Intellectual Property - A Brief Guide

Intellectual Property refers to labours of the mind, an intangible asset. 

In effect there are 7 protections that fall within the umbrella of intellectual property, each serving a different purpose.

1. Copyright
2. Passing Off /Registered Trade Marks
3. Design Rights
4. Patents
5. Image Rights
6. Data Protection
7. Confidential Information

Copyright

This is contained in the Copyright, Designs & Patents Act 1988.  It protects the expression of ideas in the form of artistic, literary, musical and dramatic works, sound recordings, broadcasts, films and typographical arrangements.  The duration of protection varies greatly between the differing types of protected works.

There is no need to register for protection in the UK as Copyright arises automatically.  In order for protection to arise, the work must be original and must satisfy the ‘qualification’ requirement.  This means that the author must be a UK citizen/domiciled in the UK or the article must have been first published/broadcast in the UK.

The author of the work is the first owner and can deal with it freely, such as licensing the use or assigning ownership.  This is subject to the exception where work is created in the course of employment, in which case the employer is the first owner.  When work is commissioned, the rights remain with the author subject to any express agreement to the contrary – for this reason it is vital to clearly state in any agreement exactly where the rights reside.

Instances of joint ownership can arise when 2 or more people create a protected work and their contribution is not distinguishable.  Consent of both joint proprietors is required for dealing with such a work.  An agreement should always be entered into in these circumstances setting out each contributors rights in relation to the work.

Infringement occurs when a copy is made of a ‘substantial part’ of a protected work.  This is a qualitative measure, not quantitative i.e. how much of the substance has been copied, not how much in terms of length.

Secondary infringement occurs when dealing with infringing copies by doing acts such as importing or distributing.

Passing Off and Registered Trade Marks

A right under passing off arises automatically when an entity uses a logo, name or other distinguishing mark to show that certain goods or services are produced by that entity. 

An action for passing off arises where another entity uses the same or similar logo, name or mark in relation to identical or similar goods or services. 

To succeed in a case for passing off:

• the claimant must have goodwill in the relevant mark;
• the defendant must make a misrepresentation leading to confusion in the public that the goods or services offered by the defendant are those of the claimant; and
• damage must be caused or likely to be caused to the claimant by that misrepresentation. 

Passing Off is often deemed inadequate protection due to the costly and lengthy procedure for enforcing.  There is a high evidentiary burden on the claimant to show goodwill, which may take the form of surveys and figures and that is just the first hurdle.  Even after that, there needs to be proof that the misrepresentation leads to confusion in the public and then the damage flowing from that.

The Trade Mark Act 1994 provides for registration of marks denoting trade origin.  The main benefit of having a registered trade mark is that the goodwill issue is presumed.  If an entity is infringing by using the same or similar mark, action can be taken on the basis of the registered mark.

There are various types of registration system – UK only, Community Trade Mark or Worldwide Trade Mark.  Costs vary accordingly and so the mark should only be registered where it will be used or it is anticipated that it will be used.  A UK registration costs £200 for a single mark in a single class and a further £50 for each additional class of goods or services.  The protection lasts for 10 years and can be renewed indefinitely.

It is important if considering using a mark in a country with a different writing system, such as China, to consider how the mark would be represented in that country and seek to protect that particular representation in that territory.

Registration is in relation to classes of goods or services.  It is important to identify the class in relation to which the mark will be used now and in the future.  It may be that you start manufacturing computers but in the future anticipate selling music.  Although this type of change is not necessarily foreseeable, any foreseeable diversification should be considered.

You can use the TM sign if the Trade Mark is not registered.

The sign ® can be used only if the mark has been registered.  It is unlawful to use this sign if the mark is not registered.

Design Rights

Design Right protection has a dual regime and so can arise automatically without the need for registration or it can be registered for simpler and better protection.  Design Rights protect the design of a product and so would cover the shape of a bottle, a car shape or a style of aerosol. 

Unregistered Design Rights (UDRs)

The Unregistered Design Right arises automatically.

Protection lasts for:

• 15 years from the end of the calendar year when the design document was first produced or the product made; or
• if the design is made available for sale or hire within 5 years of the above, 10 years from the end of the calendar year when that happened.
• whichever is the earlier.

The protection itself applies only to three dimensional aspects of the design.  Wallpaper or textiles will not be covered by this protection.  The right enables the owner to stop unauthorised copying.

