Avoid Disasters - Protect Your Brand
Many companies do not pay sufficient attention to the legal protection of the intellectual property in their products of their brand. "Branding" is the collective term for the name of the product, its get-up, the promotional methods used for sales, and often involves the very image of the producer itself.
Method Of Protection
A "brand" can be protected by;-
- Patent
- Design Right
- Trade Mark
- Copyright
- Domain Names
- Confidentiality Agreements
The law of "passing off" is also a method if protection and is mentioned in section 7 below.
1. Patent Protection
Inventions of the brand owner may be protected by patent registrations. Protection can be afforded in respect of s new product or a new process of manufacture. Where the patent is granted in the UK, the brand owner will have monopoly over the particular invention must be new, involve an inventive step and be capable of industrial application. You must check it is not excluded under the Patents Act 1977. For instance "computer software per se" (protectable by copyright) and business methods are excluded from patent protection. However, the practice with regard to computer software has been relaxed somewhat.
2. Design Protection
The design of an article can be protected in different ways depending on the nature of the design. Where the design has aesthetic appeal and is applied industrially, it may be protected by a "Registered design right". Where the design is purely of a functional nature and does not appeal to the eye, it may be protected by "Unregistered design right". Where it is a "work of artistic craftsmanship", it may be protected by copyright. These are briefly explained as follows:
- "Registered design right": The design has to be novel and original and must have eye appeal in order to be registerable. This covers features of shape, configuration, pattern or ornament applied to an article by any industrial process. Certain designs are excluded, such as method or principle of construction, features of shape or configuration which are dictated solely by the function which the article has to perform and "must match" designs (i.e. features of shape or configuration which are dependant upon the appearance of another article of which the article is intended by the author of the design to form an integral part. The initial term of a registered design is 5 years, which is renewable up to maximum of 15 years at 5-year intervals. Like patents, "Registered design right" creates a monopoly over design. The owner can therefore pursue other persons using the registered design, even if that person has independently developed the design.
- "Unregistered design right": This is usually used to cover utilitarian designs which do not have eye appeal. Like copyright, "Unregistered design right arise automatically without registration when an original design has been either recorded in a design document or an article has been made to the design. The threshold of originality is considered to be fairly low, and may be satisfied when there is no direct copying. There are certain types of design that are excluded from the protection of"unregistered design right". These are method of construction, surface decoration, "must match" designs ( see "Registered design right" above ) and "must fit" designs (i.e. features of shape or configuration of an article which enable the article to be connected to or placed in, around or against another article so that either article my perform it function). "Unregistered design last for 15 years from making the article or 10 years from that marketing whichever is the shortest. During the past 5years of the protection, the owner must agree to licence the right to another person on request.
- "Work of artistic craftsmanship": This is not clearly defined and there have been a number of cases in which judges had sought to ascertain what "Work of artistic craftsmanship" Is. Essentially, it must involve some notion of craftsman ship and requires the article to have artistic appeal. There is, however, no consensus as to what is meant by artistic. Assuming that both the "artistic" and all the "craftsmanship" elements are satisfied, the "Work of artistic craftsmanship" will only qualify for protection id it is original. As protection for "work of artistic craftsmanship" is a type of copyright, it's protection lasts 70 years, unless the work is exploited by making copies by an industrial process, then protection if is limited to 25 years only. Packaging and labels are, however, specifically excluded from being "Work of artistic craftsman" and copyright (if any) in those are therefore subject to the full term of protection of 70 years.
3. Trade Mark Protection
In general, a trade mark is a mark which is used to designate the original of the product(s) or which provided a certain assurance of quality. Although it is not necessary to register a trade mark before using it as such, trade mark registrations are often crucial for brand owners to protect an enforce their rights over the brand. Under the Trade Marks Act 1994, the mark must be distinctive and capable of being represented graphically. It is possible to register not only words and logos, but also shapes, layouts, music (e.g. TV advert jingle) and even smell. A common problem with potential new trade marks is that they consist of names, geographical places or are descriptive of the goods and/or services being provided under the mark. Registration of such marks are very difficult as the Trade Marks registry will be of view that the mark should be open to be used by any other traders of the same name, at same place or marketing the same goods/services. To get around this problem, it is often desirable to use logos to make the mark more distinctive and/or "invent" new words. To complicate matters further the Registry regards any word on a phonetic basis. The owner of the registered trade mark has a monopoly over the use of the mark for the goods/services covered by the registration. Therefore, in essence, the owner of the trade mark registration would be able to prevent a third party using the same/similar mark for the same/similar goods/services covered by the registration without the owner's consent. The initial period of registration is 10 years and thereafter renewable every 10 years. Accordingly, a trade mark registration, and hence the monopoly of using it, is capable of subsisting perpetually which makes it particularly attractive to brand owners. Brand owners often licence their trade marks to, for example, their distributions or franchises. The brand owner must ensure that it has sufficient control over the quality of the goods/services and the way the trade marks are used under the licence agreement. Otherwise, not only is it at risk of losing control over the quality and image of the brand, it may also lose its trade mark registration.
