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Intellectual Property Solicitors

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Services for Intellectual Property

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Intellectual property law in the UK is a complex area and depending on the products and services that your business provides, there are a series of intellectual property rights that you may either automatically hold on creation or following active steps to obtain intellectual property protection. Our guide to intellectual property rights discusses each intellectual property right, how it arises, and the protection afforded to the holder. In the United Kingdom, the most common forms of intellectual property rights are as follows:

Trade marks - these can be protected on a registered or an unregistered basis;
Copyright;
Designs;
Patents; and
Confidential Information and trade secrets.

Whether you are a small business that has recently started trading or have been established in your industry for several years, it is always worth considering how you can protect - and later exploit - the intellectual property rights that your business owns. It is estimated that up to 80% of the value in a business can be found in its intellectual property, and having appropriate registrations and licensing arrangements prevents the likelihood of third parties copying your products and services, but also increases the chances of third party investments in your business or franchising opportunities in the future.

As Intellectual Property rights often tie in with other Information Technology policies and agreements, we also offer a range of other services for your business. Click here to see our IT services.

Additional Information

Trade Marks

Protect brand names and/or logos for your business and its goods and services.

Registered Trade Marks:

Allows you to put the ®symbol next to your brand.
Grant an exclusive right to the trade mark and can use this to oppose third parties from using or seeking to register an infringing trade mark.
It is obtained in the UK through registration with the Intellectual Property Office ("IPO") and internationally through similar governing bodies and can last indefinitely subject to compliance with the payment of trade mark fees and continued use.

If you would like further information regarding trade mark registrations and oppositions, please click here.

Unregistered Trade Marks:

The Trade Marks Act 1994 contains a series of absolute grounds, which preclude the registration of trade marks that are of a descriptive nature or those trade marks that lack distinctiveness and cannot be distinguished from the goods/services in question.

Should registration of your trade mark not be possible, then you may still use the trade mark on an unregistered basis (providing that a third party has not obtained registration for a similar or identical trade mark, or otherwise has acquired goodwill in the trade mark).

Unregistered trade marks and the goodwill that is held in a business can be protected and enforced against a third party infringer under the tort of passing off, under which a claim will be successful if the following can be established:

a) there is a goodwill attached to the goods and/or services that are offered by the innocent party;

b) a misrepresentation has occurred (whether innocent or not) by the guilty party that it is the provider of such goods and/or services; and

c) loss or damage has been caused to the innocent party as a result of the guilty party's misrepresentation.

If you would like further information regarding unregistered trade marks and bringing or defending passing off claims, please click here.

Copyright

Under the Copyright, Designs and Patents Act 1988 copyright protection is available for artistic works (for example, paintings, engravings, photographs, architectural designs, logos, technical drawings etc.), literary works (for example, instruction manuals, computer programs and some types of database), broadcasts, dramatic works, recorded works etc.

Unlike many of the other forms of intellectual property, there is no registration procedure for copyright; instead, once the work is fixed (i.e. in writing, recorded or otherwise), copyright protection automatically arises.

This does not offer a monopoly right as a trade mark does, however the existence of copyright protection prevents the unauthorised copying and publication of your copyrighted works by a third party (including any secondary infringements that may take place as a result of this primary infringement)

Subject to some exceptions, copyright protection expires at the end of the period of 70 years from the calendar year in which the author dies (note that the author of the works may not necessarily be the owner of the copyrighted works, should works have been commissioned during the course of their employment).

Once copyright protection has been established, in order to protect the copyrighted works and prevent third parties from copying the same, businesses commonly mark the copyrighted works with the © symbol, their name, and the year in which the works were created.

Design Rights

Design rights protect the shape and configuration of the whole or part of an original object and seek to prevent third parties from copying that appearance.

Under the Copyright, Designs and Patents Act 1988, certain designs are automatically protected on an unregistered basis upon their creation; however, in some instances it is also advisable to obtain registration (under the Registered Designs Act 1949, as amended), in order to prevent third parties from copying your products.

Registered Designs:

These provide the holder with an exclusive monopoly right to use and exploit the design and bring an infringement claim against a third party that infringes this right.

Exist for a period of 25 years post-registration, which is significantly longer than the protection afforded to unregistered designs, as below.

It is obtained in the UK through registration at the IPO and internationally through similar governing bodies.

Unregistered Designs:

This protects three dimensional shapes comprising the whole or part of an article, such as the configuration of an original product that you may manufacture (note that in this regard, there is an overlap with the rights afforded under copyright laws).

The owner of an unregistered design right has the exclusive right to reproduce the design for commercial purposes by making articles to that design or a design document recording the design for the purpose of enabling such articles to be made.

