Protecting Your Intellectual Property

Among examples from recent years is the sale of counterfeit poppies in the run up to Remembrance Day. Every year volunteers sell poppies to raise money for The Royal British Legion’s beneficiaries as part of the Poppy Appeal. The poppies are both symbolic and crucial for fundraising. An individual buying a poppy will automatically assume that they are making a donation to the Royal British Legion, but there have been numerous attempts to exploit the brand recognition associated with the appeal, with counterfeit poppies sold for a profit and without any benefit to the Royal British Legion. The charity has a number of registered trade marks in place that incorporate the poppy, which stands it in good stead when challenging counterfeiters. 

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 action for 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 order to reduce the risk of infringement, charities should take similar steps to commercial brands: 

1. The first step is to conduct an intellectual property audit. In particular, review the registered trade marks that are held by the charity and if there are a significant number or they span a number of years or jurisdictions, consider whether the trade mark portfolio is up-to-date or whether it needs refreshing. If there are no trade marks registered, then the charity may be missing out on protecting one of its most valuable assets. If the charity creates product designs for sale through a trading subsidiary, for example, consider how those designs might also be protected, such as through design registration. 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 any commercial value, is essential.
2. Next, a charity should review the licensing agreements that it has in place that authorise other organisations to use their intellectual property. The charity should review whether the licensing agreements are still fit for purpose and whether any licensees are using the charity’s intellectual property rights appropriately and in accordance with their licences. This process might also uncover use of the charity’s IP by other organisations which is not covered by a written agreement.  
3. A further step for charities could be to prepare internal anti-counterfeiting strategies. This can include steps such as implementing a reliable system of recording counterfeit case details and creating product identification that can be shared with authorities. These measures ensure that the costs of working with UK enforcement agencies, such as UK Border Force, remain low and less time consuming. 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.

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 registered IP rights and licensing agreements, will stand the charity in good stead in the event that a dishonest third party attempts to gain an unlawful benefit.