An understanding of Intellectual Property (IP) and its protection is vital for anyone with an idea, whether it’s a business, an invention, a brand name or a work of art.
‘How To | Protect Your IP’, a guide by Carbon Commercial and IP Partner Viviana Mucharraz, is designed to introduce you to the different types of IP and to understand which ones may apply to you, your business or business idea, helping to identify any existing or potential IP assets.
We’ll walk you through some of the key steps you need to take in order to protect your assets, profit from them, and add value to your business.
In short, Intellectual Property (IP) is the protection of creativity and innovation.
We live in an age of innovation. Scientific advances, tech developments and new business models are radically changing our lives every day. In fact, to a large extent, we can thank IP rights and the laws that protect them for this continuous stream of innovation.
When a business invests its time and money developing a new idea or pursuing a creative endeavour, it’s taking a risk. To encourage innovation and the sharing of new ideas despite these risks, IP law rewards risk-takers with exclusive rights to use and profit from their creation for a defined period.
There are various types of IP that can apply to ideas, products, services, creations, procedures and information. It’s very important to define which type(s) of IP protection you need to cover your whole business to add value to it, and prevent potential issues.
There are three types of IP you can ‘Register’. Registration gives you exclusive rights to exploit your trade mark, design or patent and allows you to stop others from using it without your permission.
Trademarks are the signs that distinguish your goods or services from those of your competitors.
Usually trademarks take the form of words or logos however in the UK and the EU is possible to protect more unusual forms of trademarks such as colours, slogans, three-dimensional shapes, holograms, sounds and even smells.
These may be registered or unregistered.
Unregistered trademarks may be enforced in certain circumstances under the law of ‘passing off’; however, registered trademarks offer the best protection since their enforcement is more straightforward and less costly than enforcing unregistered rights.
Trademark rights are territorial in nature which means they take effect only in the jurisdictions in which they are registered. Therefore, you should think carefully about the territories in which you require protection considering your commercial objectives and expansion plans, aligning your IP strategy with your broader commercial strategy.
There are a number of requirements for trademarks to be able to be registered (absolute grounds for refusal); the main ones are for trademarks to be distinctive and non-descriptive.
Trademarks should also be sufficiently different from those of competitors providing the same or similar products or services (relative grounds). Therefore, prior to using or applying for a new trademark, it is advisable to engage a trademark attorney to conduct a clearance search to identify any identical or confusingly similar trademarks already in existence which are likely to create obstacles to the use or registration of your trademark.
In the UK and the EU, a trademark registration lasts ten years and it can be renewed indefinitely.
You can find more information on the steps, requirements and fees to register a trademark here.
Design rights protect the overall visual appearance of a product or part of it – the shape, configuration or appearance. Design law is intended to stop other people making products which are a ‘copy’ of an original design or create the same overall impression as the original design.
Until now, there are four different types of design rights that coexist in the UK; each of the them are different in terms of qualifying criteria, scope and duration of protection:
UK REGISTERED DESIGNS. AND REGISTERED COMMUNITY DESIGNS (RCDs).
Registered designs last up to 25 years from the date of registration, subject to renewal every five years.
RCDs are in force across entire EU while UK registered designs are enforceable only in the UK.
UNREGISTERED COMMUNITY DESIGNS. (UCDs)
These are in force across entire EU. UCDs arise automatically in respect of designs that are new, have individual character and have been made available to the public within the EU (qualifying designs). They last for three years from the date the design was first made available to the public in the EU.
UK UNREGISTERED DESIGN RIGHT.
These are commonly known as ‘Design Right’. Design Right is also an automatic right but it only protects the shape and/or configuration of the whole or part of an article. Therefore, Design Right would not cover design features such as a pattern, like in the case of UK registered designs, RCDs or UCDs – only three-dimensional features are covered.
Design Right arises automatically (for qualifying designs) once they have been recorded in a design document or an article has been made to the design and it lasts for:
- 15 years from the end of the year in which the design was first recorded or made into an article, or
- 10 years from the end of the year in which articles made to the design were first sold or leased anywhere in the world.
You can find more information on the steps, requirements and fees to register a design here.
A patent is a form of property which protects certain types of technical innovations – inventions, the process of how something works or the method of making it.
A patent is a document which sets out the invention and is registered at an intellectual property office or patent office in a particular country. A patent document has two main parts:
- The Specification – A written description of how the invention works, usually accompanied by some diagrams to explain it in more detail
- The Claim – Numbered paragraphs which state what the owner of the patent ‘claims’ is the invention over which it wants protection
If you have spent time and money developing new technology, you should protect it. This can be done in two different ways: by keeping it secret – ie protect is as a trade secret or know-how (if it cannot be reverse engineered) – or by registering it as a patent.
The reward for disclosing an invention in a patent document in the UK is 20 years of exclusivity in the marketplace, during which time the patent owner (the patentee) can prevent others from using the patented technology so, if necessary, the patentee can apply for an injunction to prevent or stop infringing activities.
Where an infringing act has taken place during this period the patentee may be entitled to compensation from the infringer, eg by way of damages. After this period of time, the patent expires, and the technology becomes public property which can be used freely by others.
The main thing to do if you think you have an invention that could lead to a patent, is to keep it confidential. Spreading the word about a potential invention (even within the company) can lead to it being unpatentable. This is because the main requirement of patentability is ‘novelty’. According to patent law in the UK, if even one person who is not bound by confidentiality obligations knows about the invention (eg from a non-confidential document or other communication), this destroys the novelty of the invention.
