The term intellectual property (IP) refers to a variety of different types of legal rights. It can be quite confusing for business owners to know what IP rights they have, or what rights they should be seeking.
To make matters worse, terminology is often misused. It isn’t uncommon to read or hear about a company supposedly “copyrighting” a name or invention.
You might find it helpful to think of these four areas along the following lines: trade marks are elements of branding; patents protect inventions; copyright protects original expression; and design law protects the appearance of products.
Trade Marks – elements of branding:
A trade mark is a sign which distinguishes the goods or services of one trader from those of other traders. Trade marks most commonly take the form of brand names (e.g. “Nike”), logos (e.g. the Nike tick/swoosh), and slogans (e.g. “Just Do It”). However, it is also possible for e.g. the shape of goods or their packaging, colours, moving images or even sounds to act as trade marks.
The key requirement for a trade mark to be protected is that it is distinctive, such that consumers can rely on the mark to distinguish the owner’s goods/services from those of other traders. This generally won’t be the case where consumers are likely to perceive the sign as merely praising/promoting or describing goods/services (e.g. “delicious” for food products or “sports shoe” for trainers), or as a merely decorative feature (e.g. the colour of the packaging).
As brand recognition and loyalty is developed in a trade mark over time, it can become a very valuable asset. Obtaining appropriate protection for trade marks is important in order to protect this value and the brands the marks represent. Otherwise, third parties may be able to use the same or a similar trade mark in a manner which, for instance, confuses customers, diverts business, and/or damages the brand’s image. In very general terms, obtaining a trade mark registration in the UK/EU provides the owner with grounds for preventing the use and registration of a later conflicting mark, where the use of the later mark would confuse consumers or (if the registered mark is well-known) would take unfair advantage of, or damage, the reputation or distinctive character of the registered mark. Trade marks may also be protected by certain laws even if they are not registered, for instance under the law of passing off in the UK. A trade mark registration can last forever, provided it is periodically renewed (every 10 years in the UK/EU).
Patents – inventions:
Patents protect new inventions. For instance, patents can be obtained for new chemical compositions, pharmaceuticals, antibodies, machinery and electronics. The invention must be something that can be made or used. The invention must be new, i.e. the details necessary to put the invention into effect must not already have been publicly available. The invention must also involve an inventive step. This means that the invention must not have already been obvious to people skilled in the relevant technical field. Also, certain categories of subject matter are excluded from patent protection.
The owner of a patent can generally prevent others from using, making, selling or importing the invention, for a limited period of time (up to 20 years in the UK). This can be very valuable from a commercial perspective, in terms of potential licensing revenue and/or obtaining a competitive advantage. In order to obtain a patent in any given country/region, it is necessary to file a patent application. A patent application is typically a highly technical document, explaining the invention in detail and setting out the claims which define the invention.
Copyright – original expression:
Copyright law primarily protects original expression in literary, dramatic, musical and artistic “works”. This includes things such as novels, software, plays, films, songs, paintings, photographs and sculptures.
Certain protection is available to a copyright owner to stop others copying or adapting their work, issuing or renting or lending copies, performing or playing or showing the work in public, or otherwise communicating the work to the public (depending on the type of work). Having control over the work in this way enables the copyright owner to monetise its use and exploitation. Protection is only available when there has been copying of the original expression, e.g. by way of inspiration or appropriation (even if this was indirect or unconscious). Various defences are available to allow certain permitted uses of copyright works. Copyright law also provides protection for sound and film recordings, broadcasts, and the typographical arrangement of published editions. There are also various “related rights”, e.g. for performers.
In the UK, copyright protection arises automatically, without the need for registration, and copyright in literary, dramatic, musical and artistic works lasts for the life of its creator, plus 70 years from the end of the year in which they died.
Designs – the appearance of products:
The law of registered designs protects the appearance of products (and parts of products). This includes consumer goods and industrial articles, but also e.g. packaging and graphic symbols. Design protection enables businesses to protect the unique appearance of their “products”. Roughly speaking, the owner of a registered design can prevent the use of later designs which convey the same overall impression. Registered design protection is not available for product features chosen solely for performing a technical function, nor which are necessary in order for the product to fit or connect with another product so that either can function. Registered design protection is obtained by filing an application in each country/region of interest, and can last up to 25 years in the UK/EU. A design will only be validly registered in the UK/EU if it is sufficiently different to earlier designs, and provided it has not already been publicly disclosed. However, once you have disclosed your own design to the public, there is a grace period of one year for filing a design application.
Unregistered design protection is available in the EU or UK for a period of 3 years from the disclosure of a design in the EU or UK respectively, which gives the owner the right to prevent unauthorised copying of the design. In the UK, another form of unregistered design protection (which arises automatically upon creation of the design) is also available for up to 15 years, which gives the owner the right to prevent unauthorised copying of the original shape and/or configuration of an article (or part of an article).
If you require advice or assistance in relation to obtaining or enforcing IP rights, contact a Chartered Trade Mark Attorney or Chartered Patent Attorney.
This article first appeared on the CITMA website.
