With M&S and Aldi reaching a confidential agreement early on in the proceedings, this year’s Colin the Caterpillar vs Cuthbert the Caterpillar row failed to produce the plethora of case law initially anticipated by legal professionals and academics when news of the dispute was first brought to the public’s attention. It would therefore appear that we have ultimately learned little from this infamous row.
Yet, whilst we missed the entertainment of two retail heavyweights delivering and reciprocating some killer legal blows, we were treated to some interesting press and social media coverage outside of the ring. The proliferation of memes and cake-related puns was all very well and good, but it was unfortunately tainted with evident misunderstandings of the intellectual property world. National news outlets were caught referring to this dispute, which concerned the parties’ respective trade marks, as a ‘copyright row’ in their initial publications, before being amended at a later date.
This is not the first time that trade marks and copyright have been confused, and it will probably not be the last, especially given that they can and do mix in the commercial world. We hope our quick guide to UK copyright and trade mark law below will help you to understand and correctly identify these two types of intellectual property if you encounter them in the wild…
Relates to: Original expression of ideas, whether it is in a commercial context or not.
Format: “Works” including, but not limited to, passages of text, photographs, paintings, songs, films, plays. Copyright can also cover recordings of sounds and film, broadcasts and typographical arrangements. These works need not comprise remarkable creativity or artistic prowess to qualify: protection is open for all, not just the McCartneys, Beethovens and Spielbergs of this world.
Duration: Generally the lifetime of the ‘author’ (i.e. writer, photographer, artist, musician etc.) + 70 years from the end of their year of death.
Key purpose: Enable the protection and monetisation, if desired, of one’s own intellectual creations.
Infringing acts include: communicating the work to the public without the author’s permission, e.g. through copying, adapting or performing.
“I have been working on a book, what steps do I need to take to protect my work?”
Works automatically qualify for copyright protection in almost all countries worldwide once they have been recorded in some way (e.g. printed on paper or published online), so you do not need to do anything to obtain this right (even if there are some countries such as the US and China where it can be “registered”). If you believe your work has been infringed, however, it is recommended that you seek the services of a legal professional with expertise in intellectual property matters in order to understand the possible avenues of legal action available to you.
Relates to: Branding for commercial purposes.
Format: “Marks” or “signs”, most commonly words, images, and combinations thereof. Some marks can be of a more unusual form, such as colours, shapes, sounds and moving images. The scope of these marks must be particularised in relation to goods and/or services; nobody can have exclusive rights to the use of a word or image simpliciter. Likewise, these various forms of marks must be ‘distinctive’ in relation to their associated goods and services, so you cannot protect words like ‘delicious’ in relation to food products.
Duration: Potentially infinite, providing the trade mark continues to be renewed by its owner every ten years (a small number of countries have different renewal periods). In some countries there is also a requirement that the trade mark has been used for it to continue to be protected.
Key purpose: Enable the identification of the commercial origin of goods and services (i.e. a badge of origin).
Infringing acts include: Use of an identical or similar mark for identical or similar goods and services to those of the original mark where there is a likelihood of confusion.
“I am planning to set up my own brand of clothing, what steps do I need to take to protect this?”
Unlike copyright, trade mark protection is not endowed automatically upon the creation of a brand. Trade marks generally only acquire protection through a process of registration (although substantial use of a trade mark over a number of years can provide unregistered rights in the UK). Even then, the scope of protection is limited to the jurisdiction in which the trade mark has been registered. Registering a trade mark can be a simple and cost-effective way in which to gain protection for the brands that matter to you, as it can be as simple as filling out a quick online form and paying a fee. Nevertheless, the registration process can sometimes present unexpected obstacles, in the event of which it is highly advisable to seek the advice of a legal professional with expertise in intellectual property matters.
Where Trade Marks and Copyright Intertwine
In the event that a trade mark comprises an image or illustration, it will accordingly fall under the remit of copyright and trade mark protection. Thus, it can be possible for trade marks to be invalidated on the basis of copyright, for instance where Party A registers a trade mark comprising an image drawn by or a photograph taken by an unrelated Party B without their express permission. Consequently, copyright and trade mark law can intertwine in interesting ways, whereby copyright law informs the fate of a trade mark but with these two strands of intellectual property still maintaining their own separate legal identities.
We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys. We enjoy looking after your ideas so you are free to do what matters most to you.
Get in touch if you would like to discuss your innovations and brand protection further.
Olivia Vanstone Part-Qualified Attorney