Intellectual Property

Intellectual Property Assignment

There are a number of intellectual property concerns with regards to the given set of facts and these relate to four specific elements of the given facts namely, the publication of the information in GOSSIP magazine, the proposed book written by Jayson, the registration of trademarks by Lisa and the opening of the competing salon by Emma. These potential legal issues stem from a number of common law and legislative provisions and will be dealt with separately in terms of the relevant law that they relate to. Broadly, these legal issues arise in relation to the breach of confidentiality with regards to personal information and trade secrets, and the creation and infringement of trademarks.
Breach of Confidence: The Book

Breach of confidence or misuse of information in this context refers to the intended publication of the business plan which was discussed by Lisa and Jayson on their holiday, as well as the publication of the details of their intimate relationship.
There are a number of preliminary observations with regards to the current case. The first is that there is no common law right of privacy as confirmed by the court in Kaye v Robertson [1991]. Despite this however, Article 8 of the ECHR as imported into domestic law by the Human Rights Act 1998 does provide a legal basis for the protection of the right to privacy with regards to confidential information. This was confirmed by the court in Campbell v. MGN Limited [2004]. The second observation is that the current facts are distinguishable from a number of cases on the subject in the matter as they involve the publication of information gained from a private relationship and therefore based on inferred confidence that exists in private relationships rather than the breach of confidence resulting from a breach of contract or that which exists in an employment relationship or other business relationship. In McKennitt v Ash [2005], the court confirmed that the essential element for a breach of confidence in this case rested on the pre-existing relationship between the parties. This is a relevant consideration for the current facts as there is no formal contractual relationship existing between Lisa and Jayson in this case.
In Coco v AN Clark (Engineers) Ltd [1969], Megarry J. stated that there are three essential elements required for a successful action for breach of confidence:
The information must be of a confidential character.
The imparting of the information must be in circumstances where the confidant ought reasonably to have known that the information was confidential.
The information must have been used or disclosed in an unauthorised manner causing a detriment to the claimant.
With regards to the first requirement that the information be of a confidential nature, the courts have taken the approach of a negative definition of this quality stating that the information must not already be that which is in the public domain (Coco v AN Clark (Engineers) Ltd). In the current circumstances, the information that will form the subject matter of the book is not in the public domain and based on the personal nature thereof, can be argued as confidential as it contains information about the private life of Lisa.
With regards to the second requirement, this is an objective test which asks what a reasonable person considers to be confidential. In the case of personal relationships this may be personal information and that it may be known to a third party does not preclude the information from being confidential (Argyll (Duchess of) v Argyll (Duke of) [1965]). On analysis therefore of this requirement in terms of the current facts of Jayson and Lisa, it stands to reason that the information passed between Lisa and Jayson was done so on an implied understanding of confidence in their personal relationship and does not exist in the public domain currently. Arguably therefore the information does possess the requisite quality of confidence.
With regards to the third requirement, there are a number of relevant considerations. This detriment to Lisa arguably may exist in a number of ways. The first is a breach of her right to privacy under Article 8 of the ECHR. In Campbell v. MGN Limited [2004], the court established a three step test in determining if the right to privacy was being engaged. The first step is to show that there is a reasonable expectation of privacy, arguably mirroring the first requirement of breach of confidence. The court noted that this is problematic in the case of celebrities as their private life is something which is generally in the public domain already. The second step is in establishing a balance between the Article 10 right to freedom of expression and the claimant’s right to privacy which necessitates an inquiry into public interest. The third step is to establish that the publication should not be allowed in terms of section 12(3) of the HRA. A further detrimental effect that may exist mirrors a claim for defamation that the information may be detrimental to the reputation and image of Lisa in the circumstances.
Based on the judgment of Campbell, it seems unlikely that an application for breach of confidence will succeed, because Lisa is a celebrity. Lord Hoffman stated in obiter that romantic or sexual relationships of public figures or celebrities are not necessarily subject to the same privacy considerations as ordinary persons due to the commonplace of this information in everyday life. Despite the private connotation of such relationships, a celebrity may reasonably expect their intimate relationships to be known as well as the parts of their private life which they willingly share with the press. This however is not to say that Lisa would not be able to get an injunction against the release of information relating to her business plan which she discussed with Jayson. Coco v Clark established that there can be such a breach of confidence despite the lack of contractual obligation between parties. On the basis of the requirements for breach of confidence, it is clear that this information was imparted in a relationship where Lisa could reasonably expect a degree of privacy and could suffer actual loss as a result of the publication of this information. It is possible therefore that Lisa may be able to get an injunction against the publication of her business plan, although not for the details of her private life with regards to the proposed book.
