Property
A Trademark is a unique symbol or word(s) used to represent a business or its products, and over time trademarks become synonymous with a company name, so that you don’t even need to see the name to recognise a particular business. This is different to copyright, as a copyright work is not registerable in the UK. Trade Marks can be either registered or unregistered.
Often people refer to trademarks as badges of origin, the World Intellectual Property Organisation describes a trademark as, “A sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights”. So why are trademarks important, and why do people often choose a specific brand over other brands? People will usually associate quality, better taste, better impression, etc. Of a product by branding.
A trademark used to be used solely for a single word or logo and consider how popular the image of the brand is. Everyone is capable of visualizing their image and logo, but if you were to have two different boxes of chocolates, most people are likely to consider their own choice as better, as they will associate quality with the brand.
How long do trademarks last?
A trademark gives absolute protection due to its registered status, and you can register a trademark to last forever, however it does need to be re-registered every 10 years.
Trademarks no longer only count as a single word and/or logo. About 20 years ago, due to an EU protection escalation, you are now able to protect a variety of other aspects through trademark protection. So, for example, a shape, smell (perfume companies lobbied for inclusion on brand identity), or even sounds can all be registered as trademarks to strengthen recognition and brand protection.
Why do you have different classes for trademark registration?
There are forty-five different classes in which you can register trademarks. However, you have to pay a separate fee to register in each class. So, a brand would usually only register in the classes they identify or will need. All these only need to be registered trademarks in their own sector class, as they are not in a competitive market with each other.
What are the restrictions to registering trademarks?
You cannot get a trademark for using descriptive terminology of the product in the name. For example, there was a glue company who tried to gain a trade mark for the name Destock. It was declined due to it sounding like the action of the product (does-stick).
You cannot register a trademark if someone is already registered in the same class with the same name. And you cannot register a trade mark if you are attempting to associate your name or product with another organisation, such as the Olympics, or Royalty, or using geographical areas e.g. Cheddar cheese.
Can you register trademarks in different territories?
Trademarks are territorial, so you would need to register your trademark in each territory in which you wish to have a presence or sell goods. If you register your brand in the UK, you will only have trademark protection in the UK, and the IPO has converted all community trademarks to UK trademarks, so now you need to register your trademark in individual EU countries.
If you wish to register your trademark in a variety of territories, such as UK, US, Asia, you will firstly make an application to the UK IPO, then by using the international treaty called the Madrid Protocol, you will apply to the WIPO to send your trademark to be registered in each territory.
Some trademarks tips and guidance:
· A trademark needs to be used to continue to be valid.
· A trademark doesn’t hold as much weight if it becomes diluted due to becoming a public generic term (for instance Hoover was a brand of vacuum, now people often use ‘hoover’ as the action, irrelevant of which brand of vacuum they use).
When seeking a trademark, you first apply online, and they will then:
· Examine applicability (check to see if anyone else has a registered trademark the same as yours), and only will you then gain registration in principle.
· A trade mark granted is published In the London Gazette and they will advertise to see if anyone else has that trade mark in use.
· There is a 3-month period to wait for any opposition to the trade mark.
· Your registered trade mark can be attacked if you do not use it for 3 years or it was already in use.
What is trademark infringement? As there is detailed information in the Trademark Act, you infringe a trade mark by:
· Having the same or similar trademark.
· Having the same trade mark in the same class.
· If you reproduce someone else’s trade mark.
· If you bring down the reputation of another trade mark.
What are the penalties for trademark infringement?
It is possible to get up to 10 year's imprisonment for trademark infringement, and it carries the highest criminal offence in IP infringement, even more so than copyright.
Although most of the time trademarks are registered rights, it is possible to have an unregistered trademark. To rely on an unregistered trademark, if you are infringed you must prove what is called ‘passing off.’ You must be able to prove substantial goodwill in your business name, and that you have not misrepresented to customers. Most passing off cases fail, as it is difficult to prove consumer confusion. Companies who manage to use similar packaging to other brands can do so by making it clear they are made by someone else, that way they are not misrepresenting to the customer. In the UK, fair competition is encouraged, therefore it is better to register your trademark, and protect your brand by ensuring the design is distinctive enough to adhere to the criteria for trademark registration.
There are two types of Intellectual Property (IP) Rights – Registered rights with the Intellectual Property Office (IPO) and unregistered rights which arise automatically.
Copyright is a 100% unregistered right, it cannot be registered, at least not in the UK and was originally a tool of political censorship, the Statute of Anne was enacted by the British Government in 1709, named after Queen Anne, this was the first full-fledged copyright statute in the world. The Statute of Anne granted publishers of books legal protection for 14 years and granted 21 years of protection for any book already in print, which meant whoever produced royal material had the right to stop anyone else from copying it or replicating it.
People speculate that had copyright laws existed in Shakespeare’s time, none of his plays would be known today, at that time people were able to transcribe what was being performed and replicate it, but had copyright law existed, Shakespeare would have been entitled to control the reproduction of his plays and may not have become so well known.
Copyright was originally used to protect literary works, and was then extended sequentially to print works, then artistic works, musical works, and then theatrical works. By the end of the 19th century, what started as a tool of political censorship was now a norm for protecting works.
How was world-wide copyright formalised with Treaties?
The 1886 Berne Convention for the Protection of Literary and Artistic Works, usually known as the Berne Convention, is an international agreement governing copyright which states that for all counties (or parties) in the ‘Berne Union’ it is prohibited to necessitate registration for a copyright and that copyright exists the moment a work is recorded in material form. It also imposes a condition that countries recognise copyrights held by the citizens of all other parties to the convention.
The growth of the Radio & TV industry took copyright as a vehicle to protect modern technology, including sound & TV recordings. Film companies who produced films out of books could face IP issues in relation to the copyright held by the author of the book. The 1922 silent film, Nosferatu, which was based on the novel Dracula, by Bram Stoker, had to change the name of the Count, to avoid infringement.
Copyright then adapted and improved with the introduction of technology and computer software is now protected in IP law. In an essay written by Nick, he argued that computer software is made up of binary 1s and 0s, therefore computer software should be considered a literary work. As technology has changed, from vinyl, to cassette & CD, and video to DVD, so the law was changed each time to accommodate new iterations. When the internet came along, the EU passed the 2001 Law Information Society Directive, to protect media communicated via the internet. Now that we have Artificial Intelligence (AI), will copyright protect it? This is unlikely, AI is more likely to be protected by patents, whilst 3D printed designs could be protected by both copyright and design rights.
What does copyright protect?
Ninety-nine percent of copyright protection is afforded to 2D designs, if that drawing is reproduced in 3D, it would then be protected by design law. In 1988, designs were protected by artistic copyright law, an attractive design, which had eye appeal, could be protected by registered design (15 years), whereas something purely practical could be protected by copyright (life of the creator + 50 years).
Unregistered design is the other side of the coin to copyright – unregistered design & copyright have much more in common than registered design. What can you do with copyright? There are exceptions where you may use or reproduce copyright works without infringing copyright, these include personal/private use/study, in the context of teaching or in the case of reportage. Stakeholders in certain industries have been trying to limit the scope of these exceptions, for instance, the record industry has been arguing that you should not be able to make a personal recording of a piece of audio, i.e., music, for your own records.
What are the two ways in which you infringe copyright?
· Firstly, you do not even have to know that you are doing it, just doing it makes you an infringer, making a copy in material form & distributing it, or including it as a communication to the public.
· Secondly, you must have done it knowing that you are infringing, this is of particular importance in the criminal domain, in which case you can go to prison for 10 years for infringing copyright. To commit the offence, you must be put on notice that you have infringed and then continue anyway, copyright is a very flexible IP right.
Q&A
Q: There has been a lot of reform to Copyright Law but little reform to Design Law, why is this?
A: The reason for this is the respective lobbyists, without copyright law you would not have a book publishing industry or a film/music industry, to name just a couple, who make an enormous amount of money, designers do not have the same clout, the government listen to these lobbyists because they shout.
Q: Who can decide if something is an infringement?
A: There are two tests to establish if something is an infringement.
1) the alleged infringer must have had access to infringed work.
2) you must be able to demonstrate objective similarity – are the designs similar – if the designs are similar and the alleged infringer had access to the infringed work, the inference is that they have copied, but you would normally get an expert witness e.g., a musicologist, to objectively confirm the evidence has a similarity. The results of 90% of cases are determined by the evidence, and not necessarily the law.
Q: Who is the first owner of IP?
A: The first owner of IP is the person that created the works, the only way someone else can become the owner is if the creator has undertaken that work under employment, or if the IP is assigned to another party by contract/agreement.
Pre-1988 – Design law was easy to understand and straightforward. In 1983 it changed so there were three elements to a design right:
· To be registered, the design had to have ‘eye appeal’, that being it needed to be considered beautiful or have an aesthetic quality and it could be registered for 15 years.
· If there was no ‘eye-appeal’, it had to be functional. Copyright (2D design) could be turned into a 3D design.
· A functional item would be protected for the life of the creator plus 50 years. Basically, Copyright of 2D designs.
1956 onwards there were changes to copyright law following The Whiteford Committee Report.
1985 – In a case involving car exhaust pipes, where Mini Metro exhaust pipes were produced by a competitor, Mini sued for copyright infringement. Meanwhile the House of Lords decided current copyright laws were not suitable for functional designs.
1987 – began a change in Design Law.
Copyright changed due to the House of Lords decision which meant design law also had to change. ‘Anything in 3D can no longer be protected by Copyright’ Therefore design law encompassed all 3D designs and became ‘UK unregistered Design right’.
On the other side of the coin, Copyright became an unregistered Design right as new criteria to qualify the design needs to be:
· Novel.
