Intellectual property is a valuable asset for any business from start-ups through to large corporations. All businesses face competition and will strive to do better than their competitors.
Good awareness and the appropriate protection of intellectual property rights may enable a company lawfully to hold onto the advantage of being first to market or the reputation and quality of its goods and services.
Some IP rights arise automatically, but others (and in particular stronger, more easily enforceable forms of protection) need to be registered at the appropriate Intellectual Property Office.
Copyright
What is copyright?
Copyright is a property right which exists in the following descriptions of work:
- original literary (including software), dramatic, musical or artistic works;
- sound recording, films or broadcasts; and,
- typographical arrangements of published editions, such as newspapers or magazines.
Copyright does not protect ideas. Copyright only exists if the concept is fixed, such as in writing or a photograph. It is not the idea that is protected but the expression of the concept itself - i.e. the book or the photograph.
Procedure for protection
Copyright automatically arises upon the creation of a work if it is a type of work capable of protection (see the above list). There is no system of registration.
Practical tips - it is advisable for the author of the work to:
- Mark the work with a ©, the author's name and the date of its creation. This should act as a deterrent to would-be infringers; and,
- Retain evidence of the date of the first creation of the work. If the author is an employee acting in the course of his employment, it will also be helpful to record details of the author's employment status.
Ownership
The first owner of the copyright is the author of the work. However, where a literary, dramatic, musical or artistic work is made by an employee in the course of his employment, his employer is the owner of any copyright that arises (subject to any contrary agreement between the employers and employee).
Owner's rights
The owner of the copyright has the exclusive right to:
- copy the work;
- issue copies of the work;
- rent or lend the work;
- perform, show or play the work;
- communicate the work to the public; and,
- make an adaptation of the work.
Duration of protection
The duration of copyright depends upon the nature of the work itself.
- Literary, dramatic, musical or artistic works - seventy years from the end of the calendar year in which the author dies.
- Sound recordings - seventy years from the end of the calendar year in which the recording is made.
- Films - seventy years from the end of the calendar year in the last of the principal director, the author of the screenplay, the author of the dialogue, or the composer of music (specifically created for the film) dies.
- Broadcasts - fifty years from the end of the calendar year in which the original broadcast was made. There is no copyright in a repeat broadcast.
- Typographical arrangements - twenty-five years from the end of the calendar year in which the edition was first published.
Infringement
Subject to some exceptions, copyright infringement occurs where a third party, without consent, exercises any of the exclusive rights of the copyright owner. This is known as primary infringement.
A third party can also commit what is known as secondary infringement if it:
- imports an infringing copy of the work into the UK;
- provides the means for making infringing copies;
- permits the use of premises for an infringing performance; or,
- provides apparatus for an infringing performance.
Remedies
If a third party infringes the copyright, it may be possible to obtain the following remedies:
- an injunction to prevent future infringement;
- compensation for the infringing activity:
a. damages for loss of earnings – such damages are usually based upon a reasonable royalty for the use of the work made by the infringer, i.e. what would a reasonable licence fee have been for the use that has been made; or,
b. an account of the profits made by the infringer arising from the infringing use; and/or,
delivery up or destruction of the infringing articles.
In rare circumstances, usually, where bootlegging has taken place, an infringer may face criminal sanctions.
Exploiting copyright
Copyright is a valuable commercial asset.
The copyright owner can assign (i.e. transfer) its rights to a third party, or grant a licence to a third party to do any of the above acts.
Assignments must be documented in writing and signed by or on behalf of the person assigning the right to be effective.
A licence may be granted formally, informally or may arise by implication. A formal licence agreement provides the parties with certainty.
Moral rights
The author of the copyrighted work also has moral rights to protect his reputation (regardless of whether he remains the owner of the work).
The author can seek to be recognised for a work or seek to prevent derogatory treatment of their work. The author's moral rights cannot be assigned but may be waived.
Copyright internationally
Copyright is a territorial property right. However, the Berne Convention requires the signatory States to recognise the copyright of authors from other signatory States like they were a national of their State. The Berne Convention currently has 167 signatory States (including the UK). Copyright, therefore, has a certain level of international protection.
