Intellectual Property Solicitors

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.

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

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.