IP & Technology News - August 2007
Wednesday, August 29, 2007
Inside this issue:
Vote of No Confidence for FOI - Shock at Landmark Freedom of Information Decision
Background
In a landmark decision, the Information Commissioner in Scotland has ruled that the ‘confidentiality’ exemption, (which exempts public authorities from disclosing certain information requested under the Freedom of Information (Scotland) Act 2002) cannot apply in relation to contracts entered into with public authorities.
Unless the decision is successfully appealed, in the absence of any other available exemption under FOI(S)A, public authorities will require to disclose the entire content of contracts they have entered into, if such information is requested under the Act.
Until the Commissioner’s decision, public authorities often sought to rely upon the exemption, available under the Act, arguing that the information contained in such contracts had been made available by the contractors under either an express or implied obligation of
confidentiality.
The confidentiality exemption allows authorities to withhold information from disclosure where:-
(i) it has been obtained from a ‘third party’, and
(ii) the release of the information would constitute an actionable breach of confidence.
Following a similar finding by the UK Information Commissioner, the Scottish Information Commissioner concluded that the ‘third party’ test was not satisfied where the information comprised the actual contract entered into with the
public authority as a result of negotiation between the parties.
The Commissioner effectively differentiated between information provided by a contractor, and information negotiated between the contractor and the public authority.
In the latter case, the Commissioner concluded that such contractor was not a ‘third party’,
thus disapplying the entire exemption.
This has major implications for a public authority who will now be
unable to refuse to supply information on contracts it has awarded on the basis that the
contract prohibits parties from discussing confidential information
to others.
Data Protection Breaches
Following the decision by the UK Information Commissioner, both Orange and Littlewoods have
given undertakings to comply with the principles of the Data Protection Act.
Littlewoods had failed to suppress data relating to customers who did not wish to receive marketing information from the company, and Orange failed to keep its customer data secure.
If Littlewoods or Orange fail to meet the conditions of their respective undertakings, the Commissioner is likely to raise further enforcement action, leading to prosecution.
When Big Brother Leads to Big Bother
The European Court of Human Rights has held that the UK breached the European Convention of Human Rights as a result of the way in which a Welsh college monitored an employee’s telephone calls, e-mail correspondence and internet usage.
Following concerns about the extent to which the employee was making use of the College’s internet, e-mail and telephone services for personal use, the college sanctioned the
monitoring of employee’s use of the services.
At the time the monitoring activity took place, the College did not have a policy in place regarding monitoring of employees’ communications.
It is now a criminal offence to intercept communication by employees unless the employer has
the consent of the parties’ concerned, or has taken reasonable steps to inform the employee that his/her communications may be monitored.
The Information Commissioner has issued guidance on monitoring at work, available on the
Information Commissioner’s website at http://www.ico.gov.uk/.
Are You Ready to WEEE Your Wiis?
1 July 2007 saw the introduction of the most significant part of the ‘WEEE Regulations’, which require producers and distributors of a wide range of electrical and electronic
equipment (‘EEE’) to finance the collection, treatment, recycling, recovery and disposal of waste produced by them, including products sold and manufactured by them.
Under the radical regime, producers of such waste require to join an approved producer compliance scheme (‘PCS’) through which their waste will be collected and recycled or recovered.
‘Producers’ include businesses who:-
- manufacture and sell EEE under their own brand;
- resell under their own brand, EEE which has been manufactured by others;
- import or export EEE.
Retail businesses and other distributors of household EEE must:-
- offer their customers instore return of household WEEE, free of charge
- join a distributor return scheme.
Failure to comply with the regulations is a criminal offence.
New Trade Mark Process to be Introduced
New provisions for registering trade marks are expected to operate from 1 October this year.
Under the new regime, the UK Intellectual Property Office (‘IPO’) will continue to examine trade mark applications on ‘relative grounds’. This means it will still search the register as part of its examination process, and in the event the examiner finds an earlier competing mark, the applicant will be given the choice of continuing with the application or restricting the list of goods and services relating to it (to avoid competing with the categories for which the earlier mark is registered) or withdrawing it.
If the applicant continues with the application, the IPO will automatically advise the
owners of any prior competing UK marks found in the examination. Owners of competing EU marks will however require to request notification from the IPO.
Owners of prior rights can still oppose the application.
The regime is not vastly different from the existing regime, and is intended to be quicker and easier for applicants. It is feared however that it may result in more marks being revoked after registration.
Descriptive Trade Mark Applications Rejected
Three recent appeal court decisions have reinforced the principles determined by the European Court of Justice, that trade marks which are purely descriptive of the nature or
characteristics of the goods or services for which they are intended to be used, are
prohibited.
In the first case, a trade mark application was made for the mark ‘TWIST & POUR’, in relation to hand held plastic containers to be sold as an integral part of a liquid paint, containing a storage and pouring device.
Under EC Trade Mark Regulations, registration of a trade mark is prohibited if it:-
(a) is devoid of any distinctive character; or
(b) consists exclusively of terms describing e.g. the kind, quality, quantity, intended
purpose, value or geographical origin of the goods or service, or other characteristics of the goods or service.
The appeal court accordingly found that the proposed mark directly described the characteristic of the product (its method of use), concurring with the registrar that the application should be refused on that basis.
In the second case, an application for the mark ‘LOKTHREAD’, to be used in relation to nuts and bolts, was refused. The appeal court concurred that the term was purely descriptive.
In the third case, the mark ‘EUROPIG’ to be used in relation to meat products, was rejected
for the same reason.
Where:-
(i) the mark proposed is created by joining other words,
(ii) the mark created by the joint words is, as a whole, descriptive, and
(iii) there is no significant difference between the ordinary meaning of the joint
word as a whole, and that of the ‘sum of its parts’ the application will be prohibited.
To be accepted therefore, the ordinary meaning of the joint word would require to be quite
different from that of the component words, the word combination requiring to be
unusual in order to produce that result.
The three appeal court decisions support the growing case law in this area.
Previously, following successful applications for ‘BABY-DRY’ in relation to nappies, and ‘TWIST & VAC’ in relation to vacuum products, the position was considered to be a lot less strict.
Sense would appear however to have prevailed, allowing all businesses an equal opportunity to use descriptive terms when marketing their products and services, without fear of
breaching another person’s trade mark.
The information contained in this newsletter is given for general information only and does not constitute legal advice on any specific matter.