Introduction Deals The Team Intellectual Property Services Disputes Articles IP Bulletin Latest News Information Sheets Publications   Registration Form

RIGHTS PROTECTING GOODWILL AND REPUTATION

REGISTERED TRADE MARKS

A registered trade mark is a sign capable of being represented graphically that can distinguish the goods or services of one enterprise from those of another. The possible signs include words, smells, sounds and the shape of goods, although word marks and logos are easier to register than many others. Some marks could be registered as designs, and copyright may also be used to protect the artwork.

Registration
Trade marks are registered in one or more of 45 internationally recognised categories (known as "classes"). The ambit of the registration is often restricted further by reference to specific goods and services within the relevant class.

Refusal of registration
It is easier to explain what is registrable in terms of what will be refused registration. A trade mark may be refused registration on a number of grounds: most importantly if it is not sufficiently distinctive, if it is descriptive, or if the use of the mark is customary in a particular trade. It may also be refused if:

(1) it is the same as another registered mark and is used in respect of the same goods and services as the other mark;

(2) it is similar to another mark, is used for similar goods and services to the other mark, and there is a possibility of confusion between the two;

(3) it is the same as another mark that is used for different goods or services, but in circumstances where the earlier mark has a reputation in the UK, and the use of the proposed mark is, amongst other things, detrimental to the reputation of the earlier mark;

(4) its use could be prevented by the law of passing off (see below), copyright, design right or registered designs.
If registration could be prevented by the holder of another existing right, and that person consents, there is no problem with registration.

Infringement
Broadly speaking, a person infringes a trade mark if he uses a mark which fulfils any of the criteria in (1) to (3) in the section above.

Formalities for protection
An application containing the following is made to the Trade Marks Registry in the UK or in the equivalent registry in another jurisdiction, including registration in the European Community for a Community Trade Mark:

Term
10 years renewable indefinitely.

Advantages

Disadvantages

PASSING OFF

Nature of right
There must be a misrepresentation (see below), made by a person in the course of "trade" to existing or prospective "customers" that is calculated to injure the goodwill of another enterprise, and that causes or will probably cause damage. The misrepresentation is usually made by copying something that is associated with a particular enterprise - such as a name, distinctive insignia or packaging. Copying a yellow plastic lemon has been seen as a sufficient misrepresentation in the past.

Formalities for protection
None.

Term
Indefinite.

Advantages

Disadvantages:

RECORDED SUBJECT-MATTER AND DESIGNS

COPYRIGHT

Nature of right
This right may be created when something is recorded. Broadly speaking, it applies when something is:

The work must be original and have sufficient content. In England, the thresholds for content and originality are relatively low. It is sufficient that a work is not a copy in order for it to be original, and the lines on a luggage label have been held to have sufficient content, although it would be unwise to gamble on work with content this low attracting copyright.

3D objects do not always qualify
Copyright can protect 3D objects that are "artistic" such as sculptures, architecture, and "works of artistic craftsmanship" such as bespoke jewellery. It does not cover other three-dimensional objects.

Ideas
Copyright does not generally protect ideas, only the expression of those ideas. It is an excellent way of protecting literary masterpieces, but is less satisfactory for protecting works such as computer programs, where the concepts are often more important than the way in which they are expressed.

Infringement
Copyright is infringed if a person copies, adapts, sells copies, lends copies, performs or broadcasts a substantial part of the work. There are other activities that would infringe but they cover more specific situations. The requirement of copying means that if somebody creates an identical work independently - without copying - there will be no infringement. There are exceptions to infringement, such as research, private study and certain educational use.

Moral rights
These rights are held by human authors of copyright, who have the right to be identified as the author, and to object if somebody treats the work in a derogatory manner. There are no moral rights in relation to a computer program. Moral rights are not transferable; they may only be waived.

Term
It varies. It generally lasts for the life of the author plus 70 years in the case of literary, dramatic and artistic works. It lasts 50 years in the case of computer-generated works, films and musical recordings.

Formalities
It is not registrable in the United Kingdom, although it is in some jurisdictions (for example, the US for certain purposes).

Advantages

Disadvantages

DATABASE RIGHT

UK Nature of right
A database is a collection of independent works, data or other materials that are arranged in a systematic or methodical way and are individually accessible by electronic or other means. In order to be protected, a database must be original and there must have been substantial investment in obtaining, verifying or presenting the contents of the database.

