It was the battle of the burgers the other week as independent Irish fast food chain, Supermac’s, chalked up a sizeable trade mark victory for small and medium-sized enterprise (SME) businesses.  

A much bigger Mac (you know who) recently lost an important European Court of Justice decision regarding exclusive rights to the term ‘Big Mac’ (or similar ‘Mac’ variations) for meat and fish products, excluding beef. This created a legal opening for Supermac's to defend its right to use ‘mac’ in the naming of their meat products, including poultry too, by putting its challenge to McDonald's.   

The case highlights some very important lessons in relation to trade marks that apply to businesses of all sizes..  

Trade marks; get your classes right 

A trade mark is a ‘sign’ that ‘identifies you as the owner of your goods or services to make clear it belongs to you’. We’re surrounded by them every day and your favourite brands and products are all likely to be registered trade marks. . 

When any business applies to register a trade mark, they need to indicate which area of trade the mark will be used in. It could be goods, services or anything in between. This is known as the Nice classification system (after the city in France) and it’s adopted all around the world for consistency.  

Trade marks are territorial too, meaning that if you sell abroad, you’ll need protection abroad. For the United Kingdom you can register a new trade mark with the UK Intellectual Property Office for the European Union, the EUIPO. 

In 1996, McDonald's applied for an EU wide trade mark for the phrase ‘Big Mac’. They applied under Nice class marks 29; ‘edible sandwiches, meat sandwiches, and chicken sandwiches’, Nice class 30; ‘services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities’ and Nice Class 42, ‘preparation of carry-out foods’. A sensible range of classes for the activities McDonald’s was trading in, or intending to trade in. 

The first lesson here is that it pays to know the areas of business you want to sell your products or services and to find the correct corresponding Nice mark before filling in your application form. You can search all Nice classes by keyword to find the best match for you, here. 

Furthermore, it pays to use the mark in the classifications of choice, as we’ll see why. 

Trade marks; use them or lose them 

Supermac’s had also chosen the correct class marks, but the crux of the recent case was over usage.  

Under UK and EU law, a registered trade mark must be demonstrably in use in the classifications it was registered within the first five years and every five years after. There’s good reason for this, as it prevents the equivalent of companies ‘squatting’ on trade marks without using them. We’ve seen how unfair that has been in relation to URLs, so this trade mark law acts as a  safeguard. 

This means a third party can file for a revocation of a trade mark for non-use, which is essentially what Supermac’s did. Their argument was based on the fact that McDonald’s had not used ‘Big Mac’ in relation to chicken sandwiches or foods prepared from poultry products, for which the mark was also registered in.  

McDonald’s tried to defend its ‘Big Mac’ mark citing its use of the mark for meat products besides beef burgers, but it wasn’t enough to persuade the judges. They failed to gather significant evidence of sales volume or length of usage. The mark hadn’t been used properly, so consequently they lost exclusive right of use. 

The initial ruling was to lose all meat products, including beef, but on appeal McDonald's was able to win back exclusive use of the mark in relation to beef products (which is what we know it’s famous for, after all). 

This opens an opportunity for Supermac’s and other food outlets to use similar ‘Mac’ like names, in other meat and fish products, so long as it doesn’t trade off the name and reputation of the ‘Big Mac’.  

The second lesson here is make sure you use your mark, otherwise it risks being challenged. 

Trade marks; prove you’re using them 

This case emphasises another lesson for all business owners, keep good records. In the case of McDonald’s, they weren’t able to prove adequate usage. This is more significant a loss, given its size and enormous resources to fight legal battles. There’ll no doubt be important lessons learned for them, but these apply to any business. 

So, keep records of where your mark is used in marketing and advertising campaigns and where products or services might be listed. Ensure you have evidence of sales, as this can be an important figure if you need to fight for damages to reputation if someone infringes your mark, or in the case of McDonald's if you need to defend it against a revocation challenge. 

Your value is your brand 

What’s in a name?  

Everything. Many of us have grown up with the ‘Big Mac’ brand and some of us may even consume the product. That’s why trade marks are so important for any business large or small. It’s the identifying mark that distinguishes your product or service from everyone else. As this case study shows, intellectual property law is there to ensure as best a level playing field as possible. 

Your trade mark is a vital asset that you need to prove you’re the owner of.  

It doesn’t matter whether you’re a brewer, barber or in the burger business, what you’re famous for will always be your brand. Supermac's have always known this, and McDonald's have just been reminded of it. Your trade mark is the key to keeping that way. 

The British Library's Business & IP Centre runs a regular programme of intellectual property webinars and workshops that include trade marks. You can view the latest listing of upcoming events here.  

What data is being used to feed the ‘learning machine’?

Another AI-generated storm has occurred with the recent news that a chatbot voice created by OpenAI sounds eerily similar to Hollywood star, Scarlett Johansson. The story takes a more unusual turn, with claims by Johansson that she was asked by the same company to be a chatbot voice, refusing the offer a number of times. 

