Intellectual property disputes

The definition from the World Intellectual Property Organisation is:

Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.

When we think of an organisation, it is usually the brand that springs to mind, rather than the physical products or the people who run it.

Brands can take many different forms: it may be the name of the business or a particular product (for example, AUDI), or the stylised form or typographic representation of the name, a graphic device or logo (the four interlocking rings), and / or a strap line (Vorsprung durch Technik).

The terminology dates back to the time when livestock were routinely branded with a mark indicating the identity of their owner. Today’s brands serve exactly the same purpose: to indicate the origin or source of the organisation whose goods or services are marked with the branding.

All elements of a brand or logo must be distinctive and unique to the company (the owner) and must distinguish it from similar goods and / or services produced by the competition.

There are examples of companies, all over the world, which are considered inherently trustworthy because the time and money invested in creating (and protecting) brands which are instantly recognisable and towards which customers feel enormous goodwill. Outstanding British examples include Rolls Royce, the RSC, the BBC, and John Lewis to name but a handful.

Brands are the guardians of a company’s reputation and thus very valuable rights. Registering elements of the branding as trademarks gives the brand legal protection and will prevent others from compromising it by using any of the elements that have been registered. Once a trade mark has been registered, the owner may use the ® symbol next to the symbol/name/strapline which indicates that this is a registered trade mark. Registered trademarks can also be licensed or sold by the owner.

There are some restrictions but most of them are common sense. You cannot register trademarks that are:

• a generic description of the goods or services offered under the branding (for instance, you cannot register the word ‘tweed’ if you are a tweed manufacturer but you could register ‘McInley’s Tweed’); * offensive
• misleading
• insufficiently distinctive

Before registering your trade mark it is advisable to check, via the trade marks database, that it hasn’t already been registered.

If you do not register your branding as a trade mark then it is open to misuse by others. If this occurs, your only remedy is to depend on the law of ‘passing off’ which can be difficult prove. To do so, you have to prove that:

• You have goodwill and reputation in the unregistered trade mark;
• The other party is wrongly representing to the market that they are selling your goods or are associated with your business; and
• Your business has suffered loss and been damaged by the unauthorised use of the unregistered trade mark.

In addition, if you do not have a registered trade mark, you cannot use the ® symbol (and it is a criminal offence to do so in the UK) although you may use the ™ symbol with an unregistered trade mark.

Registering a trade mark is relatively inexpensive and straightforward and can save you a great deal of time and money in future if you find yourself having to defend your brand and the use of your logo or domain name by a competitor. 

Copyright provides automatic and long-lasting protection for a very wide range of materials, including:

• writing of books, plays, poetry and other literary work; music composition; drawing, illustration, painting, photography and other artistic work, including works of artistic craftsmanship;
• Digital content including computer software code, software design, website content and databases;
• Sound and music recordings film and television recordings and animations broadcasts
• The typography of published editions of written, dramatic and musical works.

Copyright prevents others from: copying or distributing your work renting or lending copies of your work performing, showing or playing your work in public adapting your work putting it on the internet without the consent or permission of the copyright owner.

It does depend on the type of work. The general rules are: Books, plays, poetry and other written work; music composition; drawing, illustration, painting, photographs copyright law and other artistic work: the lifetime of the author plus 70 years Sound and music recordings: 70 years from first publication Film and television recordings; and broadcasts: 70 years from the death of the director, screenplay author and composer Broadcasts: 50 years from first broadcast Typographical layout: 25 years from first publication

In the majority of cases, it is the originator of the work who owns the copyright, that is to say the author or creator.

If the creator or author creates the work as part of his/her employment, then the copyright will, in the first instance, belong to their employer.

However, in some cases where a work has been commissioned, ownership of the copyright will depend on the terms of the contract governing the relationship.

If the contract governing that relationship is silent on the subject of copyright ownership, the copyright will remain in the hands of the author – and not the person who gave the commission.

More than one person can own the copyright to a piece of work jointly if it can be proved that their contributions were equal.

Moral rights belong to the creator or author (living on or after 1 August 1989) of an original literary, dramatic, musical or artistic work and allow them to retain control over how their work is used or displayed, for example, where work has been privately commissioned.

Moral rights can be given up but cannot be sold to a third party and they pass to the author’s estate on his or her death. Recognising who owns the copyright for a piece of artistic work should not be difficult to ascertain.

However, policing the use of that work is not always as easy and pursuing remedies for infringement can be time consuming and expensive. We are always happy to discuss any element of copyright infringement law to help you protect your work.

