Intellectual Property Intellectual Property
Intellectual Property is a very important aspect of today’s commercial world. It lets people protect and own the work which they create. When someone creates an idea or an image, an invention or a design, they would almost certainly want to protect it so that it becomes legally and rightfully theirs.
- HOW CAN WE ASSIST YOU?
We can advise you on:
- Requirements for keeping your invention confidential
- Requirements for patentability
- Conducting searches of existing patents
- Drafting patent application
- Licencing / selling your patent
- Enforcing your patent registration and claiming patent infringement
- Defending patent infringement claims
- WHAT IS A PATENT?
A patent protects innovation. If a patent is granted for your invention then you will have protection for up to 20 years. During these 20 years you will need to pay a renewal fee every 5 years however you will have the right to sell, licence and discuss the patent. After 18 months of the patent being registered, the Intellectual Property Office will publish it. This will allow others to see the invention and they will be able to freely use the technological developments after 20 years. In order for your invention to be patentable it must be:
- Not already available
- Have an inventive step that is not obvious to someone with the knowledge and expertise in the subject or particular field
- Be capable of being made or used in some kind of industry
- Not be:
- a scientific or mathematical discovery
- theory or method
- a literary, dramatic, musical or artistic work
- a way of performing a mental act, playing a game or doing business
- the presentation of information, or some computer programmes
- an animal or plant variety
- a method of medical treatment or diagnosis, or
- against public policy or morality
- KEEP IT CONFIDENTIAL
A patent can only be granted if the innovation has never before been seen by the public. When an innovation is created, it is extremely important to consider how and whether it should be protected before any details are published or any samples are circulated to the public. You should therefore keep it a secret and extremely confidential until you know what protection route you wish to take. Failure to do so can severely limit the scope for protecting the innovation either as a patent or as a trade secret under the law relating to confidential information. Often, businesses will make a commercial decision not to patent an innovation as the time it takes to apply for and obtain a patent could be time wasted in the industry in which the innovation has been created. It sometimes therefore makes better business sense to take the innovation directly to market and cash in on your innovation as quickly as possible; of course, this will therefore mean that others may copy your innovation.
We can advise on and draft bespoke and perpetual confidentiality agreements to use when discussing your innovation with third parties so as to prevent the third party from stealing your creation.
- PROTECT YOUR IDEAS
It is important to protect your ideas in order to prevent others from trying to use your invention without your permission. If someone is infringing your patent then you will have the right to take legal action to try and prevent them from using your invention and to prevent them from gaining from your hard work. It is also very important to ensure that you are not infringing someone else’s patent by using their invention without their permission or licence. Of course, legal action is the last resort in such a situation as it is costly and time consuming, therefore one would hope that the existence of a patent alone would deter others from using the technological developments within your invention.
For more information about Patents, please click here, or give one of our solicitors a call today.
- HOW CAN WE ASSIST YOU?
We can advise you on:
- UK, EU and world wide trade mark applications
- Registrability of trade mark
- Advising you of the classes for your trade mark application
- Conducting searches of existing registered and unregistered trade marks
- Drafting trade mark application
- Licencing / selling your trade mark
- Enforcing your trade mark and claiming trade mark infringement
- Defending trade mark infringement claims
- WHAT IS A TRADE MARK?
A trade mark is also often referred to as a ‘brand’. A trade mark is the sign or signs which are used by one business to differentiate their goods and service from those of other businesses. In today’s modern world, businesses spend a lot of time and resources attempting to protect their brand name and image as for many brands, their image, logo, slogan, jingle etc. is associated with high quality, luxury products which they do not want to be confused with other brands.
There is no legal requirement to register a trade mark, but it is generally advisable to do so if possible because if an application is successful, the trade mark owner obtains a monopoly, that is the exclusive right to use the mark for the goods and/or services registered. You can therefore have unregistered and registered trade marks.
A trade mark can be registered anywhere in the world, provided that it meets certain requirements. A trade mark must be registered with the Intellectual Property Office in the UK or the relevant regulatory body elsewhere in the world; however unlike a patent, you can renew your trade mark every 10 years for ever. If you do not register you trade mark then it may be at risk of someone else using or copying it.
- REGISTRABILITY OF A TRADE MARK
Generally, any sign which can be portrayed graphically and which is capable of distinguishing the goods and services of one business from the goods and services of another, is usually registrable (subject to undergoing the trade mark application process). Therefore trade marks may consist of wording (which is the most comprehensive protection available), slogans, designs, letters, numerals, the shape of goods, smells, sounds, colours, gestures and more.
In order for your trade mark to be eligible for registration it must be distinctive for the goods and services which you provide. It must be different from the signs of your competitors. Trade marks are strictly regulated and they cannot be registered in certain circumstances.
