What are the rules when using trade marks in a book

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fabben
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What are the rules when using trade marks in a book

Post by fabben » Fri Jan 31, 2014 1:14 am

Hi,

I'm writing a book and I want to make references to Microsoft, Sony "the Beatles", etc.

Firstly is it okay to use these trade marks? Then just add an "R" symbol with the little circle around it.

In books that I've seen there's usually a section, somewhere near the front that describes the trade mark and who it belongs to. So do I have to have one of these? and must it go at the front of the book.

regards

Fabben

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AndyJ
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Post by AndyJ » Fri Jan 31, 2014 10:08 am

Hi fabben,
Regrettably there are no 'rules' for this but there are a number of conventions, like the one you highlighted, which aim to assist with the safe use of trade marks in this way.
It is worth clarifying the role of trade marks and differentiate them from copyright. A trade mark is intended to signify the origin of the goods or services it is used in conjunction with, so that the public has confidence in the quality and provenance of the goods. It is used in the course of trade, but this does not prevent the use of words in ordinary speech or writing which is not in the course of trade. Thus when we speak about a Rolls Royce car, people immediately have an idea of the level of quality which is attached to that mark. However if I then manufacture a cheap and unreliable car and try to market it as a Rolls Royce product, then I am liable to do three things: confuse the public as to the real manufacturer of my vehicle, unfairly exploit the reputation of the Rolls Royce company and tend to bring it into disrepute when people discover that my product is inferior. It also leads to what is referred to as brand dilution.
But if I produce a pram and I am proud of the high quality of workmanship and materials which are used in its manufacture, can I market it as 'the Rolls Royce of prams' as Silver Cross do for two of their Balmoral range here? The answer is maybe. If the two types of goods or services are fairly distinct and there is no reason why the public should be confused, and if Rolls Royce have not registered their trade mark in a class which includes prams, then this use of the RR trade mark as a signifier would be permissible, so long as the dilution factor is negligible. For an example of undesirable dilution, think of the word 'Coke'. I might go into a bar and order a rum and coke, but be served some inferior product of cola. This diminishes the reputation of Coca Cola in a way which it is hard for them to counteract, hence the Coca Cola company will use lots of expensive point-of-sale branding to ensure that customers know when their genuine product is being sold.
So when you wish to refer to various trade marks in a book it will usually be fairly clear whether or not you are merely talking about the product or are trying to pass off your book as a publication from Microsoft etc. If for instance your write a manual on how to use a Microsoft program, then as long as you make it clear that your book is not itself a Microsoft product or officially endorsed by them, then use of Microsoft registered trade marks say, like this logo Image or 'Windows 8', would be descriptive of the contents and unlikely to cause problems. This is especially so where the public is familiar with the idea of third party books which explain how use software products. Just don't be tempted to use the words 'for Dummies' in the title!
By all means add the disclaimers and trade mark acknowledgements on the page following the title page, as this helps to dispel any doubt about whether your book is an official publication from any of the trade mark owners.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007

fabben
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Post by fabben » Fri Jan 31, 2014 1:41 pm

Thanks for a great reply - as always.

How about the Olympic Rings. I know this is very restricted. So you can't put it on a book say, even with a disclaimer - at least not for long :-)

Looking the rings up on awiki, I can see that they were designed in 1912 (well out of copyright - which I know doesn't apply). And I can see that the Olympic commitee get laws passed to help them keep control - which is fair enough.

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Post by AndyJ » Fri Jan 31, 2014 3:03 pm

Hi fabben,
The Olympic rings (and certain other references to the Olympic and Paralympic movement) are not trade marks as such. They are 'protected symbols' and as such attract a greater degree of protection than normal trade marks or indeed other copyright works. Similar restrictions also apply to the use of symbols of some other international organisations such as the Red Cross.
As you intimate, copyright in the design of the rings is not really the issue. For historic reasons the founders of the modern Olympic Games managed to persuade the international community that their symbols needed this extraordinary protection, something FIFA or Formula 1 can only dream of today.
The main protections can be found in the <a href="http://www.legislation.gov.uk/ukpga/1995/32/contents">
Olympic Symbol etc. (Protection) Act 1995</a> which was amended in readiness for the 2012 Games by Schedule 3 of the London Olympic Games and Paralympic Games Act 2006. From this Act you can see (Sch 3 Para 4(1)(c) that
“(1) A person does not infringe the Olympics association right (despite section 3) by the use of a controlled representation—
[ ... ]
(c) as an incidental inclusion in a literary work, dramatic work, artistic work, sound recording, film or broadcast, within the meaning of Part I of the Copyright, Designs and Patents Act 1988
On that basis if your use of the Rings or any other protected symbol is incidental and "is not likely to suggest an association between a person, product or service and the Olympic Games or the Olympic movement" then you should not be liable for infringement. Possibly putting an image of the Rings on the front cover of a book might be hard to justify as 'incidental' and 'suggesting an association ...' is a very vague term, so much would depend on the overall context of the book's contents. On the flip side, in the UK the fuss about the intellectual property side has reduced considerably now that the Games are over.
I think it might be wise to get proper legal advice based on exactly what you want to do. Or if you feel it is worth it, contact the International Olympic Cpmmittee bearing in mind they are unlikely to give you unbiased advice if there is a chance of getting a licence fee out of you!
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007

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