Protecting Your Intellectual Property

Charities are at risk of intellectual property infringement just as much as commercial brands. The Royal British Legion discovered that counterfeit poppies were being passed off as the genuine article in the lead up to this year’s Remembrance Day. This case serves as further proof, if any was needed, that charities need to have a strategy to protect (and benefit from) their intellectual property, so that their brands and goodwill are not tarnished.

Remembrance Day 2018 marked the 100th year since the guns of the Great War fell silent. The Royal British Legion, which was founded in 1921, has been out in force this year with a poignant television advert featuring well known personalities thanking veterans, a significant number of charitable events (including a Himalayan expedition) and, as always, the volunteers selling official Royal British Legion poppies as part of the Poppy Appeal.

The poppy was inspired, as a symbol of remembrance, by the World War I poem “In Flanders Fields”, written by John McCrae. The Royal British Legion have a number of registered trade marks which incorporate the poppy symbol and the charity’s website states that the poppy may only be used with the permission of the charity. The symbol itself has been used in a number of variations and there have been attempts in the past to exploit the brand recognition associated with the appeal.

Most recently, during a raid in Manchester, the Trading Standards Office seized over 1,700 counterfeit poppies in the lead up to Remembrance Day. It appears that the counterfeit goods, which included poppy badges with the slogan “Lest we forget”, were to be sold for a profit and without any benefit to the Royal British Legion. Counterfeit Chinese poppies were also found online on some of China’s largest online retailers, prompting the Intellectual Property Office to warn consumers of the risk of being sold a counterfeit poppy.

Charities using items that are closely associated with their campaigns, such as poppies, roses or even certain colours, should be vigilant and prepared to take action for intellectual property infringement. This could include trade mark infringement or under the tort of “passing off”. Broadly, the practice of passing off is where one trader gives consumers the impression that the goods they are selling belong to, or are otherwise connected with, those of another trader who has established goodwill and reputation. In this case, the Royal British Legion has developed significant goodwill in the iconic poppy that they sell. An individual buying a poppy will automatically assume that they are making a donation to the Royal British Legion. Therefore, it is arguable that they are being misled when their money is not donated to the charitable cause.

In order to reduce the risk of infringement, non-profits should consider taking similar steps to those of well-known commercial brands in order to protect their intellectual property. The first step that we recommend is to conduct an intellectual property audit. Review the registered trademarks that are held and if there are a significant number, or they span a number of jurisdictions, consider trade mark portfolio management. If there are no trade marks registered then the charity is likely to be missing out on one of its most valuable assets. Understanding what intellectual property is owned by the organisation and how it is relevant, as well as having a strategy not only to protect but also to take advantage of its commercial value, is therefore essential.

The next step is to review the licensing agreements that the charity has in place that authorise other organisations to use intellectual property. The charity should review whether the licensing agreement is still fit for purpose and whether the licensee is using the charity’s intellectual property rights appropriately and in accordance with its licence.

A further step for charities to be aware of are the internal anti-counterfeiting strategies that they may wish to undertake. This can include steps such as implementing a reliable system of recording counterfeit case details and creating product identification. These measures ensure that the costs of working with UK enforcement agencies, such as UK Border Force, remain low. Criminal proceedings could be brought either by the UK Police or by Trading Standards and charities can provide the necessary support in these situations efficiently by using standardised documents.

Charities may find it useful to monitor the Royal British Legion’s handling of this recent example of intellectual property infringement and consider whether the charity is adequately protected against the risks identified above. The more well known a charity becomes and the greater recognition it gains, the higher the chance that another organisation will seek to associate itself with it. This comes with a greater need for reputational security. Good intellectual property protection, including an up-to-date audit of registrations and agreements, will stand the charity in good stead in the event that a dishonest third party attempts to gain an unauthorised benefit.

The law and practice referred to in this article has been paraphrased or summarised. It might not be up-to-date with changes in the law and we do not guarantee the accuracy of any information provided at the time of reading. It should not be construed or relied upon as legal advice in relation to a specific set of circumstances.

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