Defamation and Privacy: Gossip Magazine
Defamation is defined in Sims v Stretch [1936] as:
A defamatory statement is one which injures the reputation of another by exposing them to hatred, contempt or ridicule, or tends to lower him in the esteem of the right-thinking members of society.
Defamation however, only exists for false statements, as truth is a defense thereto. There is no indication on the facts that the information published in the magazine was false and therefore Lisa does not have a claim for defamation, despite the potential damage to her reputation.
With regards to the photographs published, there is no claim for proprietal infringement (Prince Albert v Strange [1849]) as Jayson recorded the video and captured the pictures and therefore is the owner therefore.
Arguably, Lisa may have a claim for an infringement of her right to privacy on the criteria set out in Campbell, however consistent with the difficulty noted above as to her status as a celebrity or public figure, this application may have significant difficulty in succeeding in court.
Nail Varnish and Salon Name
Lisa wishes to register as many trademarks as she can over the salon and the nail varnish. Potential trademarks therefore may exist over the name of the salon “A. OCEAN”, “RETURN TO THE OCEAN”, the dolphin shaped container, the distinct colour scheme, and the smell diffused on opening the bottle.
According to the s1(1) Trade Marks Act 1994: A “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.
In addition to falling within the definition of a trade market under s1(1) of the Act, the mark must also not fall within the prohibited categories under section 3(1) of the act. If however it is found that the trademark does not satisfy the requirements of s3(1)(b) – (d), it may still be registered on the basis that it has become distinctive through use.
According to this definition, ‘any sign’ means anything which can convey information; ‘capable of being represented graphically’ means it must be possible for a trade mark to be represented in two-dimensional or three dimensional forms and ‘capable of distinguishing the goods or services of one undertaking from that of another’ means that distinctiveness of strong marks may be those with unique names and those which are merely descriptive may be weaker.
In the leading case of Sieckmann v Deutshces Patent-und Markenamt [2004] the European Court of Justice held: “A sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”
The development of these criteria has led to a case being made for scents as trademarks, however Sieckmann held that this is problematic as it may not satisfy the criteria of a trademark in the case, although in Firma Senta Application [1999], a scent application was allowed because of the distinctiveness of the smell and the fact that everyone knows the smell through experience. With regards to the registration of the smell diffused by Lisa’s nail varnish upon opening of the bottle, this may be capable of registration as the smell of the sea is a distinct scent which may be known to a significant portion of the general public and therefore, following the ratio of the Firma Senta Application [1999], may be capable of registration.
With regards to the registration of the colour scheme, following the case of Libertel Groep BV v Benelux-Merkenbureau [2003], Cadbury Ltd’s Application set the precedent for allowing the registration of colour schemes with regards to specific goods and services. Therefore it is possible for Lisa to register the distinct colour scheme of her nail varnish, but this may apply only to nail varnish.
The dolphin shaped bottle of Lisa’s nail varnish is considered as packaging falls under the shapes or three-dimensional trademarks category, which are capable of being registered under the Act. Under S1(1), in order to be registered the first requirement is that the shape must be capable of being ‘represented graphically’ and for a shape mark, this is not problematic as generally they are able to reduced to a drawing.
Whilst there is no specific criteria for measuring distinctiveness in terms of s1(1), there are a number of factors with regards to distinctiveness that may present a number of difficulties for the registration of the salon name “A. OCEAN” and the name of the nail varnish “RETURN TO THE OCEAN”. This is so, because these words are not unique and may be found to be descriptive. Additionally, the presence of the competing nail varnish product “GO BACK TO THE OCEAN” may prove as a reason for the rejection of the trademark application. Under s5(2) of the Act, the registrar will not allow registration of a mark that is the same or similar to an earlier mark as a relative ground of refusal as there may be likelihood of deception of confusion. This is not to say however that this will stand as an absolute ground for the refusal of registration, as these two names may still be capable of registration as having acquired distinctiveness through use. To satisfy this requirement for distinctiveness, the marks must satisfy the requirements of the test for distinctiveness in Windsurfing Chiemsee [1999]. The ECJ provided guidance as to the conditions which would create the requisite distinctiveness to satisfy s3(1)(d) of the Act, as having acquired distinctiveness through use. The court found that: “If the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied.”