It seems the boundaries between human and machine are now completely blurred. The inexorable rise in the power and utility of generative Artificial Intelligence (AI) is producing case after case of controversy, ethical debates and inevitable concerns about where it’ll all end.  

Generative AI is artificial intelligence that is capable of creating text, videos, images or other data that has similar characteristics to the ‘training data’ used to create them. The question as to whether these works are original creations in and of themselves is hotly contested. 

However, Scarlett Johansson’s case is not the first time that generative AI has fallen afoul of celebrities and artists. Tom Hanks warned of a fake ad using his image to promote a dental plan he did not endorse. Musicians Drake and The Weeknd have experienced having their voices used to create an entirely new song, not of their creation. AI software was trained using their vocals and that was the key to the generative work being created: called, ‘Heart on My Sleeve’, it was subsequently dropped from streaming services after protests from the artist’s music labels. 

The question now with Johansson’s example is whether it’s all just an unfortunate coincidence that the voice of OpenAI’s, ‘Sky’, ended up sounding too similar to Johansson. And how was that voice created? Who owns the final product? 

In times like these, who else can you call, but an Intellectual Property lawyer? 

Where is the intellectual property? If Johansson decides to pursue a case of infringement against OpenAI, she can call upon laws in most US states known as ‘publicity laws’. These work in a similar way to other IP laws, in that the individual is ‘the product’. This means that they have the right to control the commercial use of their name, likeness, image or identity.  

In the case of Johansson, it’s the use of her voice.  

It’s no surprise to discover that the state of California, being the home of Hollywood, has such a law. (We don’t have an equivalent in the UK, but we do have other laws that can be stitched together to do the same thing). 

In fact in the US, legislators are right now actively looking at strengthening federal laws to provide further clarity on individuals and usage rights. Recent debate around the proposed bill for a NO FAKEs Act addresses these issues directly. 

Meanwhile, in the UK there seems to be a growing consensus in reasserting the interpretation of ‘data mining’ in existing UK copyright law to mean the use of data (for machine learning) only for non-commercial purposes. This is significant as it precludes the commercial use of data mining by AI companies.  It’s all in the prompts. 

Two sides to every case

The creators of generative AI have some arguments in their defence too. For an AI platform to generate an image, voice or text, word commands called prompts need to be used. And there is growing recognition in the power and skill of using the best possible prompts to create the most desired output. Think of a very long and focused search engine description.  

In fact, these particular prompts can be so integral to the final generated product, that they can be considered a trade secret and even copyright. These are two existing IP rights used all over the world.  

So it’s advisable that creators (be they companies or individuals) record the prompts (but keep them secret) in order to prove the creative process and also potentially as a defence in case the output does inadvertently infringe someone else’s copyright (or publicity right for that matter).  

Moreover, companies like OpenAI are significantly investing in their platforms by feeding them with all the data they need. They also have an IP interest because there is an inherent novelty and commercial value in creating (and licensing) the platforms themselves. They too, are protected by intellectual property rights and copyright is the predominant IP protection for software. 

But, as ever, there’s another flipside, and that is the question of what data is being used to feed the ‘learning machine’? Is the data public domain information? Or is it under copyright? If it’s the latter, it carries real risks of a generative platform creating an infringed work. As they say across the pond; ‘garbage in, garbage out’. 

Human v Machine; who’s the creator? 

The big question remains, who owns the intellectual property in an AI creation? If I use a generative AI platform, can I claim ownership of the final product?  

The first thing is to always check the licence agreement of the platform you’re using, especially if there’s a clause where they keep a record of the prompts used, or if the generated image can be reused.  

In the United States, the question of whether an AI created product can itself be subject to copyright has been partly addressed with the recent case of graphic comic titled Zaraya of the Dawn. The United States Copyright Office rules that ‘works created with substantial AI input are not eligible for copyright protection in the United States.’ Interestingly, they did recognise that the prompts were a work of human authorship, so therefore falling under copyright, as were the text and arrangement of images, but not the resultant images itself. 

In the UK, the question is complicated further by an interpretation of what Section 178 of the Copyright, Designs and Patent’s Act (CDPA 1988) could mean in relation to AI today. In the Act copyright cannot vest in machines or non-human actors but if ‘in the resulting author of a computer-generated work is the person “by whom the arrangements necessary for the creation of the work are undertaken.”’ It takes a sharp legal mind and a good case to define how that could be interpreted! Any interesting broader summary for existing UK copyright law and AI can be read here. 

It’s complicated... but also clear 

As the world begins to adapt to the massive disruption that AI will create, it’s safe to say that some boundaries have been drawn and clear sides are taken.  

