Be ©areful

The notion of ‘branding’ can be alien, but some organisations increasingly find brands valuable as a means of ensuring future income. Brands have a number of different points of contact with the activity of arts organisations. This article is intended as an introduction only. You will probably all be aware of claims of ‘passing off’, which arise where a person (i.e. an individual or company) claims that another person is illegally using their goodwill, the public are confused and damage is being caused. This is a useful protection and can help prevent blatant misrepresentation. For instance, if an organisation traded as Cameron Mackintosh in the field of entertainment, there would be clear grounds for Mr M to ensure such activity stopped immediately. Passing off can be difficult to prove and is particularly costly to prosecute

Trade marks protect brands rather than reputations, and are far easier to enforce. There is, however, a cost attached to registering and maintaining trade mark protection – whether as a UK trade mark or as a Community trade mark (covering the European Community).
Arts organisations need to be aware of trade marks for two reasons: to ensure that there is no potential infringement of another person’s mark and to consider whether registration of a trade mark would be worthwhile. Trade marks can be words or images (i.e. logos) and can be registered in up to 45 classes. Each class relates to a range of product types and each mark must specify the goods it covers. Television broadcasters and media organisations register many trade marks which may cover live stage entertainment even if no such entertainment has taken place. For instance, the BBC owns the Community mark ‘Newsnight’. Playboy Enterprises International Inc has a Community mark for ‘Playboy’ in 31 classes – including education. It is possible to search the UK trade mark registry online for UK and Community marks. Disputes can arise if the title of a show, exhibition or other ‘product’ is the same or similar to products incorporated in a registered trade mark. If your use is identical then you have a major problem. Even if there is unlikely to be confusion, enforcement is relatively simple. Even if the title is different, straplines or other references can inadvertently include trade marks and should be checked. If promotional material is printed in advance and includes an unauthorised reference to a trade mark, then you may be forced to pulp and/or recall all the material at considerable cost. Checking the material at proof stage can reduce this risk.
It is text trade marks that are of particular concern, as it is unlikely that use of a registered image would be inadvertent. For instance the ‘Oliver!’ logo is registered, and anyone seeking to make unauthorised use of the logo should expect to be on the wrong end of enforcement proceedings and proceedings for copyright infringement. ‘The National Gallery’ is registered as a trade mark in 20 classes (including ‘edible Christmas tree decorations’ and ‘magnetic letters’). If your brand has value and there is a risk that others may seek to cash in, registering a trade mark may be worthwhile – particularly if merchandising or other ancillary exploitation is a possibility. I am not saying that registering trade marks is a must, but it should be considered. Passing off is the tap water of brand protection: it costs nothing but is of limited value. Trade mark protection is more like champagne – it doesn’t suit every situation and there is a cost attached.