Trade marks
What is a trade mark?
A trade mark is any sign which is capable of:
- being represented graphically; and,
- distinguishing the goods or services of one business from those of another.
A trade mark attaches a business' reputation to the goods to which it is applied or the services carried out under it.
What can be protected?
The public often thinks of trade marks as being words or symbols with which they associate particular goods or services with a particular business - for example, the "NIKE TICK" or the name "NIKE" for sportswear.
In addition to words and symbols, a trade mark may be the shape of goods or their packaging, even colours, sounds and smells.
To qualify for registration, a mark must be distinctive and not be descriptive of the goods and/or services offered under it.
A mark will not be registered if it consists exclusively of signs or symbols which designate the kind, quantity or geographical location of the goods or services. For example, it would not be possible to register "GUN" for guns, "MILAN" for clothing, or "FAST" for a courier service.
Non-distinctive and descriptive marks may, in limited circumstances, become registrable. This will only be the case if it can be shown that the (often long-term) use of the mark has caused the public to associate it with a particular business.
The most effective marks, and those most likely to be accepted for registration, are invented words such as TESCO or ASDA for supermarkets, or words unrelated to the product such as EE for mobile phones.
Procedure for protection
Trade mark protection can be obtained by applying for the registration of a trade mark at the UK Intellectual Property Office.
Trade marks are registered to specific goods and services specified in the application form.
During the application process, owners of earlier registered trade marks and/or unregistered trade marks (see unregistered rights below) may seek to object to the application as well as any use of the mark that is the subject of the application.
Such action is likely to be taken where the mark applied for is identical or similar to an earlier registered trade mark or unregistered trade mark (see unregistered rights below). Owners of identical and/or similar registered trade marks will be notified of the application by the Intellectual Property Office. It is therefore, prudent to undertake searches to assess the risks associated with an application.
Owner's rights
The owner of a registered trade mark has the exclusive right to use the trade mark in connection with the goods and services for which it is registered.
The owner of a registered trade mark may use the ® symbol. Doing this without a registered trade mark is a criminal offence.
Duration
Subject to the payment of renewal fees, a trade mark may be registered indefinitely. The initial period or protection lasts for ten years. Renewal fees are payable every ten years after that.
Infringement
Subject to some exceptions, trade mark infringement occurs where a third party, without consent, from the registered trade mark owner uses in the course of trade:
- A mark which is identical to an earlier registered trade mark in relation to identical goods or services; or,
- A mark which is identical to an earlier registered trade mark in relation to similar goods or services and there exists a likelihood of confusion with the earlier mark in the minds of the public; or,
- A mark which is similar to an earlier registered trade in relation to identical or similar goods or services and there exists a likelihood of confusion with the earlier mark in the minds of the public; and/or,
- A mark which would, without due cause, take unfair advantage of or be detrimental to an identical or similar earlier registered trade mark; and/or,
- A mark the use of which should be prevented by the rule of law or by virtue of another earlier right (which includes the rights of earlier unregistered trade marks discussed below).
Remedies
If a third party infringes a registered trade mark, it may be possible to obtain the following remedies:
- An injunction to prevent future infringement.
- Compensation for the infringing activity:
a. damages for loss of earnings – such costs are usually based upon a reasonable royalty for the use of the registered trade mark made by the infringer, i.e. what would a reasonable licence fee have been for the use that has been made; or,
b. an account of the profits made by the infringer arising from the infringing use; and/or,
delivery up or destruction of any infringing articles on which the mark is reproduced.
Exploitation
Registered trade marks are valuable commercial assets for any business or organisation. The registered trade mark owner can assign (i.e. transfer) its rights to a third party, or grant a licence to a third party to do any of the above acts.
Assignments must be recorded in writing and signed by or on behalf of the person assigning the right to be effective.
A licence may be granted formally, informally or may arise by implication. A formal licence agreement provides the parties with certainty.
International protection
Trade marks are registered on a territorial basis.
It is possible to make a single application to the Office of Harmonisation in the Internal Market to obtain a Community Trade Mark (CTM) which is valid across all EU member states. This CTM system is very similar to the trade mark system in the UK.
