Over the next couple of weeks, IPcopy will be republishing some general introduction to IP articles that we prepared to present some topics, facts and issues from the area of intellectual property law for people who have had little or no contact with intellectual property. The articles are designed as (brief) primers to highlight some particular elements of the subject area.
Intellectual property (IP) can sometimes be overlooked. Intellectual assets are not tangible and, as such, can be difficult to value. Often, they are not taken into consideration properly when assessing the worth of a business. However, these assets can be the most important to a business, contributing significantly to its goodwill and reputation, and need to be protected properly.
IP breaks down into two basic categories; (1) IP rights that require registration, such as patents, trade marks, registered designs and domain names; and (2) IP rights that don’t require registration, such as copyright, unregistered design right, common law trade marks and know-how / confidential information. These different types of IP are directed towards protecting different things.
For example, the photographs and scripts appearing on your website will be subject of copyright protection automatically on creation; your business name may be subject of some common law trade mark protection and any new products to the market are likely to attract some unregistered design protection.
Being aware of these rights means that you are able to protect the products of your intellectual creativity and take action when these products are copied or used unfairly by your competitors. Equally, you can better use these assets to generate revenue for your business, for example, by licensing or assigning the assets for monetary consideration.
Brand Identity, Trade Marks and Goodwill
Trade marks relate to branding. If you’ve ever been involved in setting up a new company (with a new company name) or selling a product or service under a brand name then you have been dealing with trade marks. Trade marks are signs (like words and logos) that distinguish the goods and services of one business from another business in the marketplace. A business name can be a trade mark.
If you are an established business you are likely to have acquired goodwill in connection with your trade mark(s). Should a third party attempt to take advantage of this goodwill by misrepresenting that it is connected with your business, by, for example, using an identical or highly similar trade mark in connection with identical or similar trading activities, you may have a cause of action against the third party under the common law tort of “passing off”.
However, to succeed in challenging a third party under the law of passing off, it is necessary to submit significant evidence to establish that goodwill exists in the business conducted under the trade mark in question. This can be an expensive and time consuming exercise.
To avoid these issues, it is recommended that you apply to register the most important trade marks to your business (for example, your business name and logo) so that they become subject of trade mark registrations. Upon registration, you will be issued with a trade mark registration certificate, which is prima facie evidence of your rights in the trade mark. This avoids the need to submit detailed evidence of the use of the mark in order to challenge a third party infringer.
Registered trade mark protection can last indefinitely, subject to the renewal of the trade mark registration on a regular basis (usually every 10 years).
A patent is a legal right enabling the owner of the patent to stop someone else making use of an invention. Patents are generally associated with technical inventions but if you’ve ever developed something you think is new or solves a problem then you may have a patentable invention! It should also be appreciated that to be enforced, a patent needs to have granted.
A crucial point to bear in mind when considering patent protection is that the invention must not have been disclosed, for example by including details on your website, prior to the patent application being submitted. Any disclosures that you make become part of the ‘prior art’ and could be cited against you when your patent application is examined by the Patent Office. So, in a worst case scenario your own disclosures could preclude you from getting a patent through to grant.
Now, in some circumstances you may find yourself needing to disclose information to someone outside of your company, e.g. to an investor, to a developer etc. A confidentiality arrangement is vital in such circumstances but if possible, think about filing a patent application before you make the disclosure.
Please note that any discussions with a patent attorney regarding your invention prior to the filing of the patent application are confidential and do not count as ‘disclosures’.
Designs can attract both registered and unregistered protection. Designs protect the shape and visual appearance of a product and can cover both three dimensional products (such as a tablet computing device like an iPad®) or two dimensional designs, such as a pattern for application to a product, graphics, textiles and wallpaper.
The protection afforded by registration of a design is more comprehensive and enables the holder of a registration to take action against third parties without having to prove copying (proof of copying is necessary to establish the infringement of an unregistered design right).
Copyright is an unregistered right which arises automatically on the creation of a ‘copyright work’ in a tangible form (for example, a painting, musical recording, photograph) and enables you to prevent that work from being copied. It is not possible to ‘register’ a copyright in the majority of territories around the world although the US does allow for registration.
Copyright works must be original (i.e. not copied) and can include literary, dramatic, musical and artistic works, non-literary works (including web content and databases), sound and music recordings, films and television recordings, broadcasts and the layouts of published works.
It is a good idea to put third parties on notice of the existence of copyright in any of your copyright works (e.g. your website) by using the © symbol in conjunction with the year of creation of the work and your full business name.
If a work is created by an employee in the course of employment the copyright in the work will be owned by the employer. However, if you commission a piece of work (for example, a new logo), the copyright will be owned by the designer or artist in question and will need to be assigned to you formally as part of your commission agreement.
The Territorial Nature of IP Rights, Eligibility Criteria and Due Diligence Issues
There is certain eligibility criteria that must be fulfilled to obtain registered protection for your trade marks, designs and patents and it is recommended that you seek professional advice before submitting any applications, to ensure that your marks, products or inventions meet these criteria.
Indeed, IP rights such as patents, trade marks and registered designs are territorial and different eligibility criteria may exist in different territories. Nonetheless, it is important that protection is sought in all territories of core interest, for example, where you have a strong customer or manufacturing base, to ensure that you are able to take action against third parties engaging in unfair competition in those territories.
It is also important to appreciate that a failure to apply for protection of a trade mark, patent or design at an early stage may result in third parties obtaining earlier conflicting registered rights, which could prevent the exploitation of your IP in the territory in question.
Searches should be conducted prior to adopting a new trade mark, design or invention, to ensure that its use will not infringe any existing rights in the territories of interest to your business.
The subject of intellectual property is a complicated one but there’s plenty of free information available. For example check out the UK’s Intellectual Property Office website for more information on the above topics at https://www.gov.uk/intellectual-property-an-overview . We would also advise engaging with a patent or trade mark attorney as early as possible so an IP policy that is right for you can be developed.
This article was originally written for ETO Magazine and appeared in the January 2015 publication. Erotic Trade Only* is a monthly business to business magazine for the UK pleasure products sector.
* Oh, yes, that’s how we roll. Hey, IP is everywhere!