It is important to understand the difference between the various types of intellectual property, so you can consider how best to protect your rights.
Registered and unregistered intellectual property rights
IP rights generally fall into two categories: registered rights and unregistered rights.
Registered rights are granted by official bodies such as the UK Intellectual Property Office. Registered rights provide a monopoly, which means that, once registered (subject to their lawful challenge), the owner can stop other people from using the right without permission. Registered rights include patents, trade marks and registered design rights.
Unregistered rights arise automatically, giving protection against copying or use of the right, and include copyright, unregistered design rights, rights in unregistered trade marks and confidential information.
What is a patent?
Patents provide inventors with a legally protectable monopoly over their inventions and protect new and innovative technical features of products and processes. They last for a limited period (20 years in most countries).
To qualify for patent protection, an invention must be new, involve an innovative step, be capable of industrial application and not specifically excluded from protection.
To obtain a patent, an application for a patent needs to be filed, normally with the patent office of the country where the inventor works.
Patents can provide a high level of protection and are vital in some industries; this is clearly seen in the case of pharmaceutical companies, who invest heavily in research and development.
The process for registering a patent is not easy and can be expensive. It also exposes a product to competitors through public disclosure of the technology behind it without the competitor breaching the patent.
What are trademarks?
A trademark is a symbol, word or words used by a trader to distinguish its products or services from those of others.
A trademark can be a brand name, a logo, a trading style or even distinctive packaging. It can also consist of the shapes of products such as a bottle, as well as slogans and straplines.
Trademarks owners can apply for a Community trade mark (CTM) or a UK trademark. A UK registered trademark is only enforceable in the UK, whereas a CTM is enforceable throughout the EU. Each type of registration lasts ten years and is renewable for further ten-year periods.
It is also possible to register trademarks throughout the world, although it is advisable to initially register them in the countries where the goods or services are to be supplied.
To be registrable, a trademark must be distinctive, capable of being represented graphically, capable of distinguishing goods or services and not excluded by statute.
What is passing off?
Bringing a claim for passing off can be difficult and costly to prove. However, it may be used to enforce rights in an unregistered trademark to protect any goodwill in such mark. To bring a claim for passing off, it must be shown that the owner has a reputation in the mark, that a misrepresentation that could mislead the public has occurred and damage has been caused.
What is copyright?
Copyright automatically arises on the creation of original literary, dramatic, musical and artistic works and lasts for 70 years after the death of the author. The creator of the work is usually the first owner of the copyright in it.
Copyright protects against the copying of another’s work and the physical expression or representation of an idea, but it does not protect against independent development of the same idea.
Copyright ownership allows the owner to prevent the unauthorised use of the work, such as making copies or uploading the work to the internet.
What are design rights?
Design rights protect the appearance, shape and configuration of a product and can be registered or unregistered.
To have a registered design right, design owners can apply for a UK Registered Design mark or a Community Registered Design mark.
A registered design must meet certain criteria and must be novel, of individual character and not excluded by statute.
Protection lasts up to 25 years and the rights are renewed every 5 years. Registering a design is relatively low-cost and is appropriate for industries such as fashion where design is fundamental in recognising and selling the product.
If a design is registered, subject to meeting the criteria, it will have a right against copying. Protection is given at both the UK and EU level; however, the EU right is much broader, but only lasts for 3 years. The UK right gives 10 years’ worth of protection from when the product was first marketed.
Licensing and exploiting your IP
Identifying what IP you have and filing the appropriate applications for registration of your IP are only the first steps in protecting and exploiting your IP.
In exploiting your IP, it is vital that you do this in a safe and controlled manner to ensure that you have adequate protection and that your IP is not put to any unnecessary risk or exposure.
Our specialist IP Solicitors can advise on the range of documentation that you should put in place to best protect your interests, including:
- research and development agreements;
- IP assignments and licences;
- NDAs/confidentiality agreements.
For more information on IP please visit The Government Intellectual Property Office.
