Data protection and intellectual property - practical points to note

01.01.09

Data protection and intellectual property - practical points to note

The early part of July saw two developments which are of relevance to a broad range of organisations.

The introduction of a new notification fees regime under data protection legislation will see some larger organisations, including larger public authorities, faced with much higher annual notification fees from October this year.

In contrast, the Intellectual Property Office's new "Right Start" trade mark application service will be welcomed by organisations wishing to obtain registered trade mark protection for their brands, but which may in the past have been reluctant or unable to do so in light of the upfront costs typically involved.

New data protection notification fees

The Data Protection (Notification and Notification Fees) (Amendment) Regulations 2009 introduce a new, two tiered notification fee structure under data protection legislation. Data controllers are currently required to pay a flat fee of £35 a year to maintain their mandatory, statutory entry in the register of data controllers operated by the UK Information Commissioner. However, with effect from 1 October, public authorities (i.e. any body which is a public authority for the purposes of freedom of information legislation) with staff of 250 or more and any other data controllers with an annual turnover of £25.9 million or more and staff of 250 or more, will be required to pay a much higher annual notification fee of £500. Charities and small occupational pension schemes are excepted from this, continuing to pay the current fee of £35, along with all other organisations not meeting these criteria.

The changes stem from a review last year of the funding arrangements of the Information Commissioner's Office ("ICO") and are designed to materially bolster the ICO's revenue stream at a time when it is under increasing pressure to proactively police and enforce compliance with data protection legislation.

The ICO is expected to publish guidance on the new fees structure prior to its entry into force in October. Data controllers should look out for that guidance on the ICO's web site in the course of the next couple of months. We will report further on this in due course.

New trade mark application service from the Intellectual Property Office

Following the withdrawal of its in-house search and advisory service last November, the UK Intellectual Property Office ("IPO") has now announced that it will launch a new service in October, designed to encourage cost conscious organisations to apply to register trade marks. The "Right Start" service will give applicants access to telephone assistance from the IPO in filling out the trade mark application form and, crucially, allow the applicant to defer payment of half of the application fee (currently a minimum of £200 for a UK mark) unless and until the IPO has issued its initial examination report and the applicant has decided that it wants to proceed to the next stage of the application process. The applicant will also have access to a trade mark examiner to discuss informally the results of the initial examination.

Whilst this is not a substitute for the services of a trade mark agent, the new service may encourage simple trade mark applications to go ahead, in cases where organisations might otherwise not have applied for a trade mark due to budgetary pressures.

More information on the "Right Start" service, together with details of a separate reduction in fees for trade mark applications filed electronically outside the "Right Start" service, can be found on the web site of the IPO.

For advice or assistance in connection with any of the matters covered in this update or any other data protection or intellectual property issues, please contact Grant Campbell at grant.campbell@brodies.com or on 0131 656 0115.