It is therefore advisable to enter into non-disclosure agreements with everybody who is or will be privy to any information related to the invention.
In the UK it’s possible to protect designs, trademarks or ideas even without registered rights; however, the enforcement of unregistered rights places a heavy and expensive evidential burden on the claimant. Therefore, where registration is possible, it is always advisable.
You can find more information on the steps, requirements and fees to apply for a patent here.
Protects the authorship of artistic or literary expression. It does not protect ideas but rather the work itself fixed in a tangible hard copy. Ideas not fixed into a tangible permanent form may be protected by the law of confidence – eg through a non-disclosure agreement or confidentiality clauses.
Copyright recognises the intellectual creation of an author when a work is created. It arises automatically on creation, provided that a work is sufficiently original. ‘Originality’ requires that the work is the ‘intellectual creation of an author’ and not a copy of somebody else’s work.
Although it doesn’t need registration, copyright needs to be claimed and recorded in order to protect your work.
The subject matter must be expressed in a permanent form such as in writing, in a film, in a broadcast, on a computer or as a recording.
In the UK, the categories of copyright works are:
- Original literary, dramatic, musical and artistic
- Film, sound recordings and broadcasts
- Typographical arrangements
Many works may benefit from multiple types of copyright.
In the UK copyright normally lasts for the life of the author (if joint, the last surviving author) plus 70 years; however, specific rules apply to broadcasts, computer generated works, sound recordings and films.
It is advisable to place copyright notices on any original work intended to be protected by copyright. A copyright notice informs the public that the work is protected by copyright, identifies the copyright owner, and shows the year of first publication; and therefore it may assist the copyright owner if the work is infringed, as it provides evidence of publication and ownership and may limit the claim of the defence of innocent infringement.
For more information on what is copyright and how you can protect it, visit the copyright section of the UK Intellectual Property Office website.
Protects valuable information such as technical or practical knowledge about your business operations or procedures which are not readily available to the public. This may result from research or experience and usually relates to the way something is done.
Highly confidential ‘Know How’ is known as a Trade Secret.
Although you cannot register it, you should protect it by a well-drafted legal agreement.
This information can be recorded in any form or even just held in the memory of, for example an inventor or key employee.
Because know-how is not always written down, it can be difficult to define; however, Article 1 of Regulation (EU) 316/2014, the Technology Transfer Block Exemption Regulation defines it as a “package of practical information, resulting from experience and testing”, which must be:
- Secret. Not generally known or easily accessible;
- Substantial. Significant and useful (for the production of the contract products); and,
- Identified. Described in a sufficiently comprehensive manner, to make it possible to verify that it fulfils the criteria of secrecy and substantiality.
Know-how may be protected by an obligation of confidentiality arising either under equitable common law principles (eg imparted in a ‘situation imposing an obligation of confidence’) or because of a specific contractual term or agreement.
Know-how rights may continue indefinitely as long as the obligation of confidentiality is preserved.
A brand can be built by a mix of various types of IP that conform a business IP portfolio.
Brands have their own value. The market leadership and profitability of a certain product, service or business is realized through its brand value.
Many of world’s largest companies have built their success on well-protected IP portfolios. Google’s search algorithms, McDonalds’s franchise trademarks, Coca-Cola’s secret recipe and Sony’s back catalogue of the Beatles, are all forms of protected IP.
Recording, protecting and enforcing your IP would allow you to build and strengthen the brand value of your business.
IP management | Infringement & defence.
Often infringement claims and registration challenges are time sensitive. The courts and registries take a dim view of passive rights holder, who sit back and do nothing while an unwitting infringer continues to invest in an infringement.
To maximise the benefit of your IP, it is crucial to actively monitor new registrations and be wary of potential infringements.
In some cases, your IP protection may span wider than you think. Copyright, for example, prevents others, not only from directly copying your protected works, but also from issuing, renting, performing, communicating or adapting works. Trademark infringement can occur in circumstances where two trademarks are merely similar (as opposed to identical), if there is also a likelihood of confusion, unfair advantage or detriment to your existing reputation.
Infringement may be either direct (in the form of someone blatantly copying or taking advantage of your IP) or indirect (if for example a website or store is unwittingly selling an infringing product).
Litigation should generally be considered a last resort. As a first step, you should endeavour to resolve the claim amicably and enter into a settlement which will include the infringer providing a legal undertaking confirming that they will cease acts of infringement.
Failing this, the courts have wide powers in IP cases to issue restraining injunctions, order infringing products are delivered up or destroyed and to provide damages, an account of profits and legal costs.
We can advise on the strengths and weaknesses of any potential claim you may have and the most appropriate jurisdiction and means of resolving the dispute.
IP rights are limited and there are many exceptions to an infringement claim for a legitimate use. The unfortunate reality is that big businesses often try to enforce their rights beyond legal limits with intimidation and threats of legal action.
If a you are being threatened with IP action or are unsure about any steps your business plans to take, we can provide you with comprehensive advice, so that you can recognise genuine claims and don’t take unnecessary risks.
UK law prohibits certain types of groundless IP threats and it may be appropriate to issue a counterclaim against a bullying, alleged-rights holder and seek a declaration of non-infringement.
If you have identified intellectual property assets at the core of your business from which you intend to generate income and add value to your business – for example through licensing or franchising, differentiate from your competitors and stop others from using your inventions or creations without your permission, then you should protect your intellectual property straight away.
At Carbon, we offer quality advice with flexible fee structures to suit your business. We can provide fixed fee quotes for specific pieces of work, or if you’d rather have us on hand for general queries, we can also work on a retainer basis at very competitive rates.