The Madrid Protocol currently 91 signatory States (including the UK). The protocol facilitates the filing of a single application for protection in 1 or more of the signatory states. An application under the protocol is effectively a bundle of national applications which have the same effect as a national application in each of the designated States.
Unregistered rights: passing off
A trade mark which is not registered can be protected under the common law of passing off. To establish that a third party has, through its use of an unregistered mark, committed the tort of passing off, it is essential to show:
- goodwill and reputation in the unregistered mark;
- that the third party has made false representations which have or are likely to lead the public to be confused that his goods and services are the those of the owner of the unregistered mark, or that his goods or services are associated with or somehow connected to the business of the owner of the unregistered mark; and,
- damage resulting from such misrepresentations.
The requirement to establish goodwill and reputation in the mark means that a passing off claim is more difficult to prove and often more expensive than a trade mark infringement claim. It is, therefore, advisable to obtain registered protection.
Where a mark is unregistered, the owner may use the ™ symbol to show that it is using the mark in a trade mark sense.
Patents
What is a patent?
A patent is a published document which describes an invention and provides the inventor with a monopoly right to exploit that invention for a specified period.
The patent system aims to provide inventors with sufficient protection to recoup their expenditure on successful (and unsuccessful) inventions. At the same time, it aims to improve the general body of technical understanding and facilitate research and development by others.
What can be patented?
To be patented, an invention must:
- Be new;
- have an inventive step;
- be capable of industrial application; and,
- not be otherwise excluded.
New: the invention must not form part of the "state of the art" (i.e. all materials made available to the public anywhere in the world).
Inventive step: the invention must not be obvious to an unimaginative person (i.e. someone lacking an inventive spark) skilled in the particular field in question.
Industrial application: the invention must be capable of being made or used in any kind of industry.
Exclusions: a patent cannot be obtained in respect of:
- Natural phenomena: discovery, scientific theory or mathematical method;
- Aesthetic creations: literary, dramatic, musical or artistic works, etc. – these are protected by copyright; or,
- Mental acts: scheme, rule or method for performing a mental act, playing a game or doing business.
The requirement of novelty means that any invention should be kept secret. A disclosure which enables someone to make the invention or work the process will result in the invention becoming part of the "state of the art", and it will not be patentable.
Practical tip - the inventor needs to enter into a non-disclosure agreement with any third party to whom he intends to disclose the invention.
Procedure for protection
To obtain a patent, the inventor must make an application to the UK Intellectual Property Office.
The inventor will request that a patent be granted and set out the specification of the invention. The specification includes a description of the invention and the inventor's claims:
- Description: This must be in sufficient detail for it to be performed by a person skilled in the relevant field.
- Claims: these define the scope of the monopoly sought by the inventor. If granted, they will define the scope of the protection.
Ownership
The inventor is the first person entitled to the invention.
However, the patent will belong to the employer if the patent is made by an employee in the course of their normal duties. That is provided that an invention might reasonably be expected to result from their duties.
Owner's rights
The patent owner has the exclusive right to work the patent, i.e. to make, sell, and offer to sell, use or import the invention.
Duration
Patents are initially granted for five years and can be renewed on an annual basis for up to a maximum of 20 years.
Infringement
Patent infringement occurs where a person that does any of the acts which are the exclusive right of the patent owner without his consent.
Remedies
If a third party infringes a patent, it may be possible to obtain the following remedies:
- An injunction to prevent future infringement.
- Compensation for the infringing activity:
a. damages for loss of earnings – such damages are usually based upon a reasonable royalty for the use of the patent made by the infringer, i.e. what would a reasonable licence fee have been for the use that has been made; or,
b. an account of the profits made by the infringer arising from the infringing use; and/or,
c. delivery up or destruction of the infringing articles.
Exploitation
A patent, like any form of intellectual property, is a valuable commercial asset. The owner can assign (i.e. transfer) its rights to a third party, or grant a licence to a third party to do any of the above acts.
Assignments must be recorded in writing and signed by or on behalf of the person assigning the right to be effective.
A licence may be granted formally, informally or may arise by implication. A formal licence agreement provides the parties with certainty.
International protection
Patents are registered on a territorial basis.
