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Intellectual property law 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 right are as follows:
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.
Protect brand names and/or logos for your business and its goods and services.
Registered Trade Marks:
If you would like further information regarding trade mark registrations and oppositions, please click here.
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.
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 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.
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.
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.
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.
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.
The success of many businesses is dependent upon the products of human intellect. It may be that a reputation is based upon a distinctive name, logo or product design. Alternatively a trade secret or a special manufacturing process may set your business apart from the others. Such 'intellectual property', as it is commonly known, is a valuable asset for your business and one that needs to be protected. Without such protection, other businesses may misuse your name and logo to the detriment of both your reputation and profit. The secrets of your trade or design features may be leaked and used by others so that a once distinctive product or process becomes commonplace.
There are various protections available for the different forms of intellectual property. The following is a brief summary of these protections.
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.
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.
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.
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.
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.
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