Primary infringement by a third party occurs where it carries out - or authorises a third party to carry out - an act which is an exclusive right of the owner (i.e. by making designs which are an identical copy of the owner's designs).

There is no registration required and the right arises automatically from when the designs were recorded or made available for sale or hire.

In most cases, unregistered design rights last for a period of 10 years from the end of the calendar year in which the designs were made available for sale or hire.

Patents

A patent provides the inventor of a unique and original product or process the monopoly right to prevent third parties from making and selling the same invention without permission.

In the UK, patents are obtained through registration with the IPO, and have a duration of 20 years from their filing date, providing that annual renewal fees are paid and the patent is not subject to invalidation proceedings.

Under the Patents Act 1977, in order for registration to be obtained, it must be established that the patent is new, involves an inventive step, is capable of industrial application, and it is not specifically excluded from protection as a patent (exclusions include surgical techniques carried out on the human body, inventions which would, if exploited, promote anti-social behaviour, and plant or animal varieties.

Confidential Information

It is widely established that should an individual or entity receive confidential information in confidence, they cannot take advantage of it, unless they are expressly authorised to do so.

In order information to be protected under the common law of confidentiality, the following three-stage test must first be satisfied:

a) The information itself must have the necessary quality of confidence (here, factors to consider are whether the information relates to a trade secret and whether it is already in the public domain);

b) The information must have been imparted in circumstances imposing an obligation of confidence (such as during contractual negotiations, whereby parties commonly exchange information relating to trading practices and product specifications, or during the course of an employee's employment); and

c) There must be an unauthorised use of that confidential information to the detriment of the holder.

It is not necessary to obtain registration for your confidential information (unless, of course, such also comprises the aforementioned registerable intellectual property rights, for which registration would be advisable), and such rights last indefinitely, subject to authorised disclosure.

In order to ensure that your confidential information is adequately protected, we would recommend that your commercial and employment contracts contain appropriate restrictions on when your confidential information can and cannot be used or disclosed by the contracting third party. Alternatively, you can implement a confidentiality agreement or non-disclosure agreement where there is no more formal legal contract governing the relationship.

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FAQs

What is intellectual property?

Intellectual property (IP) is essentially creations of the mind, which can be anything from inventions to designs, names to symbols and images or artistic works to music. These are all things that are unique to the creator, and whoever created them is the owner, but for some types of intellectual property rights, action is needed to ensure that this is the case in law.

What does intellectual property mean for a business?

For a business, intellectual property can include a wide range of different assets and could potentially be key to the success of that company and what they offer to customers. Intellectual property for businesses can include areas such as:

Copyright
Trade marks
Patents
Design rights
Trade secrets and other confidential information.

What are the options available to me to protect my business' brand?

There are various protections available for the different forms of intellectual property. The following is a brief summary of these protections.

Trade marks

Protect brand names and/or logos for goods and services
It grants an exclusive right to the trade mark
It is obtained through registration with the Intellectual Property Office ("IPO") and can last indefinitely subject to compliance with the payment of trade mark fees

Copyright

This protects artistic work, for example, literacy, dramatic, musical, photographs etc
This does not offer a monopoly right as a trade mark does, however it prevents copying
There is no registration procedure involved, copyright arises automatically
It lasts for 70 years from death

Registered Design Right

This affords protection to new designs for consumer items
It is a monopoly right
It is obtained through registration at the IPO
It last 25 years from registration

Unregistered Design Right

This protects three dimensional shapes
This prevents copying
There is no registration required and the right arises automatically
It last approximately 10 years in most cases

Patents

This protects new inventions
It is a monopoly right
It is obtained through registration with the IPO
Lasts 20 years from application

Confidential Information

This protects secret information
It protects against unauthorised disclosure
There is no registration required and it arises automatically
It lasts indefinitely subject to authorised disclosure

Database Right

This protects a collection of information
This protects against unauthorised copying
It arises automatically and there is no registration
This lasts for 15 years from the creation of the database

When can I obtain copyright?

Copyright protects creative output so long as the artistic work, be it graphic, literary, dramatic or musical are original and substantial enough to amount to a 'work'. The protection of copyright arises automatically as soon as the artistic work has been created.

How to protect intellectual property

It's important to take specialist legal advice when it comes to your company's intellectual property to ensure that everything that needs to be is adequately protected. It can be a complex area of law and proving IP can be difficult if certain paths are not followed in the right order and at the right time. For this reason, it's important to consult the experts in IP.

What are intellectual property rights?