· Must not be commonplace in the design field.
· You can use assembled elements of other designs, to create a new design.
1st August 1989 – UK Unregistered Design Right covered
· Shape.
· Configuration.
Lasts 10-15 years
Not functional
Registered Designs – were established with a term of 25 years and must have eye-appeal.
1995 – Copyright extended to 70 years beyond the creators’ lifetime.
1994 – UK Trademark 1938 gets updated.
UK changed their registered Design Act to meet the same test, lasted 25 years
UK 10-15 years
UK Judges then had to rule according to EU High Court judgments, which meant some countries made binding changes to UK law.
By 2002 there were then five distinctive design laws to follow in the UK:
UK Registered
EU Community
UK Unregistered
EU Community Unregistered
Copyright (for Artistic Craftsmanship – very rare)
If registering in the UK, a design will not be recognised in the European Union.
The UK Government has introduced a new Supplementary Design Right, which must have individual character and lasts 3 years.
It is most important to campaign for the change in law so it will become a criminal offence to intentionally infringe on UK Unregistered Designs. It is unfair that in 2D plans and designs there is automatic copyright protection (70 years plus life of the author) but when it comes to an unregistered 3D design it enters design law and only has 3-15 years’ protection.
What is a Patent?
When considering various aspects of intellectual property (IP), it is easy to confuse the various rights which can lead to a misunderstanding about what they mean. For example, you can: Trademark a word, Copyright a song, Patent an idea. But you can’t patent a design!
There are different areas of IP rights (copyright, designs, trademarks, and patents) and it is easy to assume one word covers all aspects. These terms can come across as interchangeable amongst public discussion, therefore they can become confusing.
IP rights are usually separate areas, however sometimes aspects can overlap to varying degrees. They can overlap the way they are expressed and applied, so they can be interchangeable, but separate.
If you imagine IP rights as a family tree, patents would be at the top, the grandfather of IP rights. They came first and therefore are the oldest.
What was the first patent?
The very first patent was in Ancient Greece. The more modern kind of patent was used by the Venetians 500 years ago.
A patent is seen as a social contract between the state and society. The state (government) recognises you have done something great, something which benefits society and mankind, in return for the state to give that recognition and an exclusive right to develop and commercialise, you must tell the state how it is done. If you must tell the state how you have done something by registering a patent, it is not always necessarily in your best interests to register a patent.
Under what circumstances would you want a patent?
You would want a patent in return for developing something unique and you would like the monopoly right granted by the state to be allowed to be commercialised during the period for which the patent lasts, which is 20 years.
You can gain a patent for an invention or a new process, e.g., a new vaccine, or machine, such as a time machine. What are the criteria for a patent to be granted?
Patents are a registered right. There are three tests to be granted a patent, they are:
The invention or process needs to be novel (new); the IPO will check all over the world for ideas or processes which are too similar, and the patent will be denied if something similar already exists. The greatest impediment to you gaining your patent, is you yourself disclosing too much information about your idea, which has a high likelihood of destroying the novelty of the idea. If you need to tell particular people how your idea works, craftsmen, mechanics, production, then it is important to use Non-Disclosure Agreements (NDA) before you discuss your idea with anyone else, to preserve the novelty of your idea.
Inventive step: that is, it needs to have an aspect of invention, which is not obvious.
Capable of industrial applicability; whereby, the idea needs to be useful to other people in society, not just to yourself.
Unlike design laws, patent laws are uniform all over the world. They may differ only in timeframes of how/when you apply for them.
Patent laws have been established for a long time, therefore relatively straight forward. There are some blurry areas where you may think a patent would work, such as software (you can’t, that would come under copyright). You may have products which have patents (hardware aspect) and software (copyright), e.g., a computerised car or a smart phone.
Who benefits from Patents?
People who invest time and money in research and development for an invention. For example, vaccines are patentable which makes them especially valuable under the current pandemic circumstances. However there are certain situations when patents wouldn’t be used, even though they could be, such as during a pandemic, it is viewed that it is for the benefit of all humanity that one person/company cannot monopolise.
The issue of patenting medicine can be an issue. For example, painkillers that have been patented such as Nurofen and Panadol can now be produced by other brands because the patent has expired. Trade Mark vs Patent: after the initial 20 years of the patent, other companies can bring out their own painkiller versions. However, they will not be able to use the same or a similar name to the original patented brand as the original company will have a trade mark in the name, even though the drug itself is no longer under patent protection.
Patents protect innovation.
There are slightly different rules around the world in terms of the procedure for acquiring a patent.
In the UK:
Patents usually take 2-4 years to gain
94% are never commercially exploited
To obtain a UK patent, it costs £4-6K, they must be renewed every year, for 20 years, so they end up being extremely expensive. Plus, more fees are payable for patenting in other countries so use a patent lawyer or agent. You need certain terminology and scientific language to get a patent passed by the Intellectual Property Examiners.
It’s worth having a strategy to commercialise an idea before deciding whether it is worth registering as a patent.
There is also an International Patent Convention, which is applied for in Geneva, but you can apply for it through the UK.
What happens if a company employs you, and you invented something?
The same as with other kinds of registered IP rights, you are recognised as the inventor, however the company will own the rights.
If your invention has benefited mankind in some way, then you may be rewarded with a generous sum of money and recognition.
It is not a criminal offence to infringe a patent, however there are criminal offences surrounding patents; if you say an idea is patented by you and it is not, that carries a criminal offence.
Finally, if you create something which is of great benefit to humanity or society, then the state (government) can take the patent from you based on it needing to service mankind rather than be monopolised.
Intellectual property Rights such as patents, trademarks, copyright, designs, and trade secrets are key drivers for innovation and creativity. The impact of IP infringement is destructive from it being harmful to business growth resulting in job losses to the serious threat to consumers health and safety by counterfeit products. Not only does the government lose tax from illegal operators, but some IP theft is also linked to organised crime. Whether you are a graphic artist, a product designer, a jewellery maker, or any other IP creator, it is important to take a little time to understand what IP rights you own and what you can do to protect them.
COPYRIGHT (2D Designs)
Copyright provides creators of original literary, dramatic, musical, and artistic works, published editions of works, sound recordings, films, and broadcasts with a bundle of rights to control the use of those works.
1. Copyright will exist in ‘artistic works’, covering works such as paintings, drawings, fabrics, diagrams, and photographs. These are protected irrespective of the artistic quality. Surface Decoration on 3D designs will also be covered by copyright. (Note however that you cannot enforce copyright in a design drawing to prevent someone from making an article to the design shown).
2. It is very rare that copyright law can be used to protect a 3D design, but it can happen if it is deemed to be a work of artistic craftsmanship (see below)
3. The work must be ORIGINAL. This doesn’t mean that it is a concept that has never been done before; it means the author must use their own skill to create the work, so the design must not have been copied from an existing design.
4. No formalities are required. The right is automatically created once the design is recorded in some permanent form.
5. Depending upon the nature of the copyright and any contractual arrangements, ownership will rest with either the author, employer, the person to whom any copyright is transferred or the person making the necessary arrangements for the copyright to be created.
6. Copyright lasts, in general, for the life of the author plus 70 years following the author’s death.
We are surrounded by examples of copyright works from the book you read, to the adverts on the underground, films we watch, music we listen to. We enjoy copyright works. An architect or interior designer will own the copyright in their plans and drawings, an author will be a wordsmith using their skills to write the next best-selling novel. Copyright arises automatically and your work must be original and in a tangible form. Think of an artist creating an original painting, they will own the copyright of their work. The same is true of photographers, they will own the copyright in the images they shoot (unless previously assigned to the commissioner).
In the UK copyright cannot be registered so it is important to keep a signed and dated record of when the original work was created, an IP Databank provides a useful place to lodge such original works. A unique tamper proof number is generated for each lodgement. This is useful if you ever need to provide evidence of your copyright ownership. Technically it is not a requirement under UK copyright law to include a copyright notice. However, by including the copyright symbol ©, your name and the year of publication of the work, you will receive the © notice which can also add to deterrence. Also using the © symbol enables the victim of the infringement to calculate damages suffered more accurately.
ARTISTIC COPYRIGHT (3D Designs)
1. Artistic copyright will exist in sculptures, works of architecture, and works of artistic craftsmanship (the definition of which is uncertain, but is limited to works like Fine art, e.g., hand-blown vases).
2. As before, the work must be original. No formalities are required, and the ownership will rest with the author or employer.
3. Artistic copyright lasts, as before, for the life of the author plus 70 years following death.
“Artistic craftsmanship” is a term used in copyright legislation for a category of artistic works exhibiting both artistry and craftsmanship. Items which have been granted copyright protection under this category include hand painted tiles and stained glass, to name a few. It includes items that possess an artistic quality and were created because of the creator’s craftsmanship and are not mass produced. This could also include embroidery, tapestry needlework and other crafts, as well as other handmade ceramics, Jewellery, and bespoke furniture. However immediately prior to the UK leaving the European Union, the EU courts issued certain judgments which if followed in the UK will extend the scope of those designs which can be protected as works of artistic craftsmanship.
UK UNREGISTERED DESIGN RIGHT (3D Designs)
1. Design right is capable of existing within most 3D articles, including furniture, interior accessories, lighting designs etc. However, design rights do not subsist in surface decoration (which is covered by copyright).
2. Design rights exist in all ORIGINAL designs (the design must not have been copied from an existing design or regarded as ‘commonplace’ in the design field in question at the time it was designed).
3. No formalities are required. The right is automatically created once the design has been recorded or an article has been made to the design (e.g., a prototype).
4. Certain design features are excluded from design right protection, including methods of construction and features which enable the design to be connected to or to match another article.