In order for a design to attract protection, it needs to be original and must not be commonplace.  This is effectively a less onerous provision than for registered designs as it is possible to use an earlier design and adapt it.

To be successful in an action for infringement, the UDR owner will need to show that the design was copied directly and, much like copyright, it is important to keep good records for this purpose.

Registered Design Rights (RDRs)

The key components of a registered design are that it must be (1) new and (2) of individual character.  A development of an existing design is more likely to lack individual character and registration will therefore be harder.  The normal cost of registration is £65, but reduces to £35 if the design is textile principally made up of lace, checks or strips for registration in multiple applications.  Additional designs in multiple applications cost £40 each.  UK registration lasts for a period of 5 years and can be renewed in 5 year terms up to a maximum of 25 years.

The right of a registered design right holder is a monopolistic right to create a product/article to that design, or make a document enabling it to be produced, for commercial purposes. 

Infringement of the right occurs when anyone other than the owner of the right produces an article or creates a design document using that design.  The product should be considered holistically when looking at infringement.  There is no need to prove that there was direct copying of the design.

There is no symbol to signify that a design has been registered although some people choose to use the registration number as signifying that or D.  As with Trade Marks, it is an offence to claim/hold out that a design is registered when it is not.

Whilst the unregistered design right does exist, it is often preferred to obtain registered design rights which can be UK only, EU wide or international.

Patents

A Patent is a monopolistic right granted to an inventor to produce an invention.  It is a positive right in that it gives the right to do something rather than conferring the right to prevent others from doing it.

The first requirement for an invention to be patentable is that it must be novel.  Novel means that it does not form part of the ‘state of the art’ i.e. it is not already known to the public.  If the invention is disclosed to the public prior to the application, it will be defeated.

Inventions must also involve an inventive step.  It must not be an obvious development of an existing invention.  Someone skilled in the field must not immediately recognise the patent applied for as a simple development of an existing patent.

Finally, the patent must have industrial application.

Infringement arises out of use or disposal of the Patent without the owners consent during the lifetime of the Patent.  The lifetime of the Patent is 20 years from the date of the filing the application.

Image Rights

There is no specific protection of image in the UK, unlike countries such as the USA where it is a fairly well established principal.  The issue arises primarily in relation to the marketing of a product and the use of a well known face to suggest a connection of some sort to a product or service.

The protection in the UK is found in a collective of various other rights whether that be trade mark protection, passing off/false endorsement, data protection principles, Trade Descriptions Act or breach of trust and confidence.

The key issue to keep in mind is that if you are contemplating using a well known face or name in any promotional material, you must ensure that you have their express permission to do so.  If you don’t, you could find yourself being sued for false endorsement.  Equally, if your image is being used in connection with anything which you have not consented, you should consider whether action should be taken to prevent that use.

Data Protection

If you are going to be collecting and processing data that would be covered by the act, you must do so in accordance with 8 principles and will need to register with the Information Commissioner.

The protection covers personal data that would enable an individual to be identified either using that information alone or in connection with other information in the possession of the recipient. 

More stringent protection is provided for sensitive personal data which would identify religious beliefs, political affiliations or other such details in relation to an individual.

The main provision is that data must be processed fairly and lawfully.  The importance of this protection and getting it right has been highlighted, to their cost, by a number of public and private organisations failing in their duty recently.

Confidential Information

Confidentiality is an important concept in the business world and protection of confidential information is paramount to many a business operation.  This could be the secret recipe for a sauce, it could be the customer list or it could be where materials are sourced from.  Protection may arise through specific legislation, automatically or contractually.

In order for a duty of confidence to arise automatically, the information must:

·                     have the necessary quality of confidence

o                    limited public availability;

o                    capable of clear definition; and

·                     it must be communicated in circumstances imposing a duty of confidence.

That duty is breached if there is an unauthorised use of the information.

Whether the communication is in confidential circumstances it is a matter of fact but in certain circumstances, such as employer and employee, it is deemed to exist.

A confidentiality agreement is a vitally important weapon in a business persons armoury.  It is important ensure that the document covers the specific information that you are seeking to protect.  Once the secret is out, it is hard to make it a secret again!  An agreement will, however, provide the opportunity to obtain some form of relief for the secret being made public without your permission.

The content of this article does not constitute legal advice and should not be relied on as such. Specific advice should be sought about your specific circumstances.  For more information, please contact a member of the team.

At Vizards Tweedie LLP we can help you establish the existence of your Intellectual Property, how to exploit it and, when necessary, how to enforce your rights.