Protecting your USPAlan Harper, Director, Intellectual Property

‒ Overview of IP rights

- Trade marks

- Designs

- Copyright

- Patents

‒ Commercialisation and Adding Value

Introduction

“Intellectual property can only protect

expressions not ideas”

The golden rule

Trade marks

Legal Definition:

‒ Any sign which is capable of being represented in the

register which allows the public to determine with

clarity and precision the subject matter afforded to the

proprietor.

‒ A trade mark may in particular consist of words

(including personal names), designs, letters,

numerals, colours, sounds or the shape of goods or

their packaging.

What is a trade mark?

‒ 11th Edition of Nice Classification System

‒ 45 groups of classes

‒ 1-34 relate to goods and 35-45 contain services

‒ 140 countries have adopted this classification system

Classification

Trade marks

‒ Marks which are devoid of distinctive character.

‒ UK Trade Mark Application for MOUTH WATERINGLY SPECIAL refused in respect of a range of food and drink goods on the grounds TM not sufficiently distinctive.

‒ Marks which are descriptive of goods/characteristics of goods, e.g. “SPICY” for a vindaloo curry.

‒ Marks which are deceptive e.g. Sicilian lemonade when lemons sourced elsewhere.

‒ Note acquired distinctiveness.

What is not registerable?

Examples of conventional word/logo trade

marks

‒ Sound and multimedia marks now easier to register.

‒ Examples of applied for marks:

- Metro-Goldwyn-Mayer Lion Roar

- Intel Inside jingle

Unconventional trade marks

‒ Grants a monopoly right.

‒ Intangible property right which can be assigned/licensed.

‒ Protects the brand and trade mark rights can be enforced

against others.

‒ Acts as a deterrent to opportunists, competitors and

copycats.

‒ Easier to prove rights in a registered trade mark than rely

on unregistered rights.

‒ A tangible asset can be used as security.

Why seek registered protection?

‒ UK Trade Mark Application at the UK Intellectual Property Office, often referred to as the UKIPO.

‒ Applications can be submitted immediately to secure a filing date.

‒ Registration occurs usually within 4-6 months.

‒ EU Trade Mark Application which covers 27 countries of the EU.

‒ Registration with 6-12 months. The trade mark certificate is valid from the date of filing.

‒ Trade mark registered for 10 years and renewal every 10 years indefinitely.

Trade mark application process

‒ Some trade marks are considered deserving of protection despite them being prima facie ineligible for registered trade mark protection. Usually as they are descriptive.

‒ Unregistered trade marks that have attracted significant goodwill can be protected using the law of passing off.

‒ Requirements for passing off are:

- Goodwill

- Misrepresentation

- Damage

‒ Successfully proving passing off has proven difficult.

Unregistered trade marks

Trade marks

‒ Is your brand available?

‒ What is the territorial scope of protection?

‒ Is your brand capable of being “registerable”?

‒ Will your use of the brand put your business at risk of infringement and/or reputational damage?

Key points to consider

.

Design rights

Legal Definition:

‒ “Design” means the appearance of the whole or a

part of a product resulting from the features of, in

particular, the lines, contours, colours, shape, texture

or materials of the product or its ornamentation.

‒ A design registration is a monopoly right i.e. a right to

stop anybody else using the registered design

irrespective of whether they intentionally copied it.

What is a design?

What can a design registration protect?

Example of some current registered designs:

The look or “get up” of a product. This includes the shape, ornamentation, configuration or

overall appearance.

Requirements for design registration

‒ Novelty

‒ Individual character

‒ Subject to limited initial examination

‒ Grace period

‒ Duration of up to 25 years

Individual character

‒ A new design must have individual character and should therefore create a different overall impression when compared to the prior art.

‒ The above is balanced against the design freedom available to the designer.

Why seek registered protection?

‒ Grants a monopoly right.

‒ Protects against identical or similar products.

‒ Cost effective means of protection.

‒ Multiple design registrations possible.

‒ Relatively straight-forward examination process

Unregistered designs

‒ Arises automatically.

‒ Designs must be original – not commonplace.

‒ Right to prevent copying.

‒ EU UDR – 3 years.

‒ UK UDR – 10/15 years.

Designs key points to consider

‒ Designs are a cost efficient way of obtaining

registered rights protection.

‒ Can provide long protection for the appearance

of a product or packaging.

Copyright

Covers a wide category of works:

‒ Original literary, dramatic, musical or artistic works

‒ Sound recordings, films or broadcasts, and

‒ The typographical arrangement of published editions.

What is copyright?

Copyright key features

‒ Low threshold for protection to exist.

‒ No registration requirements in this jurisdiction, can

be different in other countries.

‒ Long duration, currently life of the author plus 70

years for LDMAs.

‒ Strict liability offence that prevents others from

copying the work.

Copyright common issues

‒ Proving ownership

‒ Commissioned work

‒ No signed contract

‒ Employee rights

‒ Easy offence to commit due to “copy paste” culture

CopyrightSignificance of copyright protection

‒ Right vests in the author, so watch out for commissioned works.

‒ To enforce the rights holder must be able to prove the authors

identity, the original work and the date of creation.

CopyrightKey points to consider

‒ Patents protect inventions that are considered to solve a problem using a novel solution that includes an inventive step. The inventor is granted a monopoly over that invention for 20 years. There are some exclusions.

‒ The Anatomy of a Patent:

- Description

- Claims

- Drawings

- Abstract

PatentsWhat are patents?

Patent application process

‒ The Process:

- File the application

- Search

- Publication

- Substantive examination

- Grant/refusal

‒ It can take several years to obtain a granted patent.

‒ Can take a long time to obtain and require significant investment.

‒ They do provide a monopoly and prevent any unauthorised party from utilising the patented technology.

‒ Patents require full disclosure of the invention and this can make them unattractive to some.

PatentsKey points to consider

‒ Licensing your IP:

- Creates a passive revenue stream.

- Allows you to set out the rules.

- Can be terminated.

- Flexible so it can be structured in a way that suits your

business.

‒ Assigning your IP

Commercialising your IP

‒ IP stakes out a clear spot in the market for your business,

products, technology and brand.

‒ Strong brand value will mean customers will trust the

name.

‒ Allows you to capture and commercialise intangible

assets.

‒ A good IP strategy is often attractive to investors.

‒ IP can be used as security to borrow.

How IP can add value

‒ Protect your investment and innovation

‒ Tangible asset

‒ Increase value in business

‒ Safeguard against infringers and copycats

Conclusion – Protecting your USP

Questions & Answers

Disclaimer

The information contained in this document is confidential to you; it is not to be shown, quoted or referred to, in whole or in

part without our prior written consent. It has been prepared for the purposes of information only and is only valid as at today’s

date. It serves only to alert the reader to recent legal developments or provide general information regarding a legal topic and

to act as a guide; it is not a comprehensive or definitive statement of the law. It should therefore not be relied upon in place of

specific legal advice. We exclude all liability (in negligence or otherwise) arising from any reliance placed on the information

contained within this document by you (or any third party) for any purpose, to the maximum extent permitted by law.

Alan Harper, Director

Walker Morris LLP

+44 (0)113 399 1877

alan.harper@walkermorris.co.uk

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