5. Design right protection lasts for the shorter of either 10 years from the end of the first year the design is made available for sale or 15 years from the end of the year the design is created.
6. In the last 5 years of the period of protection under 5. Above, anyone can copy the design, subject to the payment of a royalty to the designer (the so-called “licence of right” period).
Copies do not have to be the same for your rights to be infringed and a copyist will not escape liability by making slight alterations, or by only copying part of a design. A substantial similarity between the whole or part of a design and the copy will be enough for infringement to occur. However, if a near identical design is produced by another person without proof of copying being shown, on a balance of probabilities then there may be a presumption that copying has taken place.
Most designers rely on unregistered design rights, so it is important to keep a record of the distinct stages of your designs from idea to marketplace. Being in possession of this (signed and dated) evidence can help towards proving your ownership should it be challenged. This does not add to rights, as they arise automatically, but it does provide a record of when an IP Databank receives them when a unique number is generated every time there is a lodgement.
UK REGISTERED DESIGN (2D and 3D Designs)
1. A registered design protects the appearance of a product, and particularly its individual character- this includes shape, contours, lines, colours, texture of the product or ornamentation. The definition of a ‘product’ includes parts, get-up, symbols, and typefaces.
2. To qualify for registration, a design must have individual character. If you have published your design already you can still apply for registered design protection if it has been marketed for less than one year before registration is applied for. However, the design must differ from existing designs in the marketplace by more than just immaterial details and must create a different overall impression on someone who is familiar with the relevant design field.
3. Protection does not cover features which are dictated solely by the function which the product has to perform.
4. An infringement will occur where a copy creates the same overall impression as the registered design.
5. Once registered, the owner has a monopoly over the design. No evidence of copying is required to prove an infringement of a registered design, unlike copyright or design right.
6. Registered design protection lasts for up to 25 years, renewable every five years after registration.
It is important to note that when you register a design at the UK Intellectual Property (IPO), the applications are substantively unexamined. Should you need to take legal action if your registered design has been infringed, you can only rely on what has been submitted in your registration application, so it is important to seek legal advice on the accuracy and scope of your application. However, once registered you receive an official numbered certificate which says that you “own” that design though ownership can be challenged at any time.
Publicising that you possess numbered registered designs can add a layer of deterrence and protection by communicating that you recognize the value in the designs you have created. Registration gives you a monopoly right to prevent others using them without permission and you do not have to prove copying.
Finally, whilst it is not a criminal offence to copy an unregistered design, it is a criminal offence punishable by up to ten years in prison to copy a registered design.
NEW UK SUPPLEMENTARY UNREGISTERED DESIGN RIGHT (SUD)
1. The UK has created a second UK unregistered design right called the supplementary unregistered design (SUD).
2. This right ensures the full range of design protection is available in the UK.
3. The SUD mirrors the UCD and protects the 2D and 3D appearance of a whole, or part of a product, for a period of three years.
4. The protection it provides does not extend to the EU. The right is to be subject to interpretation by the UK Courts.
The new UK Supplementary unregistered design right (SUD) was created for UK designers who have an unregistered design, it protects shape and configuration only, the SUD includes shape, contours, lines, colours, texture of the product or ornamentation. Designers who created designs before 31 December can still rely on their Community Unregistered Designs (CUD) in the remaining 27 member states until 3 years after 30 September 2021.
The Government continues to provide no advice or certainty about simultaneous publication of a new design.
UK REGISTERED TRADEMARKS
1. A trademark provides the owner with an exclusive right to use the mark on the goods and services for which the trademark has been registered. In limited cases, it can also be used to protect the shape, colour, and smell of a product.
2. To qualify for registration, a trademark must be capable of distinguishing goods or services of one business from that of another.
3. Registration will be refused if a mark is devoid of distinctive character, (i.e., if it is descriptive), customary to the trade or exclusively consists of a sign used in the relevant trade to designate the product’s features, e.g., size, or geographical origin.
4. When intellectual capital is built up under either your own name or a brand, its value increases and it makes sense to add further protection by applying for a registered trademark. This is not the same as registering your name at Companies House but once granted, you can use the symbol ®.
PASSING OFF
1. Passing off protects the reputation and goodwill of a business.
2. An established reputation is required.
3. Any copies must confuse the public as to who has made them, so that people believe the copy is the original, or was made by the maker of the original, or that there is some connection between them. Usually, actual evidence of confusion is required.
4. Price differences can influence the likelihood of confusion between original and copy products,
As can use of the manufacturer or retailer’s name in connection with the products. If you are relying on an unregistered trade mark you may use the symbol ™. Historically, it is very difficult for an unknown brand to be able to provide evidence of “consumer confusion” with a much larger, more well-known brand. Registering your trade mark is relatively inexpensive and provides stronger IP protection, vital as your brand achieves growth and success.
PATENTS
1. Patents protect inventions or technical processes which constitute technical improvements.
2. The invention must be new (i.e., not published or disclosed to the public prior to the application date), involve an inventive step and be capable of industrial application.
3. Once registered, the owner has a monopoly right over the invention.
4. The patent lasts for 20 years from the date of filing, although annual fees from the fourth anniversary of filing are required.
It will not be possible to obtain a patent if the invention, technical process, or any information revealing them, has been published (shown/shared) before a patent application has been made. Clearly one needs to share information with a patent lawyer if they are helping you but otherwise you should keep all information confidential and unpublished until the application has been received or disclosed under the terms of a Non-Disclosure Agreement.
A product or process secures patent pending status when the application has been filed but is not yet granted. The idea behind this terminology is to warn others or potential infringers that they may be liable for damages once the full patent is issued.
• Exhibiting
Exhibitions are one of the most valuable marketing venues, but they can also be vulnerable to copying – taking a few simple steps to protect your designs and products can make the difference and maximise the returns in the design and investment of new products. Discovering a copy of one of your products at an Exhibition or Fair can be traumatic but remember that careful handling can lead to the swiftest and most satisfactory outcome. Tempting though it is to march straight onto the alleged infringer’s stand demanding to know what‘s going on, DON’T DO IT – in UK law you can be sued if you make a threat that proves to be groundless - speak to a lawyer first!
• Before Attending Any Exhibition
Ensure you have documentation to prove that you own the copyright/design right or have a licence to market the goods that appear on your stands.
Make sure that this information is easily accessible. In any dispute, the onus is on the complainant to be able to provide evidence of ownership, originality and date of creation.
Consider applying for a Registered Community Design (RCD) before any exhibition. The RCD provides designers with the choice of both an Unregistered Community design (UCD) and a Registered Community Design (RCD).
It is difficult to act at an exhibition or fair if there is no design audit trail or evidence to support UCD or a registration certificate available to support RCD.
The RCD serves as a deterrent against infringement and it’s a rapidly obtained right with few formalities. It is a protection that allows you to: a) Forbid unauthorized production of your design in all the EU countries b) Stop imports into the EU at all possible entry points.
• At the Exhibition
A simple spiral notebook for collecting business cards, as well as being an excellent post-event marketing tool, is also invaluable for providing vital evidence if, in the future, you are unlucky enough to be copied. Don’t forget to include the date, time and any action points or sampling given or promised. Remember – always ask for a business card – at a trade only show, all visitors should identify themselves to you on request. If you can, rent a data pen which will help you not only keep accurate marketing records but could help you trap copyists.
Do you have a ‘No Photography’ policy? Think about preparing your own ‘No Photography’ sign. Remember in the age of digital cameras your designs can be across the other side of the world in seconds and mass-produced before you pack up your stand from the exhibition.
Don’t forget to look out for the ‘Accredited Exhibition Organiser’ sign – it means that your exhibition organiser declares a zero tolerance of plagiarism in order to create a safer trading environment for you as exhibitors.
• The Law of Confidential Information
The law of confidential information has two subsets, trade secrets and the law of privacy. This is an unusual but important area of IP law.
• Trade Secrets – further information
All specialist or “secret” knowledge can be protectable, even though it is not protected as a Patent. Trade Secrets became protected under English Law through a doctrine known as Confidential Information.
A principle that says if something is confidential and communicated to you in circumstances in which you are told it’s confidential and you breach that obligation and it could cause damage, then you could be sued for misuse of confidential information.
Confidential Information is much more than Trade Secrets. It also protects people from exploiting private information. Known as the Law of Privacy.
· Clarity on the Law of Privacy (confidential information) and trade secrets:
The Law of Privacy is a sub-species of Confidential Information; however, it is quite different from Trade Secrets, which are secrets for a business.
The Law of Confidential Information was never written down in English Law, in the same way as Copyright for instance. It arose from a series of cases. In the last decade most of those cases have arisen from an employment context. If you terminate your employment, you cannot take confidential information such as contacts, lists, notes etc. If you use those items to enhance your position with a new employer/competitor, you are damaging your previous employer. Most employers ask their staff to complete a Confidentiality Agreement to prevent this happening.
There is a 3-pronged test to decide whether you have a case:
· Is the information confidential? Was it in the public domain or private to a small group of people?
· Was it communicated to you in a confidential environment? Was it reasonable to deduce that it was confidential?
· If it was disclosed without the permission of the owner, could it cause damage?
Because of the growing laws around confidential information, employment contracts became more restrictive. Generally, there is a long list of clauses explaining what is confidential, where you may work, where you may not work, restrictive distances or employers you must not work for. Even hairdressers can be told not to work nearby or for close competitors.
The definition of a Trade Secret means, information which has all the following requirements:
· Is secret in the sense that it is not a body or assembly of its components, known among or easily accessible to persons within the circle for the information in question.
· Has commercial value because it is secret.
