TT

Summary

A request was made for details on TT trademark infringement legal actions since 2017, including costs and locations of accused parties. The Department for Enterprise provided some information but withheld specific details regarding personal data and ongoing investigations.

Key Facts

• The request covered legal actions for TT trademark infringements from January 1, 2017.
• The Department for Enterprise responded on October 21, 2020.
• Personal data regarding accused individuals was withheld under absolute exemption.
• Information related to ongoing investigations was withheld to prevent jeopardizing law enforcement.
• The response included 18 pages across 2 documents.

Data Disclosed

• 2017-01-01
• 2020-09-28
• 2020-10-21
• 2020-10-23
• 18
• 2
• 1490134

Exemptions Cited

• Section 25(b)(i)&(ii) - Personal Data
• Section 31(1) - Investigation and Legal Proceedings

Original Request

Since January 1 2017: How many times has the department instructed lawyers to act on its behalf in relation to TT trademark infringements. Where were the people/companies who were accused on an infringement based? In each case, what was the outcome of this action? What has been the total bill for these cases?

Data Tables (1)

Full Response Text

Freedom of Information Co-ordinator 1st Floor, St Georges Court Upper Church Street, Douglas Isle of Man IM1 1EX

Telephone: (01624 682381) Website: www.gov.im/ded Email: anthony.walker@gov.im

Our ref: 1490134 21 October 2020

Dear ###

We write further to your request which was received on 28 September 2020 and which states:

"Since January 1 2017: How many times has the department instructed lawyers to act on its behalf in relation to TT trademark infringements. Where were the people/companies who were accused on an infringement based? In each case, what was the outcome of this action? What has been the total bill for these cases?"

Our response to your request is attached to this document. Please note that some information has been redacted / withheld from the response for the following reasons: Personal Data

s25(b)(i)&(ii) While our aim is to provide information whenever possible, in this instance we are unable to provide some of the information you have requested because it is absolutely exempt under section 25 of the Act (absolutely exempt personal information). The reasons why that exemption applies are that: • The Department for Enterprise is satisfied that the information amounts to personal data of which you are not the data subject; and • The Department for Enterprise is satisfied that disclosure of the information would contravene one of the data protection principles as set out at Article 5 of the General Data Protection Regulation as it applies in the Isle of Man pursuant to the Data Protection (Application of GDPR) Order 2018, namely that The Department for Enterprise can only disclose the information where it would be fair, lawful and meet one of the conditions for lawful processing in Article 6 and in this case, none of those conditions have been met.

Investigation and Legal Proceedings

While our aim is to provide information whenever possible, in this instance the information is exempt from disclosure pursuant to section 31(1) of the Act as it is information held by The Department for Enterprise for the purposes of an investigation, conducted by The Department for Enterprise, that in the circumstances may lead to criminal proceedings being instituted. As section 31 is a qualified exemption, it is subject to a public interest test. The public interest must be something that is of serious concern and benefit to the public at large.

Factors in favour of disclosure • Promotes transparency; • Justifiable concern about an investigation or prosecution.

Factors in favour of withholding • Law enforcement or the prevention of crime could be jeopardised and the integrity and effectiveness of the system undermined; • Whilst investigations and prosecutions are ongoing, public authorities require a safe space in which to operate and premature disclosure would present problems for the judicial process (if necessary); • The outcome of an investigation or proceedings will be at risk.

In taking these factors into account The Department for Enterprise determined that the factors in favour of maintaining the exemption outweigh the factors in favour of disclosing the information.

Please quote the reference number 1490134 in any future communications.

Your right to request a review

If you are unhappy with this response to your freedom of information request, you may ask us to carry out an internal review of the response, by completing a complaint form and submitting it electronically or by delivery/post.

An electronic version of our complaint form can be found by going to our website at https://services.gov.im/freedom-of-information/Review . If you would like a paper version of our complaint form to be sent to you by post, please contact me and I will be happy to arrange for this. Your review request should explain why you are dissatisfied with this response, and should be made as soon as practicable. We will respond as soon as the review has been concluded.

If you are not satisfied with the result of the review, you then have the right to appeal to the Information Commissioner for a decision on;

1. Whether we have responded to your request for information in accordance with Part 2 of the Freedom of Information Act 2015; or
2. Whether we are justified in refusing to give you the information requested.
   In response to an application for review, the Information Commissioner may, at any time, attempt to resolve a matter by negotiation, conciliation, mediation or another form of alternative dispute resolution and will have regard to any outcome of this in making any subsequent decision. More detailed information on your right to a review can be found on the Information Commissioner’s website at www.inforights.im. Should you have any queries concerning this letter, please do not hesitate to contact me. Further information about freedom of information requests can be found at www.gov.im/foi.

I will now close your request as of this date.

Yours sincerely

Request

Since January 1 2017:
How many times has the department instructed lawyers to act on its behalf in relation to TT trademark infringements.
Where were the people/companies who were accused on an infringement based?
In each case, what was the outcome of this action?
What has been the total bill for these cases? " In response to the questions asked, each will be taken individually: 1. How many times has the Department instructed lawyers to act on its behalf in relation to TT trademark infringements: There are three different types of infringement that may lead to action by the Department’s IP advisors Evershed Sutherland Ltd., these are where there is either a direct unlicensed use of the Department’s trademarks, or where organisations or individuals either attempt to register or do register trademarks that may be considered to be similar or the same as the Department’s: a. In the case of direct unlicensed use of the trademarks, this can be as simple as requesting that a trader cease the use of and/or the selling of products using the Department’s trademarks, these are usually known as ‘takedowns’.
Unfortunately we do not retain information on every product ‘takedown’ request, but since 01 January 2017 at least 117 takedown requests have been filed.
A takedown request will normally be filed with the platform on which the product or misuse is on, such as Facebook or e-bay. On occasion the use has been regularised through agreement and in such cases these are identified within d) below; b. In regards to third party trademark applications that action has been taken on, since 01 January 2017, there have been 34 instances where instructions have been given and some form of action has been taken, or agreement reached; c. In regards to potential trademark infringement claims against third parties, i.e. complaints against third parties from infringing the use of TT related marks, since 01 January 2017, there have been 17 instances where instructions have been given and some form of action has been taken, or agreement reached. 2. In relation to where the infringements occur, this is generally worldwide, however, in regards to takedown’s as noted above, the platform is approached rather than the third party, with the platform taking the action. We do not retain information on all of the takedown requests, unless additional action is required this will be contained in table d) in Section 3. 3. The tables below identify, by region where action has been taken and the result of that action: a. In relation to third party trademark applications in the UK; b. In relation to third party trademark applications in the EU (excluding the UK); c. In relations to third party trademark applications elsewhere; and d. In relation to potential trademark infringement claims against third parties, these are all UK or IOM cases. 4. The Department currently has an agreement with its IP advisors for a fixed annual retainer fee plus any disbursements. This agreement covers a number of areas, including, but not limited to any actions taken and it is not possible to split that annual cost down. In regards to the disbursements aspects, these are incurred where any action requires the employment of legal services outside of those provided by the IP advisors and the agreement, such as engagement third party advisors within jurisdictions where the normal IP rules do not apply – an example would be China.
Unfortunately, the current agreement reaches its term in March 2021, the Department will be completing a procurement process for the service shortly, the Department is of the opinion that releasing the value of the current agreement could affect the Department’s ability to run that procurement.
Therefore in order to maintain the ability to run a true open and commercial procurement process the Department will not be releasing the value of the agreement.