Trade marks cannot be registered if they:
- describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;
- have become customary in your line of trade
- are not distinctive
- are three dimensional shapes, if the shape is typical of the goods you are interested in (or part of them), has a function or adds value to the goods
- are specially protected emblems
- are offensive
- are against the law, for example, promoting illegal drugs, or
- are deceptive. There should be nothing in the mark which would lead the public to think that your goods and services have a quality which they do not
- USE IT OR LOSE IT
There are a number of ways in which an owner of a registered trade mark can lose their rights and have their registered trade mark revoked. However, possibly one of the most important reasons for having a trade mark revoked is because of its non-use. This means that there has been no genuine use of the trade mark by either the owner of the trade mark or any licensee for at least five years.
You must therefore ensure that you properly advertise the fact that a trade mark is registered, for example by using the ® symbol which notifies the reader that the preceding words, symbol, logo etc. is a registered trade mark. This should always be displayed when the trade mark is being used. You must also ensure that all licencing agreements are drafted properly and that they set standards for use of the trade mark. Large businesses often also have a trade mark policy which informs its employees as to how to properly maintain and protect their trade marks. You must also never let your trade mark be used as an adjective and become a descriptive word or a common name in the trade for the product or service in which the trade mark was first registered.
There are various tests which are employed in order to decide whether a trade mark registration should be revoked however it is always best to take proper advice and protect your trade mark from the outset.
- PASSING OFF
If you do not have a registered trade mark, and another business uses or copies your brand or image, unregistered trade mark protection protection in the UK is available under the law of passing off. Passing off requires evidence from the claimant establishing:
That the unregistered trade mark has goodwill.
That the defendant’s activities constitute a misrepresentation that has or is likely to deceive consumers.
That the claimant has or is likely to suffer damage as a result of the misrepresentation.
- HOW CAN WE ASSIST YOU?
We can advise you on:
- Copyright protection
- Proving your copyright
- Licencing / selling your copyright
- Enforcing your copyright protection and claiming copyright infringement
- Defending copyright infringement claims
- WHAT IS A COPYRIGHT?
A Copyright seeks to protect the form in which an idea is expressed, but not the ideas themselves.
Copyright law operates to afford protection to the creator of original works which they have expended independent effort in order to create the work. The existence of a copyright does not however create a monopoly as does a patent or trade mark; unless your copyright has been copied, it does not matter if a similar or identical work already exists. Copyright protection is available for the following:
- literary works, including novels, instruction manuals, computer programs, song lyrics, newspaper articles and some types of database
- dramatic works, including dance or mime
- musical works
- artistic works, including paintings, engravings, photographs, sculptures, collages, architecture, technical drawings, diagrams, maps and logos
- layouts or typographical arrangements used to publish a work, for a book for instance
recordings of a work, including sound and film
- broadcasts of a work
- AUTOMATIC RIGHT
A copyright does not have to be registered with the Intellectual Property Office because it is what is known as an automatic right, formed when the work is created and fixed.
In the UK different types of copyright have different terms of protection. The current terms of protection were introduced or confirmed on 1 January 1996 when copyright terms throughout the European Economic Area were harmonised. In general, the terms of protection in the UK are as follows:
Copyright in a literary, dramatic, musical or artistic work lasts for the life of the author and 70 years from the end of the year in which he/she died.
Copyright in a film expires 70 years after the end of the year in which the death occurs of the last to survive of the principal director, the authors of the screenplay and dialogue, and the composer of any music specially created for the film.
Copyright in a broadcast expires 50 years from the end of the year of making of the broadcast.
Copyright in a published edition expires 25 years from the end of the year in which the edition was first published.
- COPYRIGHT PROTECTION
As with all intellectual property, it is essential that you seek to protect what is rightfully yours, copyright being no exception. Although there is no official register where your copyright is noted / registered, there are practical methods which one can take to try and notify others of the copyright and prevent infringement. There are also some unofficial registers offered by various companies. One method which we commonly see is the use of the ‘©’ symbol; this tells readers that the author wishes to claim a copyright over the work which they are viewing / reading.
The ‘©’ symbol is often accompanied with wording such as “Copyright ©…” and the name of the author and the year in which the work was published. It is not uncommon to see such a symbol and wording placed wherever necessary in order to draw as much awareness to the fact that a copyright is being claimed. On websites, people often have specific sections dedicated to describing what copyright (and other intellectual property) protection they are claiming. However you do it, you should always try to protect your copyright as best as possible.
- COPYRIGHT INFRINGEMENT
Copyright infringement comes in two main forms:
- Primary Infringement – this is where no knowledge or intention is required to be ascertained in order to establish liability on the part of the infringer. There are a number of restricted acts which a person cannot do without the explicit consent of the copyright owner. Performing the restricted acts may amount to copyright infringement. The restricted acts include: copying; issuing copies to the public; renting or lending the work to the public; performing, showing or playing the work in public; communicating the work to the public; making an adaptation of the work; and more.