A patent is the exclusive right to exploit or commercialise an invention for a set period of time within a particular country, granted by the state to an inventor, in return for the publication of a detailed explanation of how to make the invention work.

During that period of time, the owner of the patent (or patentee) has a monopoly over the use of the invention and the making of products which include the inventive technology. Patents are initially granted for 5 years (from the date when the application is filed) and can then be renewed annually for up to a total of 20 years.

Patent owners may grant a licence or permission to a third party to use the patented technology in return for a licence fee or royalty and the other conditions set out in the licence document.

Equally, a patent owner may decide to transfer or assign all of its rights under the patent to a third party.

In order to be patented, an innovative technology must:

• Be new or novel – that is to say it must not be part of what is called the ‘state of the art’ or the totality of publically available knowledge, anywhere in the world, in the relevant field of technology;
• Include an inventive step – this means that the invention must not be obvious to an unimaginative person who is skilled in the relevant field of technology;
• Be capable of industrial application – it must be possible to use the inventive technology or make the invention in any kind of industry;
• and Not fall within any of the exclusions.

Patents cannot be obtained in respect of: natural phenomena which includes discoveries, scientific theories or mathematical methods; aesthetic creations such as literary, dramatic, musical or artistic works (because these are protected by a different intellectual property right, that is to say, copyright); or Mental acts such as schemes, rules or methods for performing a mental act, playing a game or doing business.

You must keep your invention secret or confidential before any patent application is filed. If enough information is disclosed in public so that someone else could make the inventive technology work, your invention will no longer meet the requirement of novelty because it will have become part of the ‘state of the art’.

If you need to involve others, for example, employees or third parties in the commercialisation of your invention before a patent application is filed, it is vitally important to do so only under an obligation of confidentiality and which restricts the other person from using your invention beyond the agreed purposes.

It is advisable to enter in a Non-Disclosure Agreement (or NDA) with any third party before you disclose any information about your invention to them.

Once the patent application has been filed, it is no longer vital to maintain the confidentiality but it may still be advisable to limit the number of individuals who know how to work your invention especially before the patent application is published.

The legal protection for product designs is all about the physical appearance of the whole or part of a product.

How an inventive product works and the branding applied to a product may be protected by different intellectual property rights, namely patents and trade marks respectively.

Design rights are territorial, with different forms of protection within the UK, the EU and other countries.

In addition in the UK and EU, there are 2 levels of protection, depending upon whether or not a design has been registered with the relevant intellectual property office.

The most effective form of protection for product designs can be obtained by making an application for a registered design, either for the UK alone or for all 28 member states of the EU.

In each case: Any design which is new and has individual character is capable of being registered. Individual character means that the overall impression produced by the design on someone who is familiar with designs in the relevant sector (this person is known as ‘the informed user’) is different to the overall impression produced by any design available to the public before the date on which the application is filed.

Applications cannot be made for designs that are dictated by their technical function or in respect of features which are required to enable the designed product to fit or match with other products. Registered design applications are relatively inexpensive and can be obtained very rapidly.

Once registered, the registered right initially lasts for 5 years and can be renewed for further periods of 5 years up to a total of 25 years. The owner of a registered design has the exclusive right to use the design in question and any design which does not produce a different overall impression (on the informed user).

Although less valuable than a registered design, these forms of protection arise automatically as soon as a new design is recorded in a design document or prototype.

Aside from the automatic nature of unregistered protection, the most important difference is that the unregistered rights only restrict third parties from copying the design in question.

There are 2 slightly different forms of unregistered protection in the UK and elsewhere in the EU: UK Unregistered Design Rights (or UDR): This applies to an original or new product design which has not been copied from another design.

Surface ornamentation as well as designs which must fit or match other products are excluded. The UDR potentially lasts for 10 years after the first marketing of the product. In the last 5 years of the unregistered protection, third parties are entitled to ‘Licences of Right’ in respect of any act which would otherwise infringe the UDR.

If the parties cannot agree the terms of a Licence of Right, such as the licence fee or royalty, the terms will be imposed by UK Intellectual Property Office. EU Unregistered Community Design (or UCD): This applies to product design which is new and has individual character (on the same basis as a registered design).

The UCD lasts for only 3 years after the design was first made available to the public anywhere in the EU. The owners of unregistered designs have up to 12 months from the first marketing of the product to make an application for a registered design.

After this period, the fact that the unregistered design has been made available to the public will mean that the design is not sufficiently new to be capable of being registered.