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Legal Focus
OCTOBER 2013
UK Intellectual Property Law
As part of our focus on UK Intellectual Property Law, we take a look at the issues surrounding passing-off, following the recent case involving pop star, Rihanna, winning a High Court claim against clothing retailer, Topshop for passing-off. To find out more, we speak to Rob White, Senior Trade Mark Attorney with Avidity IP.
Please introduce yourself, your firm and your role.
My role involves the searching, protection and enforcement of the trade marks, domain names and design rights of companies as well as issues concerning copyright.
Please explain passing-off in layman’s terms.
Passing-off is an important and historical provision under UK common law rather than based on any statute. It protects unregistered trade mark rights and exists in order to help consumers from being misled or deceived into believing the goods/ services of one company are actually provided or approved by a different company. There are three requirements to succeed in passing-off- Firstly, the plaintiff company taking the action must show that it has built up a ‘goodwill’ or reputation in its trade mark; secondly, that the other party concerned is misrepresenting itself (whether or not deliberately) as being the plaintiff company or being approved by or connected to the plaintiff; and finally, that this misrepresentation has caused or is likely to cause damage to the plaintiff.
How big an issue is passing off in your country? Which sectors are most affected by it?
Passing-off can affect any business sector and any business large or small if the company concerned has established a goodwill and recognition of its trade mark. The case law in passing-off is often in the retail sector or the services sector such as financial services, estate agents, gardeners and often smaller companies who may not have a registered trade mark to rely on.
Pop star Rihanna recently won her High court claim against topshop for passing off, highlighting reason for caution for businesses that use the goodwill of celebrities without permission that may suggest an association or endorsement. What are your opinions on this case?
In my view, her victory was a close call. There is no image/personality right per se in the UK unlike, for example, in the US or Germany. Here, Rihanna’s victory was only due to the fact that she is also seen as a fashion icon as well as a pop star with links and deals with clothing retailers that led to the risk that some may be deceived into thinking the t-shirt with Rihanna’s image was authorized by her. Deception had occurred because consumers may have believed the garment had her approval. Also, as Topshop had been associated with the likes of Kate Moss and her image and had even arranged a promotional store visit by Rihanna in London, there was a greater risk of passing-off here. The damage to Rihanna was through her loss of merchandising opportunity and due to having no control over her image in that instance.
How can companies guard themselves against such actions?
It is a more
accessible action with a relatively quick and cheaper (but not cheap!) option of taking action through a specialised Intellectual Property Enterprise Court (IPEC) route.
It is a big issue
with trade marks in the UK and is often used by companies in conjunction with a claim of infringement of a registered trade mark.
The conclusion of Justice Birss in the case is worth quoting: “The mere sale by a trader of a t-shirt bearing an image of a celebrity is not, without more, an act of passing-off.” To help guard against such actions, obviously, seeking permission and a licence from the individual to use the image, avoids conflict. If the image is in the public domain in terms of its copyright protection or if you have paid the photographer concerned for the image, this avoids copyright issues. Also, if the celebrity concerned would not be associated with the goods the image is on, passing-off is far less likely, e.g. an image of Bruce Lee on martial arts equipment would be higher risk than his image on a rucksack.
What are the main intellectual property issues to consider when using the images and goodwill of celebrities and other influential people?
Consider copyright in terms of getting the permission of the photographer
if relevant.
Consider the influences and connections the celebrity has and whether you, as user, have had deals with other celebrities in the past which may increase the passing-off risk. How broad is that celebrity’s reputation? Consider a search for registered trademarks of the celebrity’s name to ensure you do not use their name in any way which could infringe a trade mark registration. There may even be a registered design for the image which if you reproduce on any goods, would infringe that design.
Concerning passing-off in particular, as this has developed organically over a couple of centuries through the common law, I personally do not believe a specific image/personality right law should be introduced in the UK. Rihanna and before her, Eddie Irvine in a case against Talk Sport, have shown that, in the right circumstances, a celebrity can prevent the unauthorised use of their image through passing-off as well as considerations of copyright infringement in the image. If the celebrity is truly damaged and consumers are misled, passing-off already provides a solution. LM
contact: Rob White tel: 0118 9509937 Email: rob.white@avidity-ip.com