· Has been subject to reasonable steps under the circumstance by the person fully in control of the information to keep it secret.
But if someone wants to break into your house, whatever ways you attempt to stop them, alarms, barking dogs, police, guns, if they really want to, they will try to.
It is the same with Confidential Information and Trade Secrets, no matter how secret you try to keep your information, if they really want it, they will try to steal it.
• Non-Disclosure Agreement (NDA)
An NDA gives more comfort to the person holding it than to anyone else. If someone wants to steal confidential information, using it without permission, they probably will. You may sue, which will be expensive and distracting, and means you end up putting the confidential information in the public domain anyway. The most important thing to do, is to stay quiet and be extremely careful who you choose to share information with if you wish to keep elements out of the public domain. However, relying on the small print of an NDA is useful should it ever be required, and it puts the person who has signed it “on notice” and can act as a deterrent.
• Guidelines for Safe Pitching
All designers, at some stage, will need to show their designs to third parties with whom they may not have had contact previously. How do you protect your designs without appearing to be awkward or difficult? After all, you will be trying to form some type of business partnership with whomever views your work – but you still need to be assured that your designs are protected.
• When preparing for a pitch, keep a complete record of all your ideas, designs and creative input, ensuring that there is a complete paper trail of your work from the first brainstorming session through to initial sketches and detailed design drawings or detailed explanation of your ideas.
• Ensure that you are clearly identified as the creator of your ideas/designs by putting your name and the date of your idea/design on each idea/design document. If you are sending your designs via e-mail, make sure that you use an intellectual property statement on the e-mail and use a member logo too. This standard statement can be adapted to suit the situation as necessary and is helpful for e-mails and designs that are accompanied by your letterhead.
• Record your ideas/designs by sending your documents to an IP Databank, bank or solicitor. This will give you independent evidence that you created your designs/ideas at the time you say you did.
• Ensure that you know what intellectual property rights exist in your ideas/designs, if any – it may be possible for you to obtain registered design protection at the UKIPO for cover before disclosing your designs to anyone and thereby strengthen the legal protection available to you.
• Keep a record of any other parties who have been involved in the creation of your ideas/ designs and make sure that you have confirmed the legal ownership position with them before using the ideas/designs. If necessary, ask them to sign an assignment agreement or, at least, an acknowledgement of your ownership of the intellectual property rights. This helps to avoid problems with third parties later on when you need to rely on your rights.
• Always keep a written record of your discussions which you have with your client at any pitch meeting or over the telephone so that they cannot argue, for example, that you waived confidentiality in your ideas/designs. All intellectual property rights existing in our designs and products (and in the images, text and design of this website/marketing material) are and will remain the property of (your name). Any pitch you have with your client at any pitch meeting or over the telephone so that they cannot argue, for example, that you waived confidentiality in your ideas/designs.
• Ascertain your client’s policy on respecting the confidentiality and/or intellectual property in your ideas/designs. For example, are they willing to sign a non-disclosure/ confidentiality agreement before receiving the pitch from you? As part of your tender process you may consider inviting the recipients to sign a Non- Disclosure Agreement, which will show that they are anti-copying in design and confirming their commitment to a model ‘Code of Conduct’ to uphold ethics, respect and compliance.
• Create your own risk assessment document to make sure that you ask yourself the right questions before pitching. If your client is not prepared to commit itself to any written obligations to protect your ideas/designs, you should weigh up the pros and cons of disclosing your ideas/designs to your client without protection. If your client is not prepared to sign an agreement, consider whether a business relationship is workable without this assurance.
• You should send a follow-up letter or e-mail to your client a few days after your pitch to them to confirm the content of your discussions with them and to remind them about your intellectual property rights and the confidential nature of your discussions.
• It is particularly important where your client is paying you a pitch fee to make clear that you own the intellectual property rights in what you produce for the pitch and that you wish to maintain the confidentiality in the ideas/designs presented to your client as part of the pitch. In certain circumstances, a person who commissions a design in return for payment can be the owner of the intellectual property rights in the design produced.
• WHEN PITCHES GO WRONG
If you are unfortunate enough to lose a pitch, always ask your client to return any presentation materials left with them to reduce the risk of your materials being reproduced without your consent and remind them that you have retained your intellectual property rights in your materials.
If your pitch documents/designs have not been returned with a valid reason for non-selection, send a letter requesting immediate return of your work. You own the intellectual property rights in any material that has been sent on a speculative basis in response to a pitch brief.
Include a reminder if the potential client has signed a confidentiality or intellectual property agreement. Inform them they are not allowed to use any element of your work without permission and payment and include a statement that if any element has or intends to be used without your permission, this may be an infringement of your intellectual property rights.
If you have sent a copy of your pitch to your solicitor, professional organisation or an IP Databank, request confirmation regarding the date that your pitch was lodged. This will provide you with valuable independent evidence to substantiate your claim, should you decide to take action.
Careful handling is imperative if you discover that elements of your pitch have been used without your permission or payment. Approach the client on an informal basis with caution – beware of making a groundless threat as there is a provision under UK design law, which basically says that if you sue someone for infringing your rights and it turns out they haven’t or you cannot prove this legally – they may then be able to sue you!
If you do have a meeting with a client who you feel may have used your work without payment, do not negotiate a royalty without giving yourself time to make an informed decision. At this stage, you may consider taking legal advice to maximise the exploitation of your IP rights.
Always keep a record to confirm your understanding of what took place during any meeting following a complaint. If you write to a client regarding an unsuccessful pitch and an alleged infringement of your intellectual property rights, always stick to the facts and head any letter WITHOUT PREJUDICE. Copy in a third party, i.e., your solicitor or trade organisation.
If you have to instruct a solicitor to send a letter before action – think carefully about your choice of legal advisor. It is better to consult one with experience in intellectual property (IP). If a solicitor has experience and a proven track record of cases in the sector, they will understand quickly what you are trying to achieve.
Gather all relevant evidence to substantiate the fact that you believe that your material has been used without permission or payment. In an advertisement, for example, obtain an example of the alleged copy and provide signed and dated evidence of your original. Current design legislation relies on overall impression so even if subsequent work has been changed slightly, it may well still infringe your rights.
Designs in a Post Brexit UK:
• Designers can still apply for Registered Community Designs (RCD’s) with the EUIPO, but in doing so:
• Designers with valid RCD’s as at the end of the transition period will have equivalent Rights in the UK created automatically at no cost to them.
• Designers with pending applications for RCD’s (or registered applications not yet published) at the end of the transition period have a 9-month period to September 2021 to apply to the UKIPO for the same protection in the UK. Crucially if you take advantage of this the UKIPO will use the filing date for the original RCD application, ensuring no loss in protection.
• Unregistered Community Designs (UCD’s) arise when a design is first disclosed In the EU and lasts for three years from the date of publication. If you had any UCD’s Arising before 1 January 2021 these will remain valid in the UK for their remaining term as what will be known as a Continuing Unregistered Design (the CUD). The CUD aims to prevent a loss in protection in the UK for any UCD which already existed at the End of the transitional period and still had time remaining. The CUD will protect the Design automatically in the UK for the remainder of its 3-year UCD term.
• The current UK Unregistered Design Right only protects the shape and Configuration of an article (whereas the UCD protects additional elements such as Surface decoration and textiles) but it lasts for a longer period than the UCD of 10 years from the end of the year in which the design was made publicly available.
• As the UCD was no longer available in the UK from 1 January 2021 a new Supplementary Unregistered Design (SUD) was made available in the UK which mirrors the protection offered by the UCD. Designs that are first disclosed in the UK will be protected automatically under the new SUD right in the UK for 3 years from the Date of publication as with the UCD. This is in addition to the original UK Unregistered Design Right which remains available to designers. See information about the new Supplementary Unregistered Design right here as well as a summary of other Changes.
Trademarks
• If, at the end of the transition period, you had a valid registered EUTM then the UKIPO Will create a comparable UK registration automatically and at no cost to you. This new UK mark will retain the filing date of the original EU mark so there will be no gap in Protection.
• If, at the end of the transition period, you had a pending EUTM application then there was a nine-month period to September 2021 in which to apply for a mirror UK Registration keeping the filing date of the EUTM. However you had to pay the UK Application fees for a new trade mark and the UK application had to be identical to the EU application. These comparable marks also have the same renewal dates as the Original EUTMs which could lead to fees having to be paid twice in relatively quick Succession.
• Trademarks must be used to remain valid. Previously use of an EU trade mark in The UK counted as use for the purposes of validity. This will no longer be the case and so if you own an EU mark but currently only offer your goods or services in the UK then you risk losing your EU registration, or at least part of the specification covered, through a lack of use.
Copyright & Patents
Protection of your copyright internationally is governed by international treaties rather than EU Laws so protection for copyright works remains unchanged by Brexit. There may be some issues around things such as orphan rights and database rights however these are outside the remit of this guide. Equally, patents are not currently governed by EU laws so the way that patents are applied for and prosecuted will remain largely unchanged. There may be issues around the proposed Unitary Patent and Supplementary Protection Certificates but, again, these are outside the Remit of this guide but do not hesitate to contact the authors if you require further input on these or any copyright issues.
IP ESSENTIALS:
Check your EU registered rights, whether designs or trademarks, to make sure that the mirror UK rights have been properly created and recorded.
If you had pending EU applications, whether for designs or trademarks, check that you applied for the mirror UK right before the end of the nine-month period. If you didn’t do this then take legal advice on the status of these designs and/or trademarks from an IP specialist lawyer.
If you want to maintain your EUTM’s make sure that you are using them in a member state of the Union.
If you rely on unregistered rights, consider now which market is more important to you; the UK or the EU and implement a strategy for making your designs public accordingly.