It is possible to make a single application to the European Patent Office where a single application can be made to some or all of the 38 contracting states. If granted, the effect is a bundle of national patents in each of the designated states. A unitary patent has been available since January 2013, which is a single patent applicable in 25 EU countries.
This Patent Co-operation Treaty currently has 148 signatory states (including the UK). The treaty introduced a simplified patent application filing system. It is possible to file an 'international application' in 1 or more of the 148 contracting states. If granted, the effect is a bundle of national patents in each of the designated states.
The Paris Convention currently has 175 signatory states (including the UK). The convention provides an applicant in 1 of the signatory states with a one year priority period to make subsequent applications in 1 or more of the other 174 signatory states. Any such applications will take priority over those of others filed in the relevant state(s) in respect of the same invention.
Design rights
What is design?
It is the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or material of the product itself and/or its ornamentation.
Design rights are territorial. Within the EU, a UK designer may seek to register their design in the UK or across the EU. In both the UK and the EU, there is also a limited unregistered right.
Registered designs in the UK
What can be protected?
A design may be registered in the UK if the design is new and has individual character.
New: a design is new if no identical design, or no design whose features differ only in immaterial details, has been made available to the public before the date of the application for registration.
Individual character: the overall impression of the design made upon an informed user (a person familiar with the designs used in the sector in question) must differ from the overall impression produced on such a user by any design which has been made available to the public before the date of the application for registration.
The following designs cannot be registered:
- those dictated by their technical function, for example, a key – this must fit its lock; and,
- any features which are compelled to be of a certain shape and size to be able to fit into, around or up against some other product so that either or both of the products can perform their function.
- For example, while the design for a new rearview mirror may be capable of protection, the joint connecting the rearview mirror to the vehicle will not be capable of protection.
Procedure for protection
A design may be registered by making an application for registration in the prescribed form to the UK Intellectual Property Office.
Ownership
The owner of the registered design is the party listed as the owner on the registration certificate.
In general, the designer or creator of the design will initially be entitled to apply to register the design, subject to the following:
- where the design is created in the course of employment, the designer's employer will initially be entitled to apply to register the design;
- where the design was created before 1 October 2014 and a third party commissioned (and paid for) the creation of the design, the third party will initially be entitled to apply to register the design.
Owner's rights
The owner of the registered design has the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.
This right extends to manufacturing, dealing in, importing, exporting, stocking and using a product incorporating the design.
Duration
A design may be registered for a maximum of 25 years. The design is initially registered for five years, and this is renewable on the payment of renewal fees every five years.
Infringement
Subject to 'fair dealing' exceptions, infringement occurs where a person, without consent, does any of the acts that are the exclusive right of the registered design owner.
Remedies
If a third party infringes a registered design, it may be possible to obtain the following remedies:
- An injunction to prevent future infringement.
- Compensation for the infringing activity:
a. damages for loss of earnings – such damages are usually based upon a reasonable royalty for the use of the design made by the infringer, i.e. what would a reasonable licence fee have been for the use that has been made; or,
b. an account of the profits made by the infringer arising from the infringing use; and/or,
c. delivery up or destruction of the infringing articles
Exploitation
A registered design is a valuable commercial asset. The owner can assign (i.e. transfer) its rights to a third party, or grant a licence to a third party to do any of the above acts.
Assignments must be recorded in writing and signed by or on behalf of the person assigning the right to be effective.
A licence may be granted formally, informally or may arise by implication. A formal licence agreement provides the parties with certainty.
Unregistered designs in the UK
What can be protected?
Unregistered design right protects original designs. Original means a design is not original if it is commonplace in the design field at the time of its creation.
The following designs are not protected:
- surface ornamentation;
- those that must fit with other articles so that either may perform their function – this is similar to the must fit exception for registered design (see above); and,
- those whose appearance is dependent upon a larger article of which it is to form an integral part.
Procedure for protection
Unregistered design right automatically arises when an original design is recorded in a document, or an article has been made to the design.
Practical tips - it is advisable for the author of the design to:
- sign and date their design documents and also keep records of when the first article of the design is made or marketed.