Intellectual property rights are a bundle of legal rights afforded to the creator or owner (note that with various forms of intellectual property right, the default position is that the owner is the employer of the creator) of works that require human creativity. At its most basic, this may be a design and/or copyright that may subsist in a creative and original product design. Intellectual property rights protect the property created by you, giving you exclusive rights to use the intellectual property and the freedom to choose how to use your intellectual property.

Due to the exclusivity that attaches to most intellectual property rights (such as having an exclusive right to use a registered trade mark for the goods and services that it covers), you can also capitalise on your intellectual property in numerous ways, which includes using them in the course of your business to obtain a competitive edge, or by licensing otherwise assigning (transferring) the intellectual property in return for payment.

Do you really require an intellectual property solicitor?

Any intellectual property which is particularly valuable for your business should be protected to the greatest extent possible. If you're unsure whether it's worth protecting your intellectual property, we recommend you consult with one of our intellectual property solicitors who will be able to advise you correctly on how to do so.

If you are also looking to enter into an agreement in which intellectual property is involved (such as selling your business, licensing a right to use your brand name or product designs, entering a joint venture or franchising agreement, whether as a franchisor or a franchisee) it is essential to seek advice from an intellectual property solicitor as they can advise you on how to protect your intellectual property and secure the best possible commercial agreement for you. Our intellectual property solicitors will be able to adequately protect your commercial interests and draft the relevant agreements correctly following consultations with you.

How to get intellectual property rights

There are different ways to obtain intellectual property rights on behalf of your business, depending on the form that the IP takes and what proof is available that it belongs to you. This area of the law can be complicated, so it's important to seek expert advice from intellectual property lawyers if you are not familiar with the process involved.

A good IP solicitor will help you at every stage with your application(s) for intellectual property rights and also the best course of action if your ownership is challenged.

What brands can I trade mark?

To register brand names or logos as trade marks the marks must firstly be capable of being graphically represented and must be distinctive enough to distinguish the goods of one undertaking from another.

A mark will be refused by the IPO if it consists exclusively of words designating the quality, quantity, purpose, geographical origin or common trade terms of the product or services (unless constant use has already made the mark distinctive). The IPO will also refuse marks that are likely to deceive the public as to what the products are or can actually do or other marks that are against public policy.

Other businesses may object to a trade mark if it is identical or similar to their own mark, especially if the mark will be used for promoting similar goods or services.

How do I protect my new idea for an invention or process?

A patent can be obtained to protect your rights to a new invention. If a patent is granted, the inventor will get a monopoly over use of the invention for generally 20 years.

The filing of a patent with the IPO is a crucial step as the protection is granted to the first person to file for the patent, not the first person to invent. In order to obtain a patent from the IPO the invention must be 'new', constitute an 'inventive step' and be capable of 'industrial application'. To be 'new' the invention cannot have been disclosed to the general public before the filing of the patent application. To be an 'inventive step' the invention must show thinking not obvious to a skilled person in that particular area, whilst 'industrial application' simply means that it is possible to make the product or carry out the process.

How to sell intellectual property?

There are many reasons why a business may want to sell intellectual property rather than using it themselves. This means that you would be paid for the IP that you sell, which can be appealing if you are not currently in the position to, or simply are not inclined to, use this IP for yourself.

There can be complexities when it comes to selling intellectual property so it's important to consult an experienced IP lawyer so that your interests are protected appropriately. For example, it may be possible to negotiate future or ongoing payments in connection with the IP that you are selling if it makes the buyer a considerable sum of money. A good intellectual property solicitor will help you to value your IP and ensure that you are represented effectively during the sale negotiations.

What about my business' reputation? Can that be protected?

The best way to protect a business' reputation is through the use of a trade mark. Trade marks protect the logos and brand marks of a business to which the business' reputation is attached and prevent other businesses from using the same or similar marks.

In addition to or in the absence of a trade mark a business may fall back on the common law concept of 'passing off'. This prevents other businesses from presenting their goods or services as the goods or services of your business and making unfair use of your business' reputation.

To succeed with a passing off claim it is first necessary to show that your goods or services have a reputation amongst customers and that this reputation is linked to a distinctive feature of the goods or services, such as a name or a packaging style. Once a reputation can be shown, passing off can be established if the other business is found to be using a similar feature which results in the customers actually being fooled as to the origin of the products and which is likely to damage either your profit or business' reputation.

Can I keep the secrets of my trade confidential?

The best means of protecting information considered to be confidential is to enter into an express agreement with a business partner or employees or anyone else that will be granted access to the information. With employees, confidentiality clauses can be included in their service contracts to ensure that information regarded as confidential cannot be exploited to your disadvantage either during their employment or for a period after their employment.

Without an express agreement the law still considers certain trade secrets and information to be confidential and remedies can be sought to prevent disclosure or to compensate for damage caused through disclosure.