With extremely generous help from:
A©ID (Anti Copying in Design)
UKIPO (The Intellectual Property Office, UK)
Often people refer to trademarks as badges of origin, the World Intellectual Property Organisation describes a trademark as, “A sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights”. So why are trademarks important, and why do people often choose a specific brand over other brands? People will usually associate quality, better taste, better impression, etc. Of a product by branding.
A trademark used to be used solely for a single word or logo and consider how popular the image of the brand is. Everyone is capable of visualizing their image and logo, but if you were to have two different boxes of chocolates, most people are likely to consider their own choice as better, as they will associate quality with the brand.
How long do trademarks last?
A trademark gives absolute protection due to its registered status, and you can register a trademark to last forever, however it does need to be re-registered every 10 years.
Trademarks no longer only count as a single word and/or logo. About 20 years ago, due to an EU protection escalation, you are now able to protect a variety of other aspects through trademark protection. So, for example, a shape, smell (perfume companies lobbied for inclusion on brand identity), or even sounds can all be registered as trademarks to strengthen recognition and brand protection.
Why do you have different classes for trademark registration?
There are forty-five different classes in which you can register trademarks. However, you have to pay a separate fee to register in each class. So, a brand would usually only register in the classes they identify or will need. All these only need to be registered trademarks in their own sector class, as they are not in a competitive market with each other.
What are the restrictions to registering trademarks?
You cannot get a trademark for using descriptive terminology of the product in the name. For example, there was a glue company who tried to gain a trade mark for the name Destock. It was declined due to it sounding like the action of the product (does-stick).
You cannot register a trademark if someone is already registered in the same class with the same name. And you cannot register a trade mark if you are attempting to associate your name or product with another organisation, such as the Olympics, or Royalty, or using geographical areas e.g. Cheddar cheese.
Can you register trademarks in different territories?
Trademarks are territorial, so you would need to register your trademark in each territory in which you wish to have a presence or sell goods. If you register your brand in the UK, you will only have trademark protection in the UK, and the IPO has converted all community trademarks to UK trademarks, so now you need to register your trademark in individual EU countries.
If you wish to register your trademark in a variety of territories, such as UK, US, Asia, you will firstly make an application to the UK IPO, then by using the international treaty called the Madrid Protocol, you will apply to the WIPO to send your trademark to be registered in each territory.
Some trademarks tips and guidance:
· A trademark needs to be used to continue to be valid.
· A trademark doesn’t hold as much weight if it becomes diluted due to becoming a public generic term (for instance Hoover was a brand of vacuum, now people often use ‘hoover’ as the action, irrelevant of which brand of vacuum they use).
When seeking a trademark, you first apply online, and they will then:
· Examine applicability (check to see if anyone else has a registered trademark the same as yours), and only will you then gain registration in principle.
· A trade mark granted is published In the London Gazette and they will advertise to see if anyone else has that trade mark in use.
· There is a 3-month period to wait for any opposition to the trade mark.
· Your registered trade mark can be attacked if you do not use it for 3 years or it was already in use.
What is trademark infringement? As there is detailed information in the Trademark Act, you infringe a trade mark by:
· Having the same or similar trademark.
· Having the same trade mark in the same class.
· If you reproduce someone else’s trade mark.
· If you bring down the reputation of another trade mark.
What are the penalties for trademark infringement?
It is possible to get up to 10 year's imprisonment for trademark infringement, and it carries the highest criminal offence in IP infringement, even more so than copyright.
Although most of the time trademarks are registered rights, it is possible to have an unregistered trademark. To rely on an unregistered trademark, if you are infringed you must prove what is called ‘passing off.’ You must be able to prove substantial goodwill in your business name, and that you have not misrepresented to customers. Most passing off cases fail, as it is difficult to prove consumer confusion. Companies who manage to use similar packaging to other brands can do so by making it clear they are made by someone else, that way they are not misrepresenting to the customer. In the UK, fair competition is encouraged, therefore it is better to register your trademark, and protect your brand by ensuring the design is distinctive enough to adhere to the criteria for trademark registration.
There are two types of Intellectual Property (IP) Rights – Registered rights with the Intellectual Property Office (IPO) and unregistered rights which arise automatically.
Copyright is a 100% unregistered right, it cannot be registered, at least not in the UK and was originally a tool of political censorship, the Statute of Anne was enacted by the British Government in 1709, named after Queen Anne, this was the first full-fledged copyright statute in the world. The Statute of Anne granted publishers of books legal protection for 14 years and granted 21 years of protection for any book already in print, which meant whoever produced royal material had the right to stop anyone else from copying it or replicating it.
People speculate that had copyright laws existed in Shakespeare’s time, none of his plays would be known today, at that time people were able to transcribe what was being performed and replicate it, but had copyright law existed, Shakespeare would have been entitled to control the reproduction of his plays and may not have become so well known.
Copyright was originally used to protect literary works, and was then extended sequentially to print works, then artistic works, musical works, and then theatrical works. By the end of the 19th century, what started as a tool of political censorship was now a norm for protecting works.
How was world-wide copyright formalised with Treaties?
The 1886 Berne Convention for the Protection of Literary and Artistic Works, usually known as the Berne Convention, is an international agreement governing copyright which states that for all counties (or parties) in the ‘Berne Union’ it is prohibited to necessitate registration for a copyright and that copyright exists the moment a work is recorded in material form. It also imposes a condition that countries recognise copyrights held by the citizens of all other parties to the convention.
The growth of the Radio & TV industry took copyright as a vehicle to protect modern technology, including sound & TV recordings. Film companies who produced films out of books could face IP issues in relation to the copyright held by the author of the book. The 1922 silent film, Nosferatu, which was based on the novel Dracula, by Bram Stoker, had to change the name of the Count, to avoid infringement.
Copyright then adapted and improved with the introduction of technology and computer software is now protected in IP law. In an essay written by Nick, he argued that computer software is made up of binary 1s and 0s, therefore computer software should be considered a literary work. As technology has changed, from vinyl, to cassette & CD, and video to DVD, so the law was changed each time to accommodate new iterations. When the internet came along, the EU passed the 2001 Law Information Society Directive, to protect media communicated via the internet. Now that we have Artificial Intelligence (AI), will copyright protect it? This is unlikely, AI is more likely to be protected by patents, whilst 3D printed designs could be protected by both copyright and design rights.
What does copyright protect?
Ninety-nine percent of copyright protection is afforded to 2D designs, if that drawing is reproduced in 3D, it would then be protected by design law. In 1988, designs were protected by artistic copyright law, an attractive design, which had eye appeal, could be protected by registered design (15 years), whereas something purely practical could be protected by copyright (life of the creator + 50 years).
Unregistered design is the other side of the coin to copyright – unregistered design & copyright have much more in common than registered design. What can you do with copyright? There are exceptions where you may use or reproduce copyright works without infringing copyright, these include personal/private use/study, in the context of teaching or in the case of reportage. Stakeholders in certain industries have been trying to limit the scope of these exceptions, for instance, the record industry has been arguing that you should not be able to make a personal recording of a piece of audio, i.e., music, for your own records.
What are the two ways in which you infringe copyright?
· Firstly, you do not even have to know that you are doing it, just doing it makes you an infringer, making a copy in material form & distributing it, or including it as a communication to the public.
· Secondly, you must have done it knowing that you are infringing, this is of particular importance in the criminal domain, in which case you can go to prison for 10 years for infringing copyright. To commit the offence, you must be put on notice that you have infringed and then continue anyway, copyright is a very flexible IP right.
Q&A
Q: There has been a lot of reform to Copyright Law but little reform to Design Law, why is this?
A: The reason for this is the respective lobbyists, without copyright law you would not have a book publishing industry or a film/music industry, to name just a couple, who make an enormous amount of money, designers do not have the same clout, the government listen to these lobbyists because they shout.
Q: Who can decide if something is an infringement?
A: There are two tests to establish if something is an infringement.
1) the alleged infringer must have had access to infringed work.
2) you must be able to demonstrate objective similarity – are the designs similar – if the designs are similar and the alleged infringer had access to the infringed work, the inference is that they have copied, but you would normally get an expert witness e.g., a musicologist, to objectively confirm the evidence has a similarity. The results of 90% of cases are determined by the evidence, and not necessarily the law.
Q: Who is the first owner of IP?
A: The first owner of IP is the person that created the works, the only way someone else can become the owner is if the creator has undertaken that work under employment, or if the IP is assigned to another party by contract/agreement.
Pre-1988 – Design law was easy to understand and straightforward. In 1983 it changed so there were three elements to a design right:
· To be registered, the design had to have ‘eye appeal’, that being it needed to be considered beautiful or have an aesthetic quality and it could be registered for 15 years.
· If there was no ‘eye-appeal’, it had to be functional. Copyright (2D design) could be turned into a 3D design.
· A functional item would be protected for the life of the creator plus 50 years. Basically, Copyright of 2D designs.
1956 onwards there were changes to copyright law following The Whiteford Committee Report.
1985 – In a case involving car exhaust pipes, where Mini Metro exhaust pipes were produced by a competitor, Mini sued for copyright infringement. Meanwhile the House of Lords decided current copyright laws were not suitable for functional designs.
1987 – began a change in Design Law.
Copyright changed due to the House of Lords decision which meant design law also had to change. ‘Anything in 3D can no longer be protected by Copyright’ Therefore design law encompassed all 3D designs and became ‘UK unregistered Design right’.
On the other side of the coin, Copyright became an unregistered Design right as new criteria to qualify the design needs to be:
· Novel.
· Must not be commonplace in the design field.
· You can use assembled elements of other designs, to create a new design.
