the case of Pierre Fabre [2011], the ECJ made it unequivocally clear that generally agreements aimed at maintaining a prestigious image will not be treated as a legitimate aim for restricting competition under EU competition law. Bearing in mind the strict approach of the ECJ, luxury brands seeking to protect their corporate image may still legitimately do so through the use of specific clauses in selective distribution agreements, albeit in compliance with Article 101 TFEU and Regulation (EU) No 330/2010, commonly known as the 'Vertical Agreements Block Exemption' (VBER).

  The validity of a provision prohibiting the resale of contract goods to third party resellers who fail to meet a certain defined standard in a selective distribution agreement is contingent upon three conditions under the VBER:

  • the nature of the goods requires that selective distribution is used to guarantee the goods are properly distributed;
  • the re-sellers who do meet the defined standard must be selected solely based on a qualitative criteria that is proportionate to the objective of ensuring the goods are distributed under appropriate to the sale; and
  • the qualitative criteria for the defined standard must be applied objectively and without discrimination, in order to allow any potential re-seller who meets the standard to gain access to the network. 

  Note that similar standards can be applied to online sales.

  As can be seen above, not all prohibitions or standards are necessarily suitable. As such, quality standards will need to be applied sparingly. Where an imposed standard of clause falls outside of the specified exemptions in the VBER, it may still be legal but must be individually assessed under Article 101(3) for competitive effect.

  In the context of a selective distribution arrangement, a clause enforcing a minimum retail price that can be charged by re-sellers is generally prohibited by EU Competition Law, even if no collusion or abuse of market power has taken place. This is because such clauses are treated as 'hardcore restrictions' of competition which give rise to a presumption that they fall foul of Article 101(1). However, there are various means by which price clauses can be incorporated into agreements.

  Firstly, a clause stipulating a 'recommended retail price' (RRP) or a 'maximum price' is theoretically allowable. However, in practice if the clause operates as a de facto minimum price, the ECJ will most likely find that it violates the first 'hardcore restriction' on resale price maintenance under the 2010 Block Exemption. This is illustrated in the case of Nathan-Bricolux [2001], where the combination of promotional discounts and a maximum price to impose a range of retail prices constituted an infringement of Article 101(1). Similarly, JCB v Commission [2004] demonstrates that the only way to validly incorporate an RRP or maximum price clause is to ensure that it functions as a non-binding recommendation on re-sellers. Otherwise, all forms of direct or indirect resale price maintenance (RPM) clauses are strictly prohibited pursuant to EU Competition Law. 

4.1. Sources of law

Technically, there is no right of publicity under English law. However, in this section we deal with a variety of separate legal mechanisms under which an individual can seek to control the commercial use of his or her name, image, or likeness. Note that this section does not deal with the right to privacy and similar laws.

  The Trade Marks Act 1994 (TMA) permits an individual to register his name, signature, or likeness as a trade mark, and thereby receive protection under the Act.

  The Copyright, Designs and Patents Act 1988 (CDPA) permits an individual to own a copyright in such "artistic works" as a signature or photograph, and in such "literary works" as an autobiography.

  The common law tort of passing off enables an individual to protect the goodwill he has created in his "brand", and his image generally, from being exploited and misrepresented. The tort is founded on the premise that "nobody has any right to represent his goods as the goods of somebody else" (Reddaway v Banham [1896] AC 199).

  The action for breach of confidence, derived from English case law and elements of the Human Rights Act 1998 (HRA), enables an individual to protect both confidential information, including confidential photographs or communications, and personal information relating to his private and family life (Article 8 HRA). 

4.2. Substantive law

In order to gain trade mark protection under the TMA, an individual must register his mark (section 2 TMA). In order to be eligible for registration, the mark must be capable of being represented graphically and of distinguishing goods or services of one undertaking from those of other undertakings (section 1(1) TMA). Additionally, the mark must not be excluded by one of the exclusive or relative grounds for refusal in sections 3 and 5 TMA.

