Intellectual property rights
This article provides an overview of the law in this area. You should talk to James Sarjantson for a complete understanding of how it may affect your particular circumstances.
Intellectual property rights (“IPRs”) are generally territorial. In other words, whilst a UK patent will protect the patented invention in the UK, it will have no effect in America (and vice versa). Therefore, IPR protection needs to be acquired in all key territories in which the client trades. Copyright is however an exception to this principle as a result of a long-standing international convention.
Some IPRs are registered rights, in that the right does not exist until it is registered at the appropriate national registry, whereas other IPRs arise automatically upon creation of the relevant work. Patents, Registered Trade Marks and Registered Designs are registered rights; Copyright and Unregistered Design Right do not require registration in order to exist.
REGISTERED TRADE MARKS
Registered trade mark rights protect signs (including logos, words or pictures) that distinguish one trader’s goods/services from those of another. A registered trade mark lasts initially for 10 years, and can be renewed for further 10 year periods indefinitely. Trade marks are registered in relation to particular classes of goods and services (there are currently 45 different classes of goods/services within which you can register a trade mark). Trade marks give the owner wide-ranging rights to prevent the use by third parties of identical or similar signs on identical or similar goods/services to those in relation to which the mark is registered.
The Intellectual Property Office charge £170 for one trade mark application in one “class” of goods/services, plus a further £50 for each extra class of goods/services that you want the mark to cover.
Our fees start at £360 plus VAT , provided the mark is not opposed or objected to during the application process.
It is also possible to get a Community trade mark, which covers the whole of the EU. The filing fees for a Community trade mark start at €900 and our fees start at £695 plus VAT.
It generally takes around 6 months to obtain a trade mark registration, although when the registration is confirmed, the registration takes effect as from the date of filing of the original application.
REGISTERED & UNREGISTERED DESIGNS
Registered design right protects both three dimensional and two dimensional designs. Such designs must be new, but the designer does have a 12 month grace period after initially disclosing his design in which to file an application. The design must also have “individual character” – in that it must give a different overall impression from previous designs. Registered design protection can last for up to 25 years, subject to renewal every 5 years. The procedure for registration is very cheap and very quick. The application fees start at only £60.
Unregistered design right protects the shape or configuration of original industrial designs. The right lasts for a maximum of 15 years and is a right to prevent the design being copied (rather than the wider, monopoly right granted by a patent, which can be infringed even if the invention in question had not been knowingly copied).
Copyright protects the permanent expression of original artistic, literary, dramatic or musical works, sound recordings, film, broadcasts and cable programs. Copyright gives the owner the exclusive right to exploit the work for a period up to 70 years from the death of the author of the work (depending on the type of work involved). The owner of a copyright work can prevent, amongst other things, copying of the work and the issuing of copies to the public, but cannot prevent independently created works (even if identical) entering the market. Copyright in a work is first owned by the author, unless that work was created by an employee in the course of his employment, in which case it will belong to the employer. As a general rule, if a copyright work is commissioned, the work will belong to the person being commissioned rather than the customer.
Patents protect industrially-applicable inventions that are both new and involve an inventive step over the state of the art in a particular field. Owners of patents are given a monopoly for up to 20 years on making and selling (amongst other things) their invention. As a result of the wide protection given to patentees, the requirements for registration are very strictly observed.
OTHER RELEVANT RIGHTS
Information that is not in the public domain which is imparted to another person in confidence, is protected under the law of confidential information. As such, a person can be sued for unlawfully disclosing confidential information, provided the owner of the confidential information can prove a loss. The law of Passing-off protects traders’ goodwill in the distinctive “get up” of their goods or services, by giving them a cause of action against third parties who misrepresent to the public a connection with that trader, causing them a loss.