1st August 1989 – UK Unregistered Design Right covered
· Shape.
· Configuration.
Lasts 10-15 years
Not functional
Registered Designs – were established with a term of 25 years and must have eye-appeal.
1995 – Copyright extended to 70 years beyond the creators’ lifetime.
1994 – UK Trademark 1938 gets updated.
UK changed their registered Design Act to meet the same test, lasted 25 years
UK 10-15 years
UK Judges then had to rule according to EU High Court judgments, which meant some countries made binding changes to UK law.
By 2002 there were then five distinctive design laws to follow in the UK:
UK Registered
EU Community
UK Unregistered
EU Community Unregistered
Copyright (for Artistic Craftsmanship – very rare)
If registering in the UK, a design will not be recognised in the European Union.
The UK Government has introduced a new Supplementary Design Right, which must have individual character and lasts 3 years.
It is most important to campaign for the change in law so it will become a criminal offence to intentionally infringe on UK Unregistered Designs. It is unfair that in 2D plans and designs there is automatic copyright protection (70 years plus life of the author) but when it comes to an unregistered 3D design it enters design law and only has 3-15 years’ protection.
What is a Patent?
When considering various aspects of intellectual property (IP), it is easy to confuse the various rights which can lead to a misunderstanding about what they mean. For example, you can: Trademark a word, Copyright a song, Patent an idea. But you can’t patent a design!
There are different areas of IP rights (copyright, designs, trademarks, and patents) and it is easy to assume one word covers all aspects. These terms can come across as interchangeable amongst public discussion, therefore they can become confusing.
IP rights are usually separate areas, however sometimes aspects can overlap to varying degrees. They can overlap the way they are expressed and applied, so they can be interchangeable, but separate.
If you imagine IP rights as a family tree, patents would be at the top, the grandfather of IP rights. They came first and therefore are the oldest.
What was the first patent?
The very first patent was in Ancient Greece. The more modern kind of patent was used by the Venetians 500 years ago.
A patent is seen as a social contract between the state and society. The state (government) recognises you have done something great, something which benefits society and mankind, in return for the state to give that recognition and an exclusive right to develop and commercialise, you must tell the state how it is done. If you must tell the state how you have done something by registering a patent, it is not always necessarily in your best interests to register a patent.
Under what circumstances would you want a patent?
You would want a patent in return for developing something unique and you would like the monopoly right granted by the state to be allowed to be commercialised during the period for which the patent lasts, which is 20 years.
You can gain a patent for an invention or a new process, e.g., a new vaccine, or machine, such as a time machine. What are the criteria for a patent to be granted?
Patents are a registered right. There are three tests to be granted a patent, they are:
The invention or process needs to be novel (new); the IPO will check all over the world for ideas or processes which are too similar, and the patent will be denied if something similar already exists. The greatest impediment to you gaining your patent, is you yourself disclosing too much information about your idea, which has a high likelihood of destroying the novelty of the idea. If you need to tell particular people how your idea works, craftsmen, mechanics, production, then it is important to use Non-Disclosure Agreements (NDA) before you discuss your idea with anyone else, to preserve the novelty of your idea.
Inventive step: that is, it needs to have an aspect of invention, which is not obvious.
Capable of industrial applicability; whereby, the idea needs to be useful to other people in society, not just to yourself.
Unlike design laws, patent laws are uniform all over the world. They may differ only in timeframes of how/when you apply for them.
Patent laws have been established for a long time, therefore relatively straight forward. There are some blurry areas where you may think a patent would work, such as software (you can’t, that would come under copyright). You may have products which have patents (hardware aspect) and software (copyright), e.g., a computerised car or a smart phone.
Who benefits from Patents?
People who invest time and money in research and development for an invention. For example, vaccines are patentable which makes them especially valuable under the current pandemic circumstances. However there are certain situations when patents wouldn’t be used, even though they could be, such as during a pandemic, it is viewed that it is for the benefit of all humanity that one person/company cannot monopolise.
The issue of patenting medicine can be an issue. For example, painkillers that have been patented such as Nurofen and Panadol can now be produced by other brands because the patent has expired. Trade Mark vs Patent: after the initial 20 years of the patent, other companies can bring out their own painkiller versions. However, they will not be able to use the same or a similar name to the original patented brand as the original company will have a trade mark in the name, even though the drug itself is no longer under patent protection.
Patents protect innovation.
There are slightly different rules around the world in terms of the procedure for acquiring a patent.
In the UK:
Patents usually take 2-4 years to gain
94% are never commercially exploited
To obtain a UK patent, it costs £4-6K, they must be renewed every year, for 20 years, so they end up being extremely expensive. Plus, more fees are payable for patenting in other countries so use a patent lawyer or agent. You need certain terminology and scientific language to get a patent passed by the Intellectual Property Examiners.
It’s worth having a strategy to commercialise an idea before deciding whether it is worth registering as a patent.
There is also an International Patent Convention, which is applied for in Geneva, but you can apply for it through the UK.
What happens if a company employs you, and you invented something?
The same as with other kinds of registered IP rights, you are recognised as the inventor, however the company will own the rights.
If your invention has benefited mankind in some way, then you may be rewarded with a generous sum of money and recognition.
It is not a criminal offence to infringe a patent, however there are criminal offences surrounding patents; if you say an idea is patented by you and it is not, that carries a criminal offence.
Finally, if you create something which is of great benefit to humanity or society, then the state (government) can take the patent from you based on it needing to service mankind rather than be monopolised.
Intellectual property Rights such as patents, trademarks, copyright, designs, and trade secrets are key drivers for innovation and creativity. The impact of IP infringement is destructive from it being harmful to business growth resulting in job losses to the serious threat to consumers health and safety by counterfeit products. Not only does the government lose tax from illegal operators, but some IP theft is also linked to organised crime. Whether you are a graphic artist, a product designer, a jewellery maker, or any other IP creator, it is important to take a little time to understand what IP rights you own and what you can do to protect them.
COPYRIGHT (2D Designs)
Copyright provides creators of original literary, dramatic, musical, and artistic works, published editions of works, sound recordings, films, and broadcasts with a bundle of rights to control the use of those works.
1. Copyright will exist in ‘artistic works’, covering works such as paintings, drawings, fabrics, diagrams, and photographs. These are protected irrespective of the artistic quality. Surface Decoration on 3D designs will also be covered by copyright. (Note however that you cannot enforce copyright in a design drawing to prevent someone from making an article to the design shown).
2. It is very rare that copyright law can be used to protect a 3D design, but it can happen if it is deemed to be a work of artistic craftsmanship (see below)
3. The work must be ORIGINAL. This doesn’t mean that it is a concept that has never been done before; it means the author must use their own skill to create the work, so the design must not have been copied from an existing design.
4. No formalities are required. The right is automatically created once the design is recorded in some permanent form.
5. Depending upon the nature of the copyright and any contractual arrangements, ownership will rest with either the author, employer, the person to whom any copyright is transferred or the person making the necessary arrangements for the copyright to be created.
6. Copyright lasts, in general, for the life of the author plus 70 years following the author’s death.
We are surrounded by examples of copyright works from the book you read, to the adverts on the underground, films we watch, music we listen to. We enjoy copyright works. An architect or interior designer will own the copyright in their plans and drawings, an author will be a wordsmith using their skills to write the next best-selling novel. Copyright arises automatically and your work must be original and in a tangible form. Think of an artist creating an original painting, they will own the copyright of their work. The same is true of photographers, they will own the copyright in the images they shoot (unless previously assigned to the commissioner).
In the UK copyright cannot be registered so it is important to keep a signed and dated record of when the original work was created, an IP Databank provides a useful place to lodge such original works. A unique tamper proof number is generated for each lodgement. This is useful if you ever need to provide evidence of your copyright ownership. Technically it is not a requirement under UK copyright law to include a copyright notice. However, by including the copyright symbol ©, your name and the year of publication of the work, you will receive the © notice which can also add to deterrence. Also using the © symbol enables the victim of the infringement to calculate damages suffered more accurately.
ARTISTIC COPYRIGHT (3D Designs)
1. Artistic copyright will exist in sculptures, works of architecture, and works of artistic craftsmanship (the definition of which is uncertain, but is limited to works like Fine art, e.g., hand-blown vases).
2. As before, the work must be original. No formalities are required, and the ownership will rest with the author or employer.
3. Artistic copyright lasts, as before, for the life of the author plus 70 years following death.
“Artistic craftsmanship” is a term used in copyright legislation for a category of artistic works exhibiting both artistry and craftsmanship. Items which have been granted copyright protection under this category include hand painted tiles and stained glass, to name a few. It includes items that possess an artistic quality and were created because of the creator’s craftsmanship and are not mass produced. This could also include embroidery, tapestry needlework and other crafts, as well as other handmade ceramics, Jewellery, and bespoke furniture. However immediately prior to the UK leaving the European Union, the EU courts issued certain judgments which if followed in the UK will extend the scope of those designs which can be protected as works of artistic craftsmanship.
UK UNREGISTERED DESIGN RIGHT (3D Designs)
1. Design right is capable of existing within most 3D articles, including furniture, interior accessories, lighting designs etc. However, design rights do not subsist in surface decoration (which is covered by copyright).
2. Design rights exist in all ORIGINAL designs (the design must not have been copied from an existing design or regarded as ‘commonplace’ in the design field in question at the time it was designed).
3. No formalities are required. The right is automatically created once the design has been recorded or an article has been made to the design (e.g., a prototype).
4. Certain design features are excluded from design right protection, including methods of construction and features which enable the design to be connected to or to match another article.
5. Design right protection lasts for the shorter of either 10 years from the end of the first year the design is made available for sale or 15 years from the end of the year the design is created.