As a brand becomes better known, it becomes more likely to be copied or imitated. It is only possible to bring trade mark infringement action if the trade mark is registered. The brand owner will have to rely on passing-off (see section 7) actions if the trade mark is unregistered. Were the offending mark is identical with the registered trade mark and is used for identical goods, it will be straightforward for the brand owner to prove infringement. However, it is very common to have look-alike products using marks that are not identical goods as the registered trade mark. If the mark is used for similar or identical goods as the registered mark, then the brand owner must show that there is or is likely to be confusion among the customers. In determining similarity, mark and sign must show that it has reputation and that an unfair advantage has been taken or a detriment is suffered. In assessing the extent of reputation, regard be had to a variety of factors including (but not limited to) the duration of its use and the size of the investment made on promoting the mark.
It is possible to registers a Community Trademark in the EU it is possible to register a "Community trademark". Under the system, one protection is made via any EU member country. If successful the applicant receives the equivalent of 15 marks (one in each member country). This is much cheaper and easier than applying for 15 marks separately. However, the risk is that if any one of the 15 marks is ever challenged successfully, the mark will be mark will be knocked out of all 15 registers leaving the registrant effectively unprotected. Therefore, it is also important to pursue trade mark registration in all countries where trade is envisaged.
4. Copyright Protection
Copyright covers a range of representations of expression, such as literary, artistic, musical and dramatic works, sound recording, film and broadcast. Copyright laws may be relied upon by a brand owner to prevent the copyright of all or a substantial part of its copyright work. However, it must be remembered that copyright of, for example, an idea, a concept, or a formula which may be protected by confidentiality agreements (see section 6). The copy right work must be original (i.e. not copied) and involve some knowledge, labour, judgement, skill or taste (which do not need to be substantial). Copyright subsist automatically, I.e. without the need of registration, generally for a duration of 70 years, although where an artistic work has been commercially exploited (for example, by industrially making and marketing), the period of protection is effectively reduced to 25 years (see Design Protection- Section 2). It is a well established principle that personal names cannot be protected by copyright, although signatures (assuming that it is more than just the printed letters of the name) may rely on copyright protection on the basis that it is an artistic work. Where the brand is, for example, the name of the designer, the brand owner would rely on the law of passing-off (see section 7) and, if the name is a registered trade mark, trade mark protection (see Section 3). Copyright, if created by an employee in the course of his employment, belongs to the employer. However, it is common for brand owners to commission external consultants to design packaging, posters and the like. In such cases, the copyright belongs to the consultants. It is therefore important for the brand owner to ensure that the contract commissioning the consultant contains an express assignment of the copyright to the brand owner.
The problem with enforcing copyright is that, often, the offending item is not an exact copy of the original work. One has to decide, therefore, whether there has been "substantial" copying. It can be important, where feasible, to indicate the copyright ownership on the copyright work itself.
5. Domain Names
Domain names have become an essential element of a building. Brand owners often wish to register domain names that are identical to the trade marks. .com, and (for UK), .uk are amongst the most popular top level domain names. Unlike trade mark registration, domain name registrations are not subject to checks by the registration bodies. There has been much case law concerning the conflict between the trade mark owners' rights and the fights of others to register domain names. There have been a number of cases where a person who has registered domain names. There have been a number of cases where a person who has registered a well-known trade mark as a domain name, with a view to profit unduly from the registration, has been ordered to transfer the domain name to the brand owner. In the UK, where an individual or company wishes to challenge the right of an existing domain name holder to the registration of a particular .uk domain name, the registration body, Nominet, offers a dispute resolution service. This is in the nature of a mediation service and Noiment does not have power to transfer domain names. On an international level, ICANN (The Internet Corporation for assigned Names and Number) offers a dispute resolution service regarding. com, .org and .Net top level domain names. WIPO (World intellectual Property Organisation) also has a domain name disputes resolution service.
6. Confidentiality Agreements
As mentioned above, certain important assets of a company such as business ideas and concepts may not be protectable by any of the methods set out above. Even If it can be regarded as confidential if it is freely available to the public. The brand owner therefore ensure that the confidential information does not get into the public domain by, for example, imposing a duty of confidentiality on those who has knowledge of the confidential information. In the normal course of business, it is sometimes necessary to disclose confidential information to third parties, for example, when the brand owner is seeking a joint venture with another company do develop a product of even when a distributor is appointed. The brand owner must ensure that, before it discloses any confidential information, the prospective partner is under obligation to keep the information confidential. Regarding the employees, who often have intimate knowledge of the product and know-how relating to it, the employment contracts should impose suitable confidentiality obligations not only during his employment, but also after the employment contract has been terminated.
7. The Law Of "Passing Off"
"Passing off" occurs when a manufacturer of goods falsely claims or implies that his goods are associated with a brand which has already acquired a reputation. If this misrepresentation unlikely to cause a significant section of the public to believe that a connection exits and if this is damaging to the brand-owner or his brand, then the law will take the view that the manufacturer concerned is unfairly trading off the established brand's reputation. If the brand-owner can satisfy the court on these matters, then he nay be able to get an order restraining the conduct complained of and/or damages.
Contact
Tony Forster Head of Company Commercial
Martino Burgess Associate
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This article summarises the law on issues which we believe may be of interest to your business. It is not a comprehensive review of the subjects and accordingly is published without responsibility for loss occasioned to any person(s) acting or refraining from action as a result of information published. This document is provided for information only and does not constitute legal advice. Professional legal advice should be obtained before taking or refraining from any action as a result of the contents of this document.