- retain evidence of the date of the first creation of the design. If the author is an employee acting in the course of his employment, it will also be helpful to record details of the author's employment status.
Ownership
In general, the designer or creator of the design will be the owner of the design, subject to the following:
- where the design is created in the course of employment, the designer's employer will be the first owner;
- where the design was created before 1 October 2014 and a third party commissioned (and paid for) the creation of the design, the third party will be the first owner.
Owner's rights
The unregistered design right owner has the exclusive right to reproduce the design for commercial purposes:
- by making articles to that design; or,
- by making a design recording the design to enable such articles to be made.
Duration
The unregistered design right lasts for ten years after the first marketing of the design, and up to an overall maximum of 15 years from the date of its creation.
Licences of right: In the last five years of unregistered design right, any person is entitled to a licence in respect of anything that would otherwise infringe the right. In default of agreement, the licence terms will be set by the Comptroller at the Designs Registry.
Infringement
Design right infringement occurs when for commercial purposes a third party, without consent, does any of the acts that are the exclusive right of the unregistered design owner or authorises anyone else to do so without the unregistered design right owner's permission. This is known as primary infringement.
A third party may commit what is known as a secondary infringement when he knows or has reason to believe that an article infringes unregistered design right and, for commercial purposes, either:
- has the articles in his possession;
- sells or hires the article or offers the article for sale or hire; or,
- imports the article into the UK.
Remedies
If a third party infringes an unregistered design, it may be possible to obtain the following remedies:
- An injunction to prevent future infringement.
- Compensation for the infringing activity:
a. damages for loss of earnings – like registered design such damages are usually based upon a reasonable royalty for the use of the design made by the infringer; or,
b. an account of the profits made by the infringer arising from the infringing use; and/or,
c. delivery up or destruction of the infringing articles.
EU-wide registered designs
It is possible to make a single application to the Office of Harmonisation in the Internal Market to obtain a registered design which is valid in all EU Member States. This is a very similar system to the registered design right in the UK.
Unregistered designs in the EU
An Unregistered Community Design (UCD) is a limited form of automatic protection for new designs with individual character. UCD protection only lasts for three years from the date on which the design was first made available to the public within the Community.
The owner of a UCD only has the right to prevent acts of infringement if the contested use results from the copying of the design. An independent design, without copying, will not, therefore, be an infringement.
Designs outside the EU
The Paris Convention currently has 175 signatory states (including the UK). The convention provides an applicant in 1 of the signatory states with a six month priority period to make subsequent applications in 1 or more of the other 174 signatory states. Any such applications will take priority over those of others filed in the relevant state(s) in respect of the same design.
Potential implications of Brexit
Registered and unregistered Community designs presently apply across all 28 member states. Once the UK has left the EU, these rights will potentially cease to apply within the UK, but they will remain valid across the remaining 27 member states.
Subject to negotiations with the continuing EU members and internal UK policy decisions, transitional arrangements for Registered Community Designs (RCDs) will potentially result in one of the following:
- The UK may remain within the EU designs system (and so nothing would change – but this would require the UK to continue to be subject to the EU Court of Justice at least for this purpose);
- There may be automatic arrangements for UK equivalents of all existing RCDs;
- There may be a transitional regime by which existing RCDs may be converted into a UK equivalent subject to the making of an application and/or payment of fees; or
- RCDs may simply cease to apply in the UK. This will cause difficulty because product design owners would not then be able to apply for replacement UK registered designs without special legislation.
The transitional arrangements for Unregistered Community Designs (UCDs) will be more complicated because of more fundamental differences between the scope of UCDs and UK unregistered design rights. In addition, it may be the case that, in the future after Brexit, UK designers or manufacturers who wish to enjoy unregistered protection for a UCD will need first to market their product in the EU and not in the UK.
There will be no immediate impact at all to UK registered designs (granted by the UK Intellectual Property Office) and UK unregistered designs. Assuming there is no wholesale change in UK design law upon Brexit, UK registered design law will presumably begin to diverge from EU law over time. UK unregistered design law already differs from EU unregistered design protection.
Applicants for new design registrations may wish to apply for UK registrations now in preference to, or in addition to, applications for RCDs in the EU.
