A story about relationship building and a bit of international Intellectual Property law

Some of this will sound a bit vague, but this is for good reason. Please bear with me.

Earlier this year, in partnership with some other organisations, we organised an event. It was quite a complicated one, a challenge to organise but very well received.

With my colleagues in the working group we chose a name for the event. It was a bit zeitgeisty and for this reason we checked if it was trademarked in the UK. It wasn’t.

A few weeks before the event, I was approached by email by a gentleman introducing himself as the head of a US company and asking us to change the name of the event. He said it was a name that they were using and that they had trademarked it.

We were concerned to have inadvertently encroached on somebody’s rights so checked this out online. What we found was that, although they had trademarked the name in the US, they had not taken any steps to protect the name in the UK or Europe. As the information freely available from the US Patents and Trademarks Office makes clear ‘Patents and trademarks are territorial and must be filed in each country where protection is sought. A U.S. patent or trademark does not afford protection in another country.’ But never mind, as a friendly gesture, we proposed making a slight change to the name, to differentiate.

He agreed to this, with thanks. And also made a bit of a pitch to do work for us in future. His company’s services sounded quite cool, and relevant to aspects of what we do, and had things progressed differently, this is something we might have thought about.

However, what followed was an escalating series of emails, both from him and another colleague in his company.

  • They asked us to make further changes to our event title, beyond the one they had already agreed to.
  • They also asked us to publish a disclaimer, dissociating our event from their company whilst at the same time giving their company a plug. They wanted the plug because, they said, they were expanding to work internationally. As well as their company name, the disclaimer wording that they suggested referred to them having rights over another phrase which they hadn’t even registered in the US, let alone over here.
  • And then they started pursuing us about an event being run by an organisation in Italy, one to which we had no connection and which we had not even heard of. The tone of the emails became rather bellicose, including some shouty capitals in the subject field. When we put the first gentleman right about the Italian event and explained that it had nothing to do with us, we had an email 24 hours later from another person in the company, challenging us about the Italian event all over again.
  • They also asked us to change the hashtag we were using for the event. If they had taken a look at our tweets, they would have seen that we had taken care to use one that was not remotely like their name.

Now, by this time they were really becoming a bit annoying. The correspondence suggested the company:

  • Was somewhat aggressive in attitude, pursuing rights that they couldn’t legitimately claim.
  • Had a rather vague grasp of international working.
  • Was rather weak on research, having not checked out our hashtag.
  • Communicated somewhat poorly internally, as the messages were not being passed between the different people at their end who were getting at us.
  • Preferred blaming others to taking reasonable steps at their end to protect their business interests.

Basically, not the kind of business that I get excited about partnering with, or commending to my network.

To be able to respond to their initial emails, I had to learn my way around the basics of international trademark law. I knew a bit about trademarks in the UK having dealt with this in my family business, but had not yet had to look further afield. This was interesting, but a bit time-consuming.

As the exchange progressed, and their approaches became increasingly pugnacious, we were getting worn down by the constant correspondence. We were playing team relay to keep up with it and it was eating into our capacity to get on and organise the event. We’d also spotted that in the past, the company had posted some quite grumpy blogs about other organisation that they felt have infringed their IP and didn’t want them to do the same to us. So we agreed that we should get a bit of lawyerly help to make a clear statement back to them with the aim of drawing the matter to a close. We could easily have spent the equivalent of our whole event budget on getting this, so decided to each find out within our own organisations what support might be available.

This is where my host organisation, Hampshire Cultural Trust, came up trumps. Through the HLF-funded ‘Catalyst: Inspiring a Culture of Philanthropy’ project, HCT had subscribed to a legal helpline provided by Counterculture LLP, a Manchester-based law firm specialising in work with the arts and heritage sectors. The subscription covered a 30-minute informal telephone consultation. This service explicitly does not constitute legal advice but nevertheless I found that my telephone call with highly knowledgeable partner Keith Arrowsmith was invaluable in providing a sounding board as we thought through a form of words.

So, I probably won’t be following up with the US company’s invitation to ‘reach out’ and ‘collaborate’. Nevertheless, I am grateful to them, as they have prompted some really valuable learning on this side of the pond:

  • Along the way I found some resources that other cultural organisations might find useful and which I am grateful for the opportunity to disseminate:
    • There is loads of useful guidance on the Intellectual Property Office website, about both UK and international trademark registration: https://www.gov.uk/topic/intellectual-property/trade-marks
    • There is something called the Madrid Protocol, designed to make it easier to file for trademark registration in multiple countries through a single application. There are currently 115 countries covered by this, including the US and the EU states. Very useful if you have a trademark that you would like to protect overseas. Given that this US company seems keen to assert its intellectual property rights internationally, they might want to use it! All the info is on the World Intellectual Property Organization website here http://www.wipo.int/madrid/en/
  • In addition, through my grumpily chuntering about the situation to all and sundry, the topic of trademark protection was raised in my network and I know of at least four South East England cultural organisations who have taken steps to clarify their own IP position or protect trademarks, directly as a result of conversations that this incident provoked.

So thank you, US-company-who-shall-remain-nameless. I’d humbly suggest that, if you are serious about wanting to work in partnership overseas, you tidy up a few things at your end, and consider your communication style. But without meaning to, you have created a great learning opportunity for us over here and helped me to deliver on my mandate of supporting museums and cultural organisations to work in partnership and internationally. I wish you all the best.


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