  In order to gain copyright protection under the CDPA, there must be a work which is a sound recording, a film, a broadcast, or a typographical arrangement of published editions, or which can be categorised as one of the following: literary, dramatic, musical, or artistic (section 1(1) CDPA). Literary, dramatic, and musical works must be recorded in a "material form" (section 17(2) CDPA). Literary, dramatic, musical and artistic works must be "original" (section 1(1)(a) CDPA). Additionally, it is necessary to show that a work is sufficiently connected to the UK to qualify for protection, and that it is not excluded from protection on public policy grounds.

  In order to gain protection under the tort of passing off, it is necessary for an individual to have trading goodwill associated with his "brand". Goodwill has been described as "the benefit and advantage of the good name, reputation, and connection and the attractive force which brings in custom" (Inland Revenue Commissioners v Muller & Co's Margarine Ltd [1901] AC 217). The necessary elements of the tort were summarised by the House of Lords in the Jif Lemon case as: (1) a goodwill or reputation (2) a misrepresentation by the defendant; and (3) damage or (in a quia timet action) will likely lead to damage (Reckitt & Colman v Borden [1990]RPC 826).

  In order to gain protection under the law of confidence, an individual must show that the information is confidential in nature, that the defendant owes a duty of confidence, and that the defendant has used the confidential information in such a way as to breach that duty (Coco v Clark [1969] RPC 41).

  A registered trade mark (section 22 TMA; section 24(1) TMA), a copyright (section 90(1) CDPA), and the right to goodwill (Artistic Upholstery v Art Forma (Furniture) [1999] 4 All Er 277) are all recognised as personal property and are therefore capable of testamentary disposition (provided the rights remain valid).

  In much the same way, rights of confidentiality persist as long as the information remains confidential, and may pass by testamentary disposition.

  Trade mark and copyright owners may grant a license to third parties permitting them to carry out specified activities in relation to their intellectual property rights (British Actors Film Co v Glover [1918] 1 KB 299; Canon Kabushiki Kaisha v Green Cartridge Co [1997] AC 728). A license can be either exclusive or non-exclusive, as per the parties' intentions. Further, a trade mark license may be inclusive or exclusive of associated goodwill.

  The right to confidence, as already discussed above, is less straight-forward. However, the implication of the House of Lords decision in Douglas v Hello! (2003) 3 All ER 996, is that the right to confidential information is transferable to third parties.

  Under English law, licenses are recognised as contractual agreements between the licensor and licensee and the terms are therefore, on the whole, subject to their negotiation and agreement. There are very few formalities other than that the license should be in writing and be signed by or on behalf of the licensor (section 28(2) TMA; section 92(1) CDPA). There is no requirement for a license to be registered.

  Absent any agreement to the contrary, it is usual for a license to be binding on successors in title of the licensor (section 28(3) TMA; section 90(4) CDPA). Whether or not the license will be terminated on the death of the licensor will be a question of construction and terms of the license as agreed by the licensor and licensee.

  The rights discussed above are capable of qualifying as a donatio mortis causa in order to pass to a nominated individual rather than to the deceased's estate in the event that a gift of that right was made, given, and delivered by an individual immediately before he died in the honest belief that his death was imminent.

  A registered trade mark will not expire as long as it remains valid under the terms of the TMA, and provided it is renewed every ten years (section 42 TMA). Rights of confidentiality persist as long as they remain valid; which will be a question of how long the information remains confidential. A copyright may remain valid for the life of the author plus seventy years from the end of the calendar year of the author's death (section 12(2) CDPA). 

4.3. Enforcement

In order to infringe a trade mark, the defendant must have used the mark "in the course of trade" (section 10(1)-(3) TMA).

  Similarly, in an action for passing off there must be a misrepresentation made by the defendant which deceives and confuses consumers in the relevant section of the public or market, and which is made "in the course of trade" (Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731).

 There are two types of copyright infringement. Primary infringement does not require a commercial use, and can be any of the activities listed in sections 16-21 CDPA. Secondary infringement, covered in sections 22-26 CDPA, does require a commercial use; and broadly applies to defendants who either deal in infringing copies or facilitate infringements in a commercial context.