1. If you’re creating any original work of any kind, you have rights over that work. Nothing has changed. 
2. If you’re using AI generated work, your ownership of work is open to question and at times challenged depending on the way national laws are interpreted, and the terms and conditions of the platform creating it. Best to seek legal advice for your particular context. 
3. If you’re an AI developer, you are at risk if the data you’re training your machine learning on is potentially copyrighted. So legal advice around taking protective measures against the risk of infringement or seeking permissions to use that content is a necessity.  

Further useful guides on all can be found on some law firms, such as here. 

Regardless of who will win the IP wars between humans and machines, a human is still a human and their voice will always belongs to them. In our age of digital disruption, Scarlett Johansson may well be helping us all find our voice, and keep it too. 

Written by Jeremy O’Hare, Research and Business Development Manager at the BIPC.

What's it really like to have a family member that's also your business partner? In honour of International Day of Families, we caught up with just some of the family-run businesses that we have supported on their journeys to success.

Buttercrumble

Abigail founded creative design consultancy 'Buttercrumble' with her twin sister Chloe, and we are proud to have supported them through our scale-up programme Get Ready For Business Growth (applications are now open, email [email protected]).

What made you decide to set up a business together? 

"Ever since we can remember, we’ve loved collaborating. As children, we’d always be drawing joint pictures together. We had a creative calling, and knew we wanted this to be our career. It would be rare to find a workplace that would employ both of us simultaneously, so we made our own opportunities. We’re following our passion and we love it!"

What is it like having a business partner as a family member?

"Comforting. You have to trust your business partner completely because business is tough! When we work together, we know we’ll receive honest feedback and authentic support. It’s in our best interests to help each other out. We feel fortunate knowing someone always has our back."

What’s your favourite thing about working with a family member?

"We see each other nearly every day! Yes, sometimes it can be intense, but we’re grateful for all the time we can spend together doing something we enjoy. We get to share in the successes, and that benefits the rest of our family too. It brings everyone together."

Is it hard to separate family time and work time?

"Whenever we go out for a casual coffee date, we always end up talking about business. It’s tricky, but we enjoy our work, so sometimes we can’t help ourselves. That said, it’s important to take breaks. It can help to bring along friends and other family members to curb our work chat. It helps to have hobbies too!"

What advice do you have to anyone who is looking to go into business with a family member?

"Separate business from personal matters. It’s easier said than done. We continue to learn, but we must retain professionalism when we’re working with our clients. Sort out squabbles outside of the office! Don’t let them harm your business efforts."

You can hear Chloe speak about collaborating with her sister at our Start-Up Stars: Creative Collaboration event next week - an evening of inspiration and networking as successful creative businesses tell their collaboration stories. Book your free ticket here.

London Fine Art Studios

Ann founded 'London Fine Art Studios', a school dedicated to teaching the classical techniques of drawing and painting, with her twin sister Clare and husband Scott. They also received support from our Get Ready For Business Growth programme.

What made you decide to set up a business together?

"As family members you know you can trust their work ethic and that they have your best interests at heart."

What is it like having a business partner as a family member?

"I work with both my husband and my twin sister. I think it can be very amazing as you can short cut so many questions and you know you don't need to worry about how you phrase things or if you upset each other as it is more important to be time efficient."

What’s your favourite thing about working with a family member?

"It's nice to be able to see them every day and at meal times: it allows you to get to know them so well."

Is it hard to separate family time and work time?

"This is the only downside, as often my husband will want to talk about work at home. We all need switch off time, and it can sometimes be unfair on the children if work is always being brought up."

What advice do you have to anyone who is looking to go into business with a family member?

"Establish your boundaries before you start. See that person in a working environment, both in terms of their work ethic and how they treat other people. I worked with my husband for five years in a separate business before we set up our own business. It is obviously great if the work is going well, but also can be nice if one of the couple has a steady income."

Ann will also be speaking at the Start-Up Stars: Creative Collaboration event, find out more.

Sweet Paper Creations

Patty founded handmade piñata brand 'Sweet Paper Creations' with her eldest child Ali. They received business support from their local BIPC and are now business ambassadors for our BIPC Local in Waltham Forest.

"When Ali was struggling with their mental health, I didn't know how to help or motivate them, so I started making piñatas as a relief strategy to cope with the waiting time to see a professional. We found that making piñatas together allowed us to relax and simply exist around each other, and this led to us setting up our business, as well as being able to open up to each other. 

Working together has been quite a journey, but it always brings a great feeling of achievement. From the very beginning, we decided to differentiate between the roles of mother and child and allocate responsibilities to each other. This has helped us to stay organised and on track. We have established effective communication and mutual respect for each other's abilities and roles."

Thinking of starting up with a family member? Sign up for our free Kickstart Your Business programme that offers tailored, accessible workshops and webinars to help you on your business journey. Topics covered include financing your business, researching your market and protecting your business's intellectual property. Find out more here and sign up today!