An Innocent mistake

Innocent

A recent case involving the social enterprise responsible for Innocent Smoothies highlights the risks of not getting intellectual property rights assigned.

Fresh Trading Limited (Innocent) commissioned a design company to design a logo for its smoothie products. That logo is the well-known one shown here. In return for the transfer of the intellectual property rights (IPR) in the logo, the designers would receive shares in Fresh Trading Limited.

The design company never received its shares and the agreement drafted between the two companies was never signed. Some years later, a dispute over the ownership of the rights in the logo ended up in High Court litigation after Innocent lost the rights to its trade marks.

The court ultimately found in favour of Fresh Trading Limited (Innocent) but this case highlights important factors for both designers/design agencies and those commissioning designs.

  1. The IPR in a design are owned by the designer unless contractually stated otherwise.
  2. The transfer of IPR should be clearly documented in a written and signed agreement.
  3. While assets other than cash can be used to pay for design services, the agreement should clearly state what those assets are and what happens to the rights in the designs if payment is not made.

The risks of overlooking these details are:

  1. Costly legal proceedings for both parties.
  2. Loss of the brand and its associated value for the commissioning business.
  3. Costs of re-branding for the commissioning business.
  4. Expense of buying the IP rights from the designer.

Prompt action needed by EU trade mark owners – check your class headings

If you have an EU trade mark or an International trade mark designating the EU that was registered before 22 June 2012, you need to take swift action to check if the full class heading has been used, without any limitations, to identify the goods and services. All class headings now take their literal meaning.

What does “literal meaning” mean in practice?

The Class 25 heading is for “clothing, footwear and headgear”. Most of the goods from the list for class 25 come within the literal meaning of that heading. However, for class 12, the heading is “vehicles; apparatus for locomotion by land, air or water. The full list of goods for that class includes airbags. The literal meaning of the class heading would not include airbags and so if this was your business, your product may no longer be covered by your trade mark registration.

Declaration

The European Intellectual Property Office is giving trade mark owners until 24 September 2016 to file a declaration (free of charge) to make any changes to their existing class specification. After this date, changes can no longer be made and a new application would need to be filed to include additional goods/services within the class. The declaration allows you to include any additional goods or services that are not covered by the literal meaning of the class heading.

Next steps

  1. Check your portfolios for any trade marks filed before 22 June 2012.
  2. Identify which of those marks use the full class headings, without any limitations.
  3. Decide whether or not the literal meaning gives you the full protection that you need for your goods/services.