In actions for breach of confidence there must be an unauthorised use or disclosure of confidential information, but it is not necessary that the disclosure be on a commercial level. Whether or not the level of disclosure is sufficient to amount to an infringement will depend entirely on the circumstances of the case.

In order to obtain protection under the TMA and the CDPA, it is necessary to have a registered trade mark or copyright; both of which have inherent commercial value. Similarly, in order to obtain protection under the tort of passing off, it is necessary to prove that trading goodwill has been created; which also necessarily carries commercial value.

Conversely, it is not necessary to show that the right to confidence has commercial value in order to gain protection under the relevant laws.

  Key defences to alleged trade mark infringement.

  • Claimant's consent/authorisation. 
  • Invalid registration of the trade mark. 
  • Invalidity under the absolute grounds of refusal in section 3 TMA. 
  • Invalidity under the relative grounds for refusal in section 5 TMA. 
  • Registration: a registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the later mark is registered (section 11(1) TMA). 
  • Use of your own name or address (section 11(2)(a) TMA), including a company name (Scandecor Developments v Scandecor Marketing [2001] 2 CMLR 30). 
  • Descriptive uses: it is not infringing to use the mark to indicate the kind, quality, quantity, intended purpose, value, geographical origin (Gerolsteiner Brunnen (Approximation of laws) [2004] Case C-100/02), time of production of goods or of rendering of services, or other characteristics of goods or service (section 11(2)(b) TMA). 
  • Necessity: a registered trade mark is not infringed by a use which is necessary to indicate the intended purpose of a product or service (section 11(2)(c) TMA; BMW v Ronald Karel Deenik [1999] Case C-63/97; The Gillette Company v LA Laboratories Ltd [2005] Case C-228/03). 
  • Locality usage: a registered trade mark is not infringed by the use in a particular locality of an "earlier right" which only applies in that locality (section 11(3) TMA). The term earlier right refers to the continuous use of an unregistered sign or mark in relation to goods or services. 
  • Comparative advertising: the EC Directive on Misleading and Comparative Advertising permits comparison of the goods or services of one trader with those of another. 
  • Exhaustion: a trade mark is not infringed where the owner consents to its use within the European Economic Market (section 12 TMA). 

  Key defences to alleged copyright infringement.

  • Claimant's consent/authorisation. 
  • Disclosure in the public interest (section 171(3) CDPA; Beloff v Pressdram [1973] FSR 33; Lion Laboratories v Evans [1985] 2 All ER 417; Hyde Park Residence v Yelland [2000] EWCA Civ 37). 
  • Fair dealing: there is no infringement if there is fair dealing for the purposes of research or private study, criticism or review, or reporting of current events (sections 29-30 CDPA). 
  • Incidental inclusion: a copyright is not infringed by its "incidental inclusion" in another artistic work or film, broadcast, or sound recording (section 31 CDPA). 

Key defences to alleged passing off.

  • Claimant's consent/authorisation. 
  • Delay by the claimant in bringing the claim (Habib Bank v Habib Bank AG Zurich [1981] 1 WLR).
  • The mark has become generic or common place. 
  • The mark is no longer distinctive. 
  • The mark is descriptive. 
  • Use of your own name, including a company name (Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ 110; Reed Executive Plc & Ors v Reed Business Information Ltd & Ors [2004] EWCA Civ 159). 
  • Honest/concurrent use: where both the claimant and the defendant have independently built up sufficient goodwill that the law deems them both entitled to the goodwill (General Electric Co v General Electric Co Ltd [1972] 2 All ER 507; Peter Waterman v CBS UK [1993] EMLR 27; Dent v Turpin [1861] 2 J & H 139). 

  Key defences to an alleged breach of confidence.

  • Claimant's consent/authorisation. 
  • Public interest: dissemination of information may be legal if there is public interest in that disclosure. Disclosure must be "in" the public interest, not just "of" public interest; meaning matters which affect the moral, political, medical, or material welfare of the public may be protected, whereas information which merely feeds the public's entertainment or curiosity may not. 
  • Freedom of expression (Article 10 HRA 1998).