6. In the last 5 years of the period of protection under 5. Above, anyone can copy the design, subject to the payment of a royalty to the designer (the so-called “licence of right” period).
Copies do not have to be the same for your rights to be infringed and a copyist will not escape liability by making slight alterations, or by only copying part of a design. A substantial similarity between the whole or part of a design and the copy will be enough for infringement to occur. However, if a near identical design is produced by another person without proof of copying being shown, on a balance of probabilities then there may be a presumption that copying has taken place.
Most designers rely on unregistered design rights, so it is important to keep a record of the distinct stages of your designs from idea to marketplace. Being in possession of this (signed and dated) evidence can help towards proving your ownership should it be challenged. This does not add to rights, as they arise automatically, but it does provide a record of when an IP Databank receives them when a unique number is generated every time there is a lodgement.
UK REGISTERED DESIGN (2D and 3D Designs)
1. A registered design protects the appearance of a product, and particularly its individual character- this includes shape, contours, lines, colours, texture of the product or ornamentation. The definition of a ‘product’ includes parts, get-up, symbols, and typefaces.
2. To qualify for registration, a design must have individual character. If you have published your design already you can still apply for registered design protection if it has been marketed for less than one year before registration is applied for. However, the design must differ from existing designs in the marketplace by more than just immaterial details and must create a different overall impression on someone who is familiar with the relevant design field.
3. Protection does not cover features which are dictated solely by the function which the product has to perform.
4. An infringement will occur where a copy creates the same overall impression as the registered design.
5. Once registered, the owner has a monopoly over the design. No evidence of copying is required to prove an infringement of a registered design, unlike copyright or design right.
6. Registered design protection lasts for up to 25 years, renewable every five years after registration.
It is important to note that when you register a design at the UK Intellectual Property (IPO), the applications are substantively unexamined. Should you need to take legal action if your registered design has been infringed, you can only rely on what has been submitted in your registration application, so it is important to seek legal advice on the accuracy and scope of your application. However, once registered you receive an official numbered certificate which says that you “own” that design though ownership can be challenged at any time.
Publicising that you possess numbered registered designs can add a layer of deterrence and protection by communicating that you recognize the value in the designs you have created. Registration gives you a monopoly right to prevent others using them without permission and you do not have to prove copying.
Finally, whilst it is not a criminal offence to copy an unregistered design, it is a criminal offence punishable by up to ten years in prison to copy a registered design.
NEW UK SUPPLEMENTARY UNREGISTERED DESIGN RIGHT (SUD)
1. The UK has created a second UK unregistered design right called the supplementary unregistered design (SUD).
2. This right ensures the full range of design protection is available in the UK.
3. The SUD mirrors the UCD and protects the 2D and 3D appearance of a whole, or part of a product, for a period of three years.
4. The protection it provides does not extend to the EU. The right is to be subject to interpretation by the UK Courts.
The new UK Supplementary unregistered design right (SUD) was created for UK designers who have an unregistered design, it protects shape and configuration only, the SUD includes shape, contours, lines, colours, texture of the product or ornamentation. Designers who created designs before 31 December can still rely on their Community Unregistered Designs (CUD) in the remaining 27 member states until 3 years after 30 September 2021.
The Government continues to provide no advice or certainty about simultaneous publication of a new design.
UK REGISTERED TRADEMARKS
1. A trademark provides the owner with an exclusive right to use the mark on the goods and services for which the trademark has been registered. In limited cases, it can also be used to protect the shape, colour, and smell of a product.
2. To qualify for registration, a trademark must be capable of distinguishing goods or services of one business from that of another.
3. Registration will be refused if a mark is devoid of distinctive character, (i.e., if it is descriptive), customary to the trade or exclusively consists of a sign used in the relevant trade to designate the product’s features, e.g., size, or geographical origin.
4. When intellectual capital is built up under either your own name or a brand, its value increases and it makes sense to add further protection by applying for a registered trademark. This is not the same as registering your name at Companies House but once granted, you can use the symbol ®.
PASSING OFF
1. Passing off protects the reputation and goodwill of a business.
2. An established reputation is required.
3. Any copies must confuse the public as to who has made them, so that people believe the copy is the original, or was made by the maker of the original, or that there is some connection between them. Usually, actual evidence of confusion is required.
4. Price differences can influence the likelihood of confusion between original and copy products,
As can use of the manufacturer or retailer’s name in connection with the products. If you are relying on an unregistered trade mark you may use the symbol ™. Historically, it is very difficult for an unknown brand to be able to provide evidence of “consumer confusion” with a much larger, more well-known brand. Registering your trade mark is relatively inexpensive and provides stronger IP protection, vital as your brand achieves growth and success.
PATENTS
1. Patents protect inventions or technical processes which constitute technical improvements.
2. The invention must be new (i.e., not published or disclosed to the public prior to the application date), involve an inventive step and be capable of industrial application.
3. Once registered, the owner has a monopoly right over the invention.
4. The patent lasts for 20 years from the date of filing, although annual fees from the fourth anniversary of filing are required.
It will not be possible to obtain a patent if the invention, technical process, or any information revealing them, has been published (shown/shared) before a patent application has been made. Clearly one needs to share information with a patent lawyer if they are helping you but otherwise you should keep all information confidential and unpublished until the application has been received or disclosed under the terms of a Non-Disclosure Agreement.
A product or process secures patent pending status when the application has been filed but is not yet granted. The idea behind this terminology is to warn others or potential infringers that they may be liable for damages once the full patent is issued.
• Exhibiting
Exhibitions are one of the most valuable marketing venues, but they can also be vulnerable to copying – taking a few simple steps to protect your designs and products can make the difference and maximise the returns in the design and investment of new products. Discovering a copy of one of your products at an Exhibition or Fair can be traumatic but remember that careful handling can lead to the swiftest and most satisfactory outcome. Tempting though it is to march straight onto the alleged infringer’s stand demanding to know what‘s going on, DON’T DO IT – in UK law you can be sued if you make a threat that proves to be groundless - speak to a lawyer first!
• Before Attending Any Exhibition
Ensure you have documentation to prove that you own the copyright/design right or have a licence to market the goods that appear on your stands.
Make sure that this information is easily accessible. In any dispute, the onus is on the complainant to be able to provide evidence of ownership, originality and date of creation.
Consider applying for a Registered Community Design (RCD) before any exhibition. The RCD provides designers with the choice of both an Unregistered Community design (UCD) and a Registered Community Design (RCD).
It is difficult to act at an exhibition or fair if there is no design audit trail or evidence to support UCD or a registration certificate available to support RCD.
The RCD serves as a deterrent against infringement and it’s a rapidly obtained right with few formalities. It is a protection that allows you to: a) Forbid unauthorized production of your design in all the EU countries b) Stop imports into the EU at all possible entry points.
• At the Exhibition
A simple spiral notebook for collecting business cards, as well as being an excellent post-event marketing tool, is also invaluable for providing vital evidence if, in the future, you are unlucky enough to be copied. Don’t forget to include the date, time and any action points or sampling given or promised. Remember – always ask for a business card – at a trade only show, all visitors should identify themselves to you on request. If you can, rent a data pen which will help you not only keep accurate marketing records but could help you trap copyists.
Do you have a ‘No Photography’ policy? Think about preparing your own ‘No Photography’ sign. Remember in the age of digital cameras your designs can be across the other side of the world in seconds and mass-produced before you pack up your stand from the exhibition.
Don’t forget to look out for the ‘Accredited Exhibition Organiser’ sign – it means that your exhibition organiser declares a zero tolerance of plagiarism in order to create a safer trading environment for you as exhibitors.
• The Law of Confidential Information
The law of confidential information has two subsets, trade secrets and the law of privacy. This is an unusual but important area of IP law.
• Trade Secrets – further information
All specialist or “secret” knowledge can be protectable, even though it is not protected as a Patent. Trade Secrets became protected under English Law through a doctrine known as Confidential Information.
A principle that says if something is confidential and communicated to you in circumstances in which you are told it’s confidential and you breach that obligation and it could cause damage, then you could be sued for misuse of confidential information.
Confidential Information is much more than Trade Secrets. It also protects people from exploiting private information. Known as the Law of Privacy.
· Clarity on the Law of Privacy (confidential information) and trade secrets:
The Law of Privacy is a sub-species of Confidential Information; however, it is quite different from Trade Secrets, which are secrets for a business.
The Law of Confidential Information was never written down in English Law, in the same way as Copyright for instance. It arose from a series of cases. In the last decade most of those cases have arisen from an employment context. If you terminate your employment, you cannot take confidential information such as contacts, lists, notes etc. If you use those items to enhance your position with a new employer/competitor, you are damaging your previous employer. Most employers ask their staff to complete a Confidentiality Agreement to prevent this happening.
There is a 3-pronged test to decide whether you have a case:
· Is the information confidential? Was it in the public domain or private to a small group of people?
· Was it communicated to you in a confidential environment? Was it reasonable to deduce that it was confidential?
· If it was disclosed without the permission of the owner, could it cause damage?
Because of the growing laws around confidential information, employment contracts became more restrictive. Generally, there is a long list of clauses explaining what is confidential, where you may work, where you may not work, restrictive distances or employers you must not work for. Even hairdressers can be told not to work nearby or for close competitors.
The definition of a Trade Secret means, information which has all the following requirements:
· Is secret in the sense that it is not a body or assembly of its components, known among or easily accessible to persons within the circle for the information in question.
· Has commercial value because it is secret.
· Has been subject to reasonable steps under the circumstance by the person fully in control of the information to keep it secret.
But if someone wants to break into your house, whatever ways you attempt to stop them, alarms, barking dogs, police, guns, if they really want to, they will try to.
