Wright, Johnston & Mackenzie Solicitors

McDonalds not the only “Mc” in town

Following a lengthy court battle, the owners of Malaysian restaurant McCurry will be able to continue trading under the “McCurry” name after defeating American hamburger giants McDonalds over the use of the prefix “Mc”. 

McDonald’s first raised a legal action against McCurry’s owners Mr and Mrs Suppiah in 2001, claiming that using “Mc” in the restaurant name infringed McDonald’s trademark rights. 

McCurry’s owners have always claimed that McCurry is an abbreviated form of “Malaysian Chicken Curry” and argued that there was no evidence to show McCurry was trying to pass itself off as part of the McDonald’s empire. The restaurant has been open for ten years and serves traditional Indian and Malaysian food, including fish head curry. The restaurant does not serve hamburgers.

In 2006, the High Court in Malaysia found in favour of McDonald’s and McCurry were forced to remove the “c” from their sign outside the shop. The judge in the High Court found that Mr and Mrs Suppiah’s use of the word McCurry and their employing signage featuring colours distinctive of the McDonalds brand could give rise to confusion and deception i.e. the public could be confused between the two brands.

Mr and Mrs Suppiah then took the case to the Court of Appeal, who delivered their ruling earlier this month. The three member panel unanimously found in favour of McCurry.  McCurry successfully argued that McCurry’s and McDonalds are different businesses, which sell different types of foods and have different customers. The Court of Appeal also agreed that nobody could ever possibly confuse the two restaurants. 

Now that the legal battle is over, Mr and Mrs Suppiah plan to open new McCurry’s branches across Malaysia. 

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Removals firm sued for use of photograph on website

Photographic agency Getty Images (Getty) has successfully sued a London removals firm for using a copyright-protected image on its website.

Getty had a contract to market a picture entitled “Mother with daughter looking at each other and smiling” on behalf of its owner, Canadian photographer Larry Williams.

In late 2007, Getty became aware that removals firm JA Coles was using the photograph on its website without their consent. Getty wrote to JA Coles and requested that the photograph be removed from the website, and requested a fee for Coles’ use of the photograph.

JA Coles complied with the request to remove the picture but did not pay the requested fee.

Getty then sued JA Coles in the English High Court for copyright infringement and compensation for “the insidious damage” caused by JA Coles’ use. A spokesperson from Getty said, “We are committed to protecting the intellectual property rights and livelihood of the artists whose work we licence. Some companies think that when they find images online, they are somehow in the ‘public domain’ and free to use. That is just not true”.

The High Court agreed and found JA Coles liable for damages of almost £2,000 over the use of the picture, plus Getty’s legal costs.

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Disney sued for selling Pixar lamp

Norwegian lamp maker Luxo, creator of the original Luxo desk lamp, is suing The Walt Disney Company and animator Pixar for an alleged trade mark infringement in the US. The move ends 23 years of amicable relations between the companies.

The Luxo desk lamp was the inspiration behind the now famous Pixar lamp logo and first appeared in Pixar’s films in 1986. Luxo have since that date allowed Pixar (now owned by Disney) to the use the Luxo name in connection with Pixar’s Luxo Jr. character and to use the character in its logo.

Luxo’s move to sue Disney stems for their discontent at the soon-to-be released “Limited Edition Luxo Jr. Lamp Collectible Pack” which comprises of a DVD of a Disney Pixar film and includes a small lamp bearing ‘Luxo Jr.” on the base. Disney has also created a six-foot animatronic version of Luxo Jr. at Disney’s Hollywood Studios Theme Park.

Luxo says that Disney is infringing their Luxo trade mark by selling the lamps bearing the Luxo Jr. name without its permission.

Luxo is also arguing that the lamps being sold by Disney are of an inferior quality and that the use of Luxo Jr. on the lamp’s base would confuse customers into believing that Luxo created the Disney lamp. They also argue that this alleged inferior quality would damage Luxo’s reputation.

Luxo is seeking to destroy any existing Disney lamps, prevent any further lamps being made and receive damages from any Disney profits. The iTech team will keep you updated as the case progresses.

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The buck stops with Internet Service Providers - or does it?

Two Internet Service Providers (ISPs) have been ordered to pay more than $32 million in damages after being held responsible for businesses using their services to sell counterfeit goods.

