I am a supplier of handbags to the retail industry. Recently, I have joined forces with a shoe distributor with the aim that we pool our resources to market product to customers together. We are intending to share our customer lists in order to market our products more effectively. Am I entitled to let my new partner look at my existing customer lists?
Most customer or contact lists will contain information about individuals within organisations, even if this is limited to job titles. As such, the information constitutes "personal data" for the purposes of the Data Protection Act 1998 ("DPA"). Under the DPA, you have a number of obligations in respect of personal data. For example, the data must be kept secure and you should not use the data for purposes other than those for which it was collected.
If you are considering allowing your business partner to access customer lists, you need to tell everyone on the list that you will be allowing access to their details in this way. You should also give individuals the opportunity to refuse their consent to their details being passed onto your partner.
There are event more stringent requirements under the DPA if your business partner will be accessing the information from outside the European Union. The DPA requires that personal data is not sent to any country outside the European Union unless that data will be protected in a way that is equivalent to the protections under the DPA. There are very few countries which are considered to offer adequate protection. Accordingly, if you intend to transfer personal data outside the European Union, you should seek the express consent of every person whose details you hold to such transfer. Obviously, this could be a major task. An alternative is to enter into an agreement with the overseas partner which obliges it to treat the personal data as if the partner were subject to the requirements of the DPA. Although, in theory, this method is much simpler than requiring the consent of each individual, in order to meet the requirements of the DPA such an agreement needs to be quite onerous and many overseas businesses may be reluctant to sign it.
If you are exporting data to the United States, a system known as "Safe Harbour" has been set up under which companies who have put in place adequate data protection measures can register with a central system. Data can be sent to approved companies as if those companies were within the European Union. However, to date the number of companies who have signed up to the system is very low.
I think that a third party has copied one of my designs. What should I do?
While it is important to act quickly whenever you believe that a third party has copied your design, it is critical that you first establish your legal position. If you threaten a third party with court proceedings in respect of their infringement of your registered trade mark, design rights or patents without first ensuring that you are legally entitled to do so then you could be faced with a claim that the threat was unjustified. It could also be embarrassing for you.
The types of issues which you will need to explore to enable you to establish your legal position before writing to such a third party are:
1. What aspect of your article do you claim has been copied?
For example, this could be any or all of:
- the design of the construction of the garment, accessory or shoe;
- the surface decoration;
- the combination of materials used;
- the 'get-up' of the article or its packaging; or
- your brand name.
2. What are the similarities and differences between your design and the copy?
You should carry out a comparison of the two designs and make a list of the similarities and the differences, no matter how minor those differences appear to be.
3. Who created the design?
If the design was created by an employee, then you are likely to own any copyright or unregistered design rights in the design. However, if you commissioned the design from a third party then you may not necessarily own the rights in the design and you will need to ensure that they are properly assigned to you before you take any action. The creator of the design may also have 'moral rights' in the design which can be asserted against the third party. These can only be waived, not assigned. If you are not the owner of the design, but a licensee, you will need to consider the terms of any licence agreement to see whether you have any rights to take action against a third party infringer.
4. When did you first make your design available to the trade?
Certain unregistered rights, such as Community Unregistered Design Right, only last for a short period of time. Establishing when the design was first made available to the trade (whether as a picture, sample or the finished product) will determine whether such rights still exist.
5. Is your design new and original and is it clearly different from other designs on the market?
If you wish to rely on any unregistered design rights, then you must be able to argue convincingly that the design is new and original and is clearly different from other designs on the market. In this respect, you will need to consider all designs for the particular type of article. For example, if you are concerned with a jacket, you will need to look at all types of jacket available on the market, even if those jackets are not competitive with your jackets (for example, protective jackets worn in the construction industry or jackets worn for extreme sporting).
6. Do you have any registered rights in the design?
If you have any registered rights in the design, for example, a registered design, then you will not need to prove copying.
7. How much have you spent on marketing the design and what level of sales have you achieved?
This information will help you to establish that you have 'goodwill' in the design if you intend to bring a claim in passing off. You should also keep copies of all adverts, advertorials and editorials which mention the design in question.
8. When and how did you become aware of the copy being made available for sale?
If you first became aware of the 'copy' because a consumer or person in the trade thought that the 'copy' originated from your business, then you should keep copies of any relevant correspondence with that person and keep a record of any relevant telephone conversations. If you are able, you should purchase one of the 'copies' and keep the receipt. You should also keep all of the clothing tags. If the 'copy' garment, accessory or shoe has been advertised in the press, you should also keep a copy of that advertisement. Similarly, if the article is for sale online or through a catalogue, you should retain evidence of this.
If you are able to consider the above points and collect together evidence before consulting a lawyer, your advisers will be able to form an opinion more quickly of whether you are able to take any action against the third party and this, in turn, will help to keep your legal costs to a minimum.
