Jonathan Armstrong on the pitfalls of copyright and tenders.

Jonathan Armstrong is a solicitor with Keeble Hawson Moorhouse.

There have been a number of cases recently highlighting the need for caution when using another's brand.

In Pensher Security Doors Ltd v Sunderland City Council (1999) Pensher owned the copyright on drawings for security doors which it made and called the Pensher PS1000. Sunderland City Council circulated a tender which specified the doors as "type Pensher PS1000".

It then drew up a second tender for a different project which did not mention Pensher by name. Pensher was not awarded either contract. The companies which did win produced doors similar to Pensher's.

Pensher sued the council as, it claimed, the council had authorised copyright infringement and it possessed the infringing doors in the course of its business.

The Court of Appeal decided in Pensher's favour on both grounds.

The council, by commissioning the manufacture of a particular design of door, sanctioned and purported to grant the right to manufacture a door to that design by implication. The council authorised acts of infringement by authorising manufacture of an alternative.

The second tender specification did not specify Pensher doors but the council should have known that they were similar to Pensher's.

That, according to trial judge HHJ Maddocks and the Court of Appeal, amounted to authorisation of the manufacture of the doors which was an act restricted by copyright.

The case is likely to have implications for those drawing up tender documents. Products are often specified by reference to a brand name, sometimes because it is the best product on the market but sometimes because the representative of that brand is the most active among those specifying.

The case means specifiers have to focus much more carefully on the qualities of the product that they wish to purchase rather than on its brand.

The case also highlights the all-pervading nature of intellectual property law. Every local authority should put in place an IP policy, similar to an IT policy, to tell its employees how to approach this difficult area.

As the rights of brand owners get stronger there is a need to take a more structured approach by all concerned.