With regards to the name of the salon and the nail varnish, these may be capable of registration if it is distinctive in this way. In Philips v Remington, the court also considered the fact that the more descriptive and non-distinct a mark, the more work the proprietor will need to undertake in order to have the mark recognizable to the average consumer. It stands to reason therefore that the extensive advertising campaign that was undertaken by Lisa may in fact have served the purpose of establishing the name of the salon and nail varnish as distinctive trademarks in a significant proportion of the relevant class of persons. This is an objective determination made in light of all relevant circumstances (Windsurfing Chiemsee [1999]).
In conclusion therefore, “A.OCEAN”, “RETURN TO THE OCEAN”, the dolphin shaped container, the distinct colour scheme, and the smell diffused on opening the bottle are all marks that are capable of registration under the Trademarks Act. For the name of the salon and the nail varnish, there is a significant reliance on the success of the advertising campaign undertaken by Lisa as these marks are not unique per se and may be held to be too descriptive. In the case of RETURN TO THE OCEAN, this will be refused as it is too similar to the competitors name with regards to distinctiveness.
P. OCEAN – Trademark Infringement
In the case of Emma leaving her employment at A. OCEAN and starting her own salon, the issue of trademark infringement arises. Trademark infringement can essentially occur for both registered and unregistered trademarks, and while it is not clear on the facts whether the trademark of A.OCEAN had been registered, it is necessary to consider both scenarios.
According to section 10 of the Act, infringement of a registered trademark may occur in four ways:
Identical marks in relation to identical goods or services (s10(1))
Identical marks in relation to similar goods and services andthe public are likely to confuse or associate the later trade mark with the earlier mark (s10(2)(a))
Similar marks in relation to similar goods and services andthe public are likely to confuse or associate the later trade mark with the earlier mark (s10(2)(b))
Identical or similar marks in relation to goods or services that are not similar and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character of the earlier mark (s10(3)).
It is clear in the case of A. OCEAN and P. OCEAN that if the mark was registered, the infringement would be according to 10(2)(b). It is clear on analysis that there would be an infringement of registered trademark here as the names of the salon are very similar, and the goods and services offered by the salons would lead to a likelihood of confusion. Although, arguably there are a number of factors that may direct away from such a conclusion. The first is that the services offered by the salons are fairly standard in terms of what the general market of salon offers to their clientele and in fact, it could be argued that Emma’s salon offered more of a customized service than Lisa. In addition to this factor, the fact that Lisa’s salon trades in London whilst Emma’s is in Scotland may indicate that there is no likelihood of confusion because of the fact that they trade in vastly different geographical areas. This may in part depend on the nature of the advertising campaign that Lisa undertook, as it may be established that it was a national campaign and therefore extends the reach of the A.OCEAN salon to Scotland where Lisa operates. There is no indication in the legislation that the infringement of a registered trademark is limited by geographical location and therefore it stands to reason that the operation of the act affects the whole of the U.K regardless of the scope of the business operations of that trademark. It is likely that under the Act, Emma would be found liable for infringement of a registered trademark, if the mark of A.OCEAN was registered at the time.
If the mark is not registered, Lisa still may have a common law remedy known as passing off. This applies to unregistered trademarks and protects the goodwill associated with certain goods and services. According to the House of Lords decision in Reckitt & Coleman v Borden Inc [1990], Lisa must establish the following three elements in order to establish infringement of the unregistered mark:
OCEAN is an established trade mark that has acquired a reputation and/or goodwill in the mind of the relevant section of the public.
The offending trade mark has been, or is likely to be, confused with your established trade mark.
There is a likelihood of damage following the use of the infringing mark.
According to IRC v Muller and Co’s Margarine [1901], goodwill is defined as the benefit and advantage of the name and reputation of a business. With the extensive advertising campaign that was undertaken by Lisa, it stands to reason that the requisite goodwill and reputation was established.
