Intellectual property for charities – Overview, key rights and considerations

In this guide, we provide an essential overview of intellectual property (IP), with a focus on its application to the charity sector, including the importance of protection, the challenges charities face and the role of trustees in managing IP assets.

What is IP and why is it important?

IP (or intellectual property) is a general term that describes intangible assets. Every business, from start-ups to international giants, creates, owns and exploits IP rights, and charities are no different.

These assets, although not physical, add value and are essential in enabling a charity to achieve its ambitions (often intangible assets can have a higher value than tangible assets). However, many charities fail to proactively protect and manage their IP rights until it is too late, resulting in significant legal difficulties and costs.

Having a clear plan for managing IP is essential, the key is to look at it through the lens of how intellectual property can add value, and instead consider IP as an asset that can be used to generate revenue for the charity.

Types of IP

Trade Marks

Trade marks are arguably the most valuable and relevant IP right for many charities as they protect the core brand as well as slogans, campaigns and initiatives carried out under that brand.  In this way, trade marks protect a charity's reputation and identity, which are responsible for drawing in donations etc.

A trade mark can be a word, phrase, symbol, design or a combination of these things that identifies the source of goods or services and distinguishes them from those of other businesses.

Some well-known charities which benefit from trade mark protection include:

Cancer Research

Cancer Research benefits from protection for:

• the words CANCER RESEARCH UK;
• the logo:

• the logo for the icon:

• some of their campaigns such as the Race for Life.

RSPCA

The RSPCA benefits from protection for:

• the full name ROYAL SOCIETY FOR THE PREVENTION OF CRUELTY TO ANIMALS;
• the acronym RSPCA;
• for its slogan "For Every Kind"; and
• various forms of the RSPCA logo including:

For charities, an essential benefit of a registered trade mark is the ability to prevent others from using or registering an identical or similar mark for identical or similar goods or services, including the misuse of the mark by third parties.

Further, charities are able to use the mark to generate income e.g. by using the mark on merchandise or licensing the mark for others to use.

Our guide, 'Why should you register a trade mark?', details the further benefits of trade mark registration.

Passing off

In circumstances where a third party is using a mark that is similar or identical to a charity's brand and there is no registered trade mark, the common law tort of passing off may apply if it can be established that the charity has generated goodwill in the brand and the third party has made misrepresentations to deceive the public, which caused damage.

The detail of passing off is outside the scope of this guide, however, for any charities that don't currently benefit from trade mark protection but are thinking about enforcing their brand, there may still be avenues that can be used to protect the brand.

Copyright

In the UK, copyright arises automatically on creation and protects a number of original works including:

• literary, dramatic, musical or artistic works;
• sound recordings, films [or broadcasts]; and
• the typographical arrangement of published editions

For charities, copyright can arise in a variety of original materials, for example in::

• a website;
• written content (including newsletters, reports etc);
• promotional leaflets; and
• educational media (such as training guides or videos).

The benefit of copyright protection is that it allows the right holder to dictate how the works are used, for example, to prevent others from unlawfully reproducing or making the protected works available to the public.

Patents

Patents may be less relevant to charities. However, for those organisations who are involved in researching and developing novel products or treatments or processes, then patents can be a valuable tool. A scenario in which this could arise could include charities who are involved with the facilitation of research, for example, by providing funding to, or entering into partnerships with, universities.

Patents provide a monopoly right to prevent others from using an invention without the owner's consent. Further, an organisation may be able to commercialise the invention by licensing it out to third parties.

Design rights

Design rights protect the visual appearance of a whole or part of a product, including 2D images and 3D objects. Design rights can be both registered or unregistered and this will dictate the monopoly of protection granted.

Design registrations can cover graphic symbols (such as a logo), typography, physical shapes, configurations, decorations, colour, patterns, lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

For charities, design rights can apply in the context of branded merchandise, packaging or any unique fundraising products. They can assist a charity in establishing and maintaining their brand identity by preventing the copying of designs by third parties.

An example of a charity that has registered design rights is Cancer Research, who have registered designs for things such as cushions and wristbands. An example of how some of Cancer Research's rights appear on the design register are as follows:

• Cushion design:

• Wristband design;

The examples above demonstrate that a registered design right application can be made on the basis of a drawing or a photograph and this depends on the element of the design that is to be protected.

Database rights

Some rights in a database are protected by copyright, i.e. the selection or arrangement of material in a database. However, the content of the database itself is protected by database rights, which come into existence when there has been a substantial investment in obtaining, verifying or presenting the contents of a database.

These rights are important for a charity, as they can provide crucial protection from valuable information they own being copied, or used, without their consent.

A database right gives the owner legal control over the use of the database and can be a useful tool for charities to generate income by way of entering into licensing agreements for its use. For example, a charity that holds unique research data may license access to it, in order to generate income and to ensure that it is being used in line with the charitable purposes that they endorse.

Confidential information & trade secrets

Charities may hold a variety of confidential information and trade secrets as part of their day-to-day activities, for example, donation, funding or financial information, un-published research findings and other commercial knowledge. Such information is not capable of registration but is recognised as a valuable asset. Protection of such information is usually done contractually.

It is important for charities to understand and identify the confidential information and trade secrets they hold to ensure that they are taking adequate measures to protect this sensitive, and potentially valuable, information. Unintended disclosure may result in a number of consequences, including the loss of future protections and potentially legal action against the charity.

A caution to trustees

A charity's trustees have a fiduciary duty to act in the best interests of the charity and are legally responsible for protecting a charity's assets. Crucially, this includes any IP. Failing to do so may be considered a breach of this duty and can, in some circumstances, result in personal liability of the trustee.

As a trustee, it is therefore important to understand what constitutes IP, what IP the charity has, how to maximise its value and how to protect it, in order to fulfil the role and to avoid any inadvertent breaches of duty.

Trustees should also be able to demonstrate that they can exercise an appropriate level of control over how the charity's IP assets are protected and used, to prevent them from being devalued or lost through misuse. There are two main issues to consider:

IP ownership

Where the charity adopts a group structure (for example, where it has operating or trading subsidiaries), it will be important to consider which entity within the group should own the charity's IP. For any corporate group, there are a variety of reasons to consider this and multiple factors to take into account, but for charity's the trustees' duty to protect the charity's assets and maximise their value adds an extra dimension to this analysis.

IP licensing

If any third parties (including any other entities within the charity's group) require the right to use the charity's IP, then written IP licence agreements should be entered into. Any such agreements should incorporate appropriate safeguards and controls over the use of charity IP, to ensure that contractually binding protections are in place.

Looking ahead

As demonstrated above, there are an abundance of IP assets and associated legal IP rights that can arise as a result of the everyday running and operation of a charity. With the correct approach, these assets can not only be safeguarded, but also exploited in order to promote the objectives and further the impact of the charity.

It is therefore essential that charities engage positively and proactively with the IP system and that stakeholders take the initiative in understanding the IP assets that their charity holds. Our Intellectual Property experts here at Foot Anstey can help you to understand your IP and take a comprehensive approach to safeguarding and maximising the value of these assets. We can assist you at every stage of the process, from conducting an IP audit to implementing a robust IP strategy which aligns with your charity's specific purposes.

We are always on hand to support you in your journey, please get in touch to find out how we can help