Friday, October 10, 2008
Databases are big business these days with almost all websites interacting with a database. The European Database Directive was set up to protect these valuable assets based on the existing copyright regime. 'Screen scraping' of website database information is now fairly common and this should assist database owners from protecting their rights.
A person infringes a database right if, without consent, they extract or re-utilise all or a substantial part of the contents of a database. The Directive prevents "extraction" which in this recent decision was interpreted widely. Thus protection can be seen to be wider.
Proving the copying of a database right is always difficult though. There are technical (coding) ways to demonstrate copying but the best and most practical way is to insert "Ghost" (made up) entries or insert deliberate mistakes or grammatical errors that others are unlikely to have made. The chances of two people making the same mistakes and making up the same "Ghost entries" is highly unlikely.
Since October last year there have been numerous changes to the UK rules the govern UK trade mark applications. On 1 October 2008, the next changes came into force.
The main change is the reduction of the opposition period from three months to two. The opposition period is the time allotted for objections to a trade mark application. For example if a brand owner considers that an application is too similar to theirs they may oppose.
This combined with the option of fast tracking an application could mean that trade mark applications could proceed to registration in 4 months. This is great news for businesses looking to protect their brands, especially if they are rushing to protect a new product prior to launch.
Since October 2007 brand owners and not the trade mark registry must ‘police’ applications that they consider are too similar. Consequently, market vigilance will have to be heightened to ensure that oppositions are actioned sooner.
There is some comfort - where a need to oppose an application is identified, it will be simple and free to extend the period to three months. In addition trade marks can still be revoked or invalidated post registration if you miss the opposition period, but this is more costly and difficult.
An opposition requires formal legal proceedings with cost implications should a party lose. From October there are numerous procedural amendments to this system that are designed to streamline the trade mark tribunal system.
It is best to avoid oppositions by drafting the application correctly at the outset and assessing the risk of an opposition by carrying out searches to identify possible conflicting marks.
From October it will also be critical to get your application in order before you file it because the time period to correct application deficiencies and classification will be reduced to one month. If this is exceeded the application will have to be re-filed and a further application fee incurred.