You understand a logo is important and maybe you have some product designs or software that you have spent a good deal of time building and refining. But you are rushed off your feet and haven’t the time to think more about it.
This is a mistake that could come back to haunt you in later years.
Whether you are creating artwork, taking photographs, manufacturing a new product, making audio-visual works such as videos or music, creating a website or an app, or providing a much-needed service, your intellectual property is an asset and will undoubtedly need protection.
Potential investors, joint venture partners, franchisees, licensees and those looking to buy your business in the future will want assurance that you have protected your IP from being infringed.
What is intellectual property?
The World Intellectual Property Office (WIPO) defines intellectual property (IP) as “creations of the mind, such as inventions; literary and artistic works; design; and symbols, names and images used in commerce”.
IP rights are also a protected Human Right.
What do Intellectual Property rights (IPR) comprise of?
Conventional IPRs usually encompass:
A patent registers you or your business as the owner of an invention (such as a new technical solution in the form of a product or process) and prevents others making, using, or selling that invention without permission. The monopoly protection granted usually lasts 20 years.
Patents can only be applied for if the invention is:
new (i.e. it can’t form part of existing ‘prior art’)
involves an inventive step (meaning it is not obvious to a person with knowledge in the relevant field of the invention)
can be used by some kind of industry
UK patents are filed at the UK Intellectual Property Office.
What qualifies for patent protection varies from jurisdiction to jurisdiction. For example, mathematical methods/equations/algorithms, as well as computer programs and software/code are generally excluded from patent protection in the EU. For this reason, it can be difficult to get patent protection for things like mobile apps. A wider computer-implemented invention may be patentable, however, if it solves a technical problem in a non-obvious way.
There are strict rules governing when you need to apply for a patent. For instance, if the item you want to patent is in the public domain, i.e. you are selling it already, then the chances of you successfully securing a patent are significantly diminished. Patents are a highly specialised area and seeking advice from a qualified patent attorney is always advisable if you are looking to explore this option.
Trademarks and passing off
A trademark is used to distinguish one trader’s goods and services from another. The Golden Arches of MacDonald’s and the Nike ‘tick’ are examples of famous trademarks. A trademark can comprise of many forms, including words, slogans, logos, shapes, and sometimes even colours and sounds. If you are committed to creating a strong brand, trademarks will be essential to your strategy and they should always be an upfront consideration before launching or disclosing a new brand.
Not all marks are capable of registered trademark protection though. A common example of marks that will be refused by the trademark office are those devoid of distinctive character or descriptive of any characteristic of the goods and services. Trademark lawyers will be able to advise on registrability issues and general strategy.
Without the benefit of registered trademark protection, traders with sufficient goodwill in their brand may still be able to take action against copycats on the basis of ‘passing off’. This is where one business misrepresents its product or service as being that of another company and creates market confusion, in such a way that causes damage. The underlying principle of passing off is that someone cannot sell their goods or market their services under the pretence (whether intentional or not) that they are the goods or services of another.
Using the MacDonald’s example, you can’t put their name or logo on your burger shop as customers will be under the impression that they are actually visiting a MacDonald’s restaurant. However, passing off cases are expensive and difficult to win, which is why registered trademark protection is always preferable.
Registered design rights protect the appearance of a product, covering aspects such as its lines, contours, colours, shape, texture, patterns, packaging, or ornamentation.
Unregistered design rights and copyright may sometimes protect novel designs too. However, as these safeguards are more limited in duration and scope, it is best to protect your design by registering it formally. This will provide the exclusive right to make, offer, market, import, export, use or stock any product to which the design has been applied, or is incorporated. The maximum term of protection can be up to 25 years.
Copyright is an automatic right that provides the creator of an artistic work control over how it is used. Copyright can apply to a broad range of original creative output, including books, technical reports, manuals, paintings, sculptures, photographs, music, songs, dramatic works, films, television, and radio broadcasts, technical plans, promotional literature, advertising materials, computer software, and databases.
The copyright owner has exclusive rights to stop other people from copying the whole or a substantial part of their work without permission. Copyright generally lasts for 70 years after the death of the work’s creator. Various defences and exceptions exist to copyright infringement but they tend to be interpreted narrowly and only apply in very limited circumstances.
Impact of Brexit
Brexit is about to throw a fairly large spanner in the works when it comes to IP protection, particularly in the case of trademark and design rights. Until now, EU trademarks and community designs have always protected the UK (along with the 27 other Member States of the EU). After this year though all that is about to change as EU trademarks and EU designs which register after 31 December 2020 (whether or not they were applied for before that date) will no longer be protected in the UK. This means that clients who wish to have EU-wide protection should now be looking to register their trademarks and design rights in both territories (UK and EU) separately.
The position is different for those who have EU trademarks or designs which registered before the end of 2020. In these cases, the EU mark will effectively be cloned so that a comparable, separate UK registration is created. This will happen automatically and free of charge and no action is therefore required on the part of the IP owner (except to remember to renew both the UK right and the EU right separately when the time comes).
Businesses, organisations or individuals who fall between the gap and who have filed EU trademarks or designs which are still pending at the end of 2020 will have a period of nine months from the date of exit to apply in the UK for the same protections, retaining the date of the EU application date for priority purposes.
UK government guidance is listed here.
Getting legal advice
Intellectual property registration and enforcement are specialist areas of law. Registering a patent, design right, or trademark can be complex and prone to error without professional expertise. For example, before you register a trademark, it is vital to undertake a trademark clearance search to ensure no one else has registered the same mark or a similar one (otherwise that name would not be legally free to use).
It is wise to seek legal advice at the beginning of an IP application process and also to understand the copyright law, how it applies to works you have created, and best practice measures to protect them. This will ensure your investment in IP protection is well-spent, as you will minimise the risk of objections and infringement.
Visit www.lawbite.co.uk for your free 15-minute consultation with a business lawyer, solicitor or mediator from our expert legal team.
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