The action was raised in the US against the ISPs by Louis Vuitton, who complained that the ISPs were profiting from businesses selling counterfeit Louis Vuitton goods using their services.

The ISPs tried to rely on the “safe harbour” protections given to ISPs under the US Digital Millennium Copyright Act. Under the Act, ISPs are protected from liability for users’ copyright infringing activity as long as they are not aware of it. However, once the ISPs are informed of the infringing behaviour, they are liable and are obligated to take action to stop it.

The court found that the ISPs should have known that the counterfeit goods were being sold using their services and tried to put a stop to this. As they did not, they could not rely on the “safe harbour” provisions and therefore infringed Louis Vuitton’s intellectual property rights. As a result, they were ordered to pay damages amounting to $31.5 million for trademark infringement and $900,000 for copyright infringement.

This judgement in the US courts differs to the recent opinion given by the Advocate General in relation internet search giant Google’s keyword advertising system (AdWord System).

The AdWord System enables any person or company to have their adverts appear on Google beside certain keywords. This allows a company to have their adverts appear when a search is made for a competitors trade marked name.

Three trade mark owners in France brought a case to the French courts on the basis that the AdWord System breached their trade mark. The French courts then referred the cases to the European Court of Justice (ECJ). The Advocate General has given his opinion on these cases prior to the final judgement by the ECJ.

The Advocate General considered that Google, by displaying advertisements in response to keywords corresponding to trade marks, established a link between those keywords and the websites advertised.

However, the Advocate General felt that this link did not constitute trade mark infringement on the basis that the mere display of relevant websites in response to key words was not enough to lead to confusion.

The Advocate General’s opinion provides some clarification of trade mark law in the EU in relation to keyword advertising, although it remains to be seen whether it will be followed by the ECJ when it gives its decision.

Trade mark owners are likely to be disappointed with the Advocate General’s opinion, but it should be noted that the opinion is only concerned with the use of keywords which correspond to trade marks, not the use of trade marks in advertisements, or in the products sold via the sites advertised.

If you wish any further information in relation to trade marks, copyright or intellectual property rights in general, please contact a member of the iTech team.

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Importance of employment contract protection highlighted in former employee database copying case

An ex-employee of a conferencing firm has been found by the English High Court to have breached a number of rules relating to confidentiality and database protection, after being caught taking private information from his employer on his departure from the company.

Richard Braachi was accused of taking details relating to the sales from his previous employer - First Conferences - and contacts from its database, then emailing the information to his private email account.

Braachi subsequently set up a new conferencing business, and allegedly organised a conference in competition with his former employer, using the information he had taken. He was accused of contacting a number of speakers who had previously attended First Conferences events, requesting that they appear at his conference. He was also accused of misleadingly suggesting to them that his previous employer was holding the event, attempting to pass off his new business venture as a project of First Conferences.

As a consequence of these events, Braachi fell foul of UK and European IP law. A database is protected under the Copyright and Rights in Database Regulations 1997.

Braachi was found to be in breach of Article 16(1) of the Regulations, which states that “a person infringes a right in a database if, without the consent of the owner of the right, he extracts or re-utilises all or a substantial part of the contents of the database.”

The Court found that Braachi’s taking and using the details of First Conferences client database, constituted extracting a substantial part of the contents of the database without consent, in breach of the Regulations.

The combination of (1) taking contact details and sales information; (2) misleading the potential speakers; and (3) the allegation that Braachi transferred a domain name belonging to First Conferences to his new business, lead the Court to conclude that “It is difficult to see a more blatant example of the Defendants passing off their business as that of First Conferences.”

It is important to protect your business against ex-employees using your business’ confidential information or client databases to set up in competition with the business or solicit customers away from you.

This can be done through properly drafted employment contracts. Please contact a member of the iTech team for further information.

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New fee structure for Data Protection notification

Most businesses are liable to register with the Information Commissioner as “data controllers” under the Data Protection Act 1998. Failure to notify can lead to a hefty fine.

From 1st October 2009, the Information Commissioner has introduced a new fee structure: data controllers with 250 or more staff and a turnover of £25.9m per annum or more will pay an annual justification fee of £500. Some charities and small occupational schemes will be exempt. All other data controllers stay on the original £35 annual fee.

Notification is fairly straightforward: more details are available on the Information Commissioner’s website www.ico.gov.uk.

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