- Secondary Infringement – this is where the infringer is required to have a certain amount of knowledge or at least reasonable grounds for having such knowledge at the time that the infringement was committed. All actions leading to secondary infringement must be carried out without the licence / authority of the copyright owner and include: importing the work into the UK; possessing and exhibiting the work in public in the course of a business; selling or hiring the work; distributing the work so as to prejudicially affect the copyright owner; making an article to copy the work; possessing an article which can copy the work; and more.
If you believe that your copyright has been infringed in any way, then it is essential to take the proper steps in order to protect your copyright and not allow others to benefit from something which you have worked hard to create. For more information about Copyrights or Copyright infringement, give one of our solicitors a call today.
- HOW CAN WE ASSIST YOU?
We can advise you on:
- Design right / registered design protection
- Licencing / selling your design right / registered design
- Proving your design right
- Drafting registered design application
- Enforcing your design protection and claiming design infringement
- Defending design infringement claims
- WHAT IS A DESIGN RIGHT?
The legal definition of a design right is “the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or ornamentation.”
A design right automatically protects your design as long as you can prove that you created it and the date on which it was created. This is known as an unregistered design right which will last for either 15 years from the end of the calendar year in which the design was first recorded or 10 years from the end of the year in which the design was produced and made available for sale or hire, whichever is the lesser.
- WHAT IS A REGISTERED DESIGN?
You can also make an application to register a design right which, if granted will last for up to 25 years however you must renew the registered design every 5 years. The owner of a design right will have the right to use or reproduce the design for commercial purposes.
For its registration to be valid, a design must:
- be new, and
- have individual character
At times, it may be the case that you may not be able to register your design if:
It is not a design by legal definition as described above
It is offensive
It consists of, or includes, certain protected flags and international emblems
It is solely dictated by the product’s technical function
- PROTECTING YOUR DESIGN
Design right and registered design infringement should be taken very seriously and if you are the owner of a design, whether registered or unregistered you should take all necessary steps in order to monitor potential infringements and to notify all third parties of the existence of your design right. Unlike trade marks and copyright, there is no requirement for an owner of a design right to specifically show to people that they are the owners of a design; in other words, there is no specific symbol to use. However, a lot of designers take the advisable approach of marking their goods with the wording “Design Right” along with the name of their designer and the date it was designed. If you have a registered design, then you should clearly display the design number of your design.
When creating your design, it is also advisable for you (and all employees) to sign and date each design so that it can later be referred to if necessary. Some people take further steps in order to ensure that their designs can be tracked by date, for example, by sending themselves a copy of their design in the post, and not opening it until necessary. That way the design will remain untouched with a postal date stamp. Records should be kept of the design document / drawing and the design process undertaken by the author. The date of first marketing of articles made to the design should also be recorded as this will play an important party during any infringement action; for example, the day a pair of trousers were made on the basis of a design.
- DESIGN RIGHT & REGISTERED DESIGN INFRINGEMENT
The laws relating to the infringement of a design right and an infringement of a registered design are very similar. However, it is generally much clearer and easier to prove an infringement of a registered design. This is plainly because the definitive factors of the design, and the date on which it was designed have been registered with the Intellectual Property Office. Due to the fact that design rights are unregistered, not all third parties can be aware of the existence of a design right. This is because searching the register held by the Intellectual Property Office will not show all designs; it will only show registered designs. For a design right, the owner will have to prove to the infringer and to the court they they were the first to produce their design and provide evidence to substantiate their claims.
Design right or registered design infringement also work in a similar way to copyright infringement and there are various circumstances where the two overlap. Generally, the primary design infringement which occurs consists of an infringer making an article to the design document or replicating a design in order to make a certain article. Secondary infringement generally involves the commercial importation of or dealing in articles which the infringer knows or has reason to believe are infringing articles.
With designs, there is also an additional consideration; that of ‘Groundless Threats’. The owner of a design right should not threaten a potential infringer with infringement proceedings unless after very careful consideration and examination, the owner is clear that the threat is justified and that they believe that they can prove the alleged infringement. If not, the accused infringer may be able to bring an action of Groundless Threats against the owner of the design right. If successful, the court may order:
- That the owner of the design right must make a declaration that the threats which have been made are unjustifiable
- An injunction against the threats continuing
- Damages in respect of any loss which has been sustained by the claimant due to the threats which have been made
In most cases, it is often very difficult to avoid making a threat when writing to a potential infringer; a threat can often also be made inadvertently. It is therefore advisable to take legal advice before writing any letters to potential infringers.
For more information about registered or unregistered designs or their infringement, give one of our solicitors a call today.