It is the same with Confidential Information and Trade Secrets, no matter how secret you try to keep your information, if they really want it, they will try to steal it.
• Non-Disclosure Agreement (NDA)
An NDA gives more comfort to the person holding it than to anyone else. If someone wants to steal confidential information, using it without permission, they probably will. You may sue, which will be expensive and distracting, and means you end up putting the confidential information in the public domain anyway. The most important thing to do, is to stay quiet and be extremely careful who you choose to share information with if you wish to keep elements out of the public domain. However, relying on the small print of an NDA is useful should it ever be required, and it puts the person who has signed it “on notice” and can act as a deterrent.
• Guidelines for Safe Pitching
All designers, at some stage, will need to show their designs to third parties with whom they may not have had contact previously. How do you protect your designs without appearing to be awkward or difficult? After all, you will be trying to form some type of business partnership with whomever views your work – but you still need to be assured that your designs are protected.
• When preparing for a pitch, keep a complete record of all your ideas, designs and creative input, ensuring that there is a complete paper trail of your work from the first brainstorming session through to initial sketches and detailed design drawings or detailed explanation of your ideas.
• Ensure that you are clearly identified as the creator of your ideas/designs by putting your name and the date of your idea/design on each idea/design document. If you are sending your designs via e-mail, make sure that you use an intellectual property statement on the e-mail and use a member logo too. This standard statement can be adapted to suit the situation as necessary and is helpful for e-mails and designs that are accompanied by your letterhead.
• Record your ideas/designs by sending your documents to an IP Databank, bank or solicitor. This will give you independent evidence that you created your designs/ideas at the time you say you did.
• Ensure that you know what intellectual property rights exist in your ideas/designs, if any – it may be possible for you to obtain registered design protection at the UKIPO for cover before disclosing your designs to anyone and thereby strengthen the legal protection available to you.
• Keep a record of any other parties who have been involved in the creation of your ideas/ designs and make sure that you have confirmed the legal ownership position with them before using the ideas/designs. If necessary, ask them to sign an assignment agreement or, at least, an acknowledgement of your ownership of the intellectual property rights. This helps to avoid problems with third parties later on when you need to rely on your rights.
• Always keep a written record of your discussions which you have with your client at any pitch meeting or over the telephone so that they cannot argue, for example, that you waived confidentiality in your ideas/designs. All intellectual property rights existing in our designs and products (and in the images, text and design of this website/marketing material) are and will remain the property of (your name). Any pitch you have with your client at any pitch meeting or over the telephone so that they cannot argue, for example, that you waived confidentiality in your ideas/designs.
• Ascertain your client’s policy on respecting the confidentiality and/or intellectual property in your ideas/designs. For example, are they willing to sign a non-disclosure/ confidentiality agreement before receiving the pitch from you? As part of your tender process you may consider inviting the recipients to sign a Non- Disclosure Agreement, which will show that they are anti-copying in design and confirming their commitment to a model ‘Code of Conduct’ to uphold ethics, respect and compliance.
• Create your own risk assessment document to make sure that you ask yourself the right questions before pitching. If your client is not prepared to commit itself to any written obligations to protect your ideas/designs, you should weigh up the pros and cons of disclosing your ideas/designs to your client without protection. If your client is not prepared to sign an agreement, consider whether a business relationship is workable without this assurance.
• You should send a follow-up letter or e-mail to your client a few days after your pitch to them to confirm the content of your discussions with them and to remind them about your intellectual property rights and the confidential nature of your discussions.
• It is particularly important where your client is paying you a pitch fee to make clear that you own the intellectual property rights in what you produce for the pitch and that you wish to maintain the confidentiality in the ideas/designs presented to your client as part of the pitch. In certain circumstances, a person who commissions a design in return for payment can be the owner of the intellectual property rights in the design produced.
• WHEN PITCHES GO WRONG
If you are unfortunate enough to lose a pitch, always ask your client to return any presentation materials left with them to reduce the risk of your materials being reproduced without your consent and remind them that you have retained your intellectual property rights in your materials.
If your pitch documents/designs have not been returned with a valid reason for non-selection, send a letter requesting immediate return of your work. You own the intellectual property rights in any material that has been sent on a speculative basis in response to a pitch brief.
Include a reminder if the potential client has signed a confidentiality or intellectual property agreement. Inform them they are not allowed to use any element of your work without permission and payment and include a statement that if any element has or intends to be used without your permission, this may be an infringement of your intellectual property rights.
If you have sent a copy of your pitch to your solicitor, professional organisation or an IP Databank, request confirmation regarding the date that your pitch was lodged. This will provide you with valuable independent evidence to substantiate your claim, should you decide to take action.
Careful handling is imperative if you discover that elements of your pitch have been used without your permission or payment. Approach the client on an informal basis with caution – beware of making a groundless threat as there is a provision under UK design law, which basically says that if you sue someone for infringing your rights and it turns out they haven’t or you cannot prove this legally – they may then be able to sue you!
If you do have a meeting with a client who you feel may have used your work without payment, do not negotiate a royalty without giving yourself time to make an informed decision. At this stage, you may consider taking legal advice to maximise the exploitation of your IP rights.
Always keep a record to confirm your understanding of what took place during any meeting following a complaint. If you write to a client regarding an unsuccessful pitch and an alleged infringement of your intellectual property rights, always stick to the facts and head any letter WITHOUT PREJUDICE. Copy in a third party, i.e., your solicitor or trade organisation.
If you have to instruct a solicitor to send a letter before action – think carefully about your choice of legal advisor. It is better to consult one with experience in intellectual property (IP). If a solicitor has experience and a proven track record of cases in the sector, they will understand quickly what you are trying to achieve.
Gather all relevant evidence to substantiate the fact that you believe that your material has been used without permission or payment. In an advertisement, for example, obtain an example of the alleged copy and provide signed and dated evidence of your original. Current design legislation relies on overall impression so even if subsequent work has been changed slightly, it may well still infringe your rights.
Designs in a Post Brexit UK:
• Designers can still apply for Registered Community Designs (RCD’s) with the EUIPO, but in doing so:
• Designers with valid RCD’s as at the end of the transition period will have equivalent Rights in the UK created automatically at no cost to them.
• Designers with pending applications for RCD’s (or registered applications not yet published) at the end of the transition period have a 9-month period to September 2021 to apply to the UKIPO for the same protection in the UK. Crucially if you take advantage of this the UKIPO will use the filing date for the original RCD application, ensuring no loss in protection.
• Unregistered Community Designs (UCD’s) arise when a design is first disclosed In the EU and lasts for three years from the date of publication. If you had any UCD’s Arising before 1 January 2021 these will remain valid in the UK for their remaining term as what will be known as a Continuing Unregistered Design (the CUD). The CUD aims to prevent a loss in protection in the UK for any UCD which already existed at the End of the transitional period and still had time remaining. The CUD will protect the Design automatically in the UK for the remainder of its 3-year UCD term.
• The current UK Unregistered Design Right only protects the shape and Configuration of an article (whereas the UCD protects additional elements such as Surface decoration and textiles) but it lasts for a longer period than the UCD of 10 years from the end of the year in which the design was made publicly available.
• As the UCD was no longer available in the UK from 1 January 2021 a new Supplementary Unregistered Design (SUD) was made available in the UK which mirrors the protection offered by the UCD. Designs that are first disclosed in the UK will be protected automatically under the new SUD right in the UK for 3 years from the Date of publication as with the UCD. This is in addition to the original UK Unregistered Design Right which remains available to designers. See information about the new Supplementary Unregistered Design right here as well as a summary of other Changes.
Trademarks
• If, at the end of the transition period, you had a valid registered EUTM then the UKIPO Will create a comparable UK registration automatically and at no cost to you. This new UK mark will retain the filing date of the original EU mark so there will be no gap in Protection.
• If, at the end of the transition period, you had a pending EUTM application then there was a nine-month period to September 2021 in which to apply for a mirror UK Registration keeping the filing date of the EUTM. However you had to pay the UK Application fees for a new trade mark and the UK application had to be identical to the EU application. These comparable marks also have the same renewal dates as the Original EUTMs which could lead to fees having to be paid twice in relatively quick Succession.
• Trademarks must be used to remain valid. Previously use of an EU trade mark in The UK counted as use for the purposes of validity. This will no longer be the case and so if you own an EU mark but currently only offer your goods or services in the UK then you risk losing your EU registration, or at least part of the specification covered, through a lack of use.
Copyright & Patents
Protection of your copyright internationally is governed by international treaties rather than EU Laws so protection for copyright works remains unchanged by Brexit. There may be some issues around things such as orphan rights and database rights however these are outside the remit of this guide. Equally, patents are not currently governed by EU laws so the way that patents are applied for and prosecuted will remain largely unchanged. There may be issues around the proposed Unitary Patent and Supplementary Protection Certificates but, again, these are outside the Remit of this guide but do not hesitate to contact the authors if you require further input on these or any copyright issues.
IP ESSENTIALS:
Check your EU registered rights, whether designs or trademarks, to make sure that the mirror UK rights have been properly created and recorded.
If you had pending EU applications, whether for designs or trademarks, check that you applied for the mirror UK right before the end of the nine-month period. If you didn’t do this then take legal advice on the status of these designs and/or trademarks from an IP specialist lawyer.
If you want to maintain your EUTM’s make sure that you are using them in a member state of the Union.
If you rely on unregistered rights, consider now which market is more important to you; the UK or the EU and implement a strategy for making your designs public accordingly.
With extremely generous help from:
A©ID (Anti Copying in Design)
UKIPO (The Intellectual Property Office, UK)