Databases may also be protected by copyright if "by reason of the selection or arrangement of the contents of the database, the database constitutes the author's own intellectual creation".

Term
15 years from completion or, if earlier, when made available to the public.

Infringement
Extracting or re-utilising all or a substantial part of the contents of the database.

Formalities of Protection
None.

Advantages

Disadvantage

UK REGISTERED DESIGNS

Nature of Right
Registered designs protect the appearance of the whole or part of a product resulting from the certain features such as the lines, contours, shapes, texture, materials or ornamentation. The product may be a handcraft item, packaging, "get-up", graphic symbols or a part which is intended to be assembled into a larger product.

Exclusions:
The following are excluded from protection:

The design must also be new, and must have individual character. There are rules for determining what is "new", and what has "individual character", but it is not possible to go into them now. In many cases designs will still be "new" even if they have been disclosed in the preceding 12 months.

Infringement
There is no need to prove copying. A design will infringe the right even if the design has been created independently.

Term
Maximum 25 years.

Formalities of Protection:
Application with specification of design submitted.

Advantage

Disadvantage:

UK DESIGN RIGHT

Nature of Right
This right protects any aspect of the shape or configuration of the whole or part of a three dimensional object. There is no need for eye-appeal.

Exclusions
As with registered designs, there are a number of exclusions. Methods or principles of construction are excluded, as are surface decoration, and features of shape or configuration which enable the article to be placed in, around or against another article, or which are dependent on the appearance of another article of which the design is intended to form an integral part.

Term
15 years after first recording of the design in a design document, or the first making of an article to the design (whichever is earlier) or, if articles are legitimately marketed within the first five years of recording or making, then the duration is ten years from the end of the calendar year of the first sale or hire.

Infringement
Design right is infringed by making articles to the design or by making a design document recording the design for the purpose of making an infringing article.

Formalities of Protection
None.

Advantages
Free and immediate protection.

Disadvantages
Can be circumvented by independent creation and currently this is a UK right which may not be recognised overseas.

COMMUNITY DESIGNS

Registered Community designs are the same as UK registered designs except for the fact that their geographic scope extends to the entire EU and they are registered through the same office as the Community Trade Mark. Some of the rules for ownership are also different.
Unregistered Community Designs need to fulfil the same criteria, although they do not require registration and only come into being when goods made to the design are first made available to the public in the EU. They last for 3 years from that date.

RIGHTS PROTECTING IDEAS

PATENTS

Nature of the Right
A patent awards a limited monopoly right to an inventor in exchange for disclosure of the details of an invention. In order to be patentable, an invention must:

Novelty
In the UK, in countries that are signatories to the European Patent Convention, and any other industrialised countries, there is a requirement of novelty. That is to say that inventions are not generally patentable if they have been disclosed to anybody who is not under an obligation to keep confidential the information disclosed. The information need not be disclosed by the inventor; disclosure anywhere in the world by somebody else can lead to a patent being held invalid.

Inventive Step
The invention must involve an inventive step. The yardstick by which this is measured is whether or not it would be obvious to a notional skilled worker in the relevant field of the invention, who has a good knowledge of the "state of the art" (all recent developments in the field) but who has no imagination.

Industrial Application
The invention has to be capable of industrial application - being made or used in some kind of industry.

Infringement
A patent is infringed by making (or using a process to make) articles and using, selling or importing them. It is also possible to infringe by supplying means relating to an essential element of the invention for putting the invention into effect.

Formalities of Protection
The application must eventually contain:

Advantages

Disadvantages

CONFIDENTIAL INFORMATION

Nature of Right
The protection of confidential information can be contractual, or it may be implied by law. In view of the uncertainty surrounding implied protection, it is preferable to enter into a confidentiality agreement or to have a confidentiality clause in a contract, rather than relying on implied rights.

Obligation of Confidence
For an obligation of confidence to be implied, the information which it is to cover must firstly have the necessary quality of confidence. That is, it must not be generally available to the public, must be clearly identifiable and valuable. A wide variety of information can be protected in this way, including trade secrets, manufacturing procedures, customer lists and personal confidences but not "trivial title tattle".

Infringement
There must be unauthorised use.

Advantages

Disadvantages