This goodwill may be restricted in terms of geographical areas and therefore an action of passing off may not be found in this case considering the vastly different geographical locations in which Lisa and Emma operate. This speaks to the likelihood of confusion that may be associated with the mark as considering that the section of the public likely to be confused is not a shared market. This is furthered by the notion of likelihood of damages, as there may be no actual damage to the business or business reputation, as the operations areas are so far apart that it is unlikely that any customers will be lost to Emma’s salon. As noted above however, this may depend entirely on the advertising campaign that was undertaken by Lisa, as the reach of the campaign may have been national and therefore extends the goodwill associated with her mark.
Trade Secrets & Breach of Confidentiality: Personalized Training Programme
With regards to trade secrets and the breach of confidentiality, the relevant law has been outlined above and therefore will be discussed only in terms of its application to the current set of facts. The law of confidentiality arguably applies in this situation because of the use of information gathered at A.OCEAN salon which was then used by Emma in P.OCEAN. This is specifically with regards to workplace confidentiality that may exist in the use of client records for the development of the training programme. Arguably, this information represents a classic situation of workplace confidentiality as it relates specifically to information gathered in the course of employment in A.OCEAN salon. In the absence of a contractual agreement of employment which protects the confidentiality of this information, Lisa may rely on the common law remedy established in Coco v Clark to protect the information that relates to her clients. Arguably however the law of confidentiality does not protect the use of the training schedule which was independently developed by Emma in her spare time despite this being based on the clientele information of A.OCEAN. Therefore, unless it can be proved that Emma is making use of confidential information in the implementation of her programme in P.OCEAN, the law of confidentiality does not necessarily apply.
Based on the law therefore there are a number of potential legal issues that Lisa faces. With regards to the publication of her personal information by GOSSIP, unless the information that Jayson sold the magazine is false, there is no claim for defamation. It may be possible for Lisa to get an injunction prohibiting the publication of the book proposed by Jayson, if she can prove a substantial infringement to her privacy would occur. It is unlikely that the publication of the book would be prevented as her status as a celebrity significantly affects her privacy rights. It is however likely that she would be able to prevent the publication of the details of her business plan in this book, as these are detrimental to her business interests, over and above any personal reputational damage that may occur.
With regards to her business interests, it is likely that Lisa will be able to register at least five trademarks over her business if it can be proven that they possess the requisite quality of distinctiveness. It is possible that the extensive advertising campaign has had the effect of creating distinctiveness through use and therefore despite lacking a quality of distinctness in terms of the definition of a trademark, registration is still possible.
It is further likely that in the event of her registering the trademark over her salon, that there may be an action for trademark infringement against Emma, although this is limited if the trademark is not registered as actions for passing off have been previously limited to geographical area. Considering that A.OCEAN and P.OCEAN operate on opposite ends of the country, there may be no basis for a claim that there was misrepresentation and a likelihood of confusion leading to damages.
Further, with regards to the use of the personalized training programme developed based on the client information of A.OCEAN, there may be no action for breach of confidentiality or misuse of trade secrets as there is no actual use of confidential information and the personalized programmes that were used by Emma were developed in her private time and therefore may not breach any workplace confidentiality. This is however in the absence of any confidentiality agreements that she was party to upon entering employment with A.OCEAN.
European Convention of Human Rights
Human Rights Act 1998
Trade Marks Act 1994
Case Law
Argyll (Duchess of) v Argyll (Duke of) [1965] 1 All ER 611
Cadbury Ltd’s Application [2001] Case O-358-11
Campbell v. MGN Limited [2004] UKHL 22
Coco v Clarke Engineers [1968] FSR 415, CA
Firma Senta Aromatic Marketing’s Application [1999] ETMR 429
IRC v Muller & Co Margarine Limited [1901] AC 217
Kaye v Robertson [1991] FSR 62
Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-3793
McKennitt v Ash[2006] EWCA Civ 1714
Phillips Electronics v Remington [1999] RPC 809, CA
Prince Albert v Strange (1849) 1 Mac & G.25
Reckitt & Coleman v Borden Inc [1990] 1 All ER 873, HL
Sieckmann v Deutches Patent [2003] RPC 685
Sim V Stretch [1936] All ER 1237 (HL)
Windsurfing Chiemsee v Boots Case C-109/97 [2000] 2 WLR 205
Secondary Sources
Aplin and Davis, Intellectual Property Law (1st ed. OUP 2009).
Bainbridge, Intellectual Property (9th ed. Pearson, 2012)
MacQueen, Waelde& Laurie, Contemporary Intellectual Property (2nd ed. OUP 2010)