Author: Tim Francis
Intellectual property protection – Why bother?
How do you protect your products and brand from competitors? Intellectual property protection is a key weapon of any business seeking to maintain and grow their market share.
There are numerous definitions of intellectual property but at their centre is the concept of “ideas”. Intellectual property is “ideas”: anything from the latest technology to artwork. It also encompasses logos, product names, recipes and processes.Protecting intellectual property legally enables a business to control who has access to their intellectual property and on what terms. The five main types intellectual property protection are trademarks, trade secrets, copyright, patents and registered designs. They all protect different types of intellectual property and have a preventive effect as well.
Buy, sell and rent out
Besides protecting your products and brand, intellectual property can potentially provide an additional source of income. Intellectual property can be bought, sold or licensed like any other piece of property. For example, you could license your intellectual property to allow another company to sell your product in a place you are unlikely to access yourself. Intellectual property protection can be expensive. Luckily, the number of lower cost options increases, for example via “The Intellectual Property Enterprises Court in the UK” and, when it comes into force, the new European Unitary Patent. It can also be cost effective to take out insurance to cover the legal costs of enforcing your intellectual property protection.
Trademarks are relevant for the vast majority of businesses and are all about protecting your brand. Typically, it is possible to register company names, product names and logos as trademarks. If you have a trademark, then you are able to prevent others from trading with that brand within the class you have registered it in. These classes are internationally agreed. When you register a trademark you choose which class to register it in. This is the class that is most relevant for your product, for example “Class 29” for cheese and “Class 30” for bread. For some trademarks more than one class may be relevant.
Search existing trademarks
You can’t register a trademark that is too similar to an existing trademark in the same class. Therefore, it is important to search for similar trademarks prior to registration. This can be done using various websites, such as the “trademark search tools” on the EUIPO. The EUIPO website is also a good source of other information on trademarks in Europe. Your trademark must not directly describe what you sell (for example, “organic bread”). Any such description must remain available for everybody to use.
You need to choose whether you would like your trademark to be valid in just one country or in multiple countries. If you want your trademark to be valid in more than one country then European trademarks can be registered online through the EUIPO website. For countries outside Europe WIPO offers a simplified way of registering trademarks in multiple countries. Costs for a European trademark currently start at 850 euros, covering all member states of the EU. They will last forever, but need to be renewed every 10 years, with a renewal fee of 850 euros and up.
Registration can be done by yourself or by a trademark attorney on your behalf. Trademark attorneys are also able to provide other advice around what is likely to be accepted, the enforcement of trademarks etcetera. Associations of trademark attorneys generally have membership tools that help you to identify a suitable attorney, such as ITMA.
If you don’t register your trademark you may still have some protection under “passing off”, although this is usually much harder to enforce. The logo, product name etcetera must have built up ‘goodwill’, a reputation.
2 Trade Secrets
Trade secrets are a valuable way of protecting intellectual property for anything that cannot be easily reverse engineered and as such, this would apply to most recipes. You don’t have to do anything to register a trade secret and legal protection for them varies from country to country but a key advantage is they last indefinitely as long as they can be kept confidential. It is important to take steps to keep the trade secret information confidential, such as limiting the number of employees with access to the confidential information and using confidentiality clauses in the employment contracts of employees and in agreements with business partners, other companies etcetera. Further information on trade secrets can be found on the WIPO website. A good example of a trade secret is the recipe for Coca-Cola.
Copyright covers a large range of different creative works and is relevant to every business. Coverage include text, images, film and video, and computer code. As a result, copyright protects websites and marketing materials, including videos, and any printing on packaging, including colours and images. Copyright arises automatically as soon as anything relevant is created. It is good practice, but not essential, to include the copyright symbol © with the company name and year of creation on anything that is copyright protected.
Copyright lasts a very long time – 70 years from the death of the creator, but for any business (in the UK) it is essential to make sure the creator assigns the IP to you, even if you pay them, as otherwise the copyright will remain with them, unless they are your employee. It is also necessary to get permission to use copyrighted material where you don’t own the copyright, for example photographs for your website or marketing material.
Patents provide protection for how a technology works, for example a food processing method. They are generally the most expensive form of intellectual property protection and it is important to seek advice from an IP attorney. CIPA or other patent attorney associations have a membership database that provides contact details of patent attorneys. The two key criteria for a patent are that the technology is novel and inventive. Inventive means non-obvious and needs to prevent granting patents for inventions of ‘normal’ product development.
In order to meet the novel criteria, you must not publically disclose your idea before filing a patent application, for example to another person outside your company, on the internet or in a newspaper. If you need to disclose your idea, then use a confidentiality agreement which will ensure that your idea isn’t disclosed publically. Information on confidentiality agreement in the UK, also called non-disclosure agreements, and template agreements can be found on the UK Intellectual Property Office website.
5 Registered Designs
A registered design protects the appearance of a product, including its shape. This could cover the packaging for a product if desired. A key advantage of a registered design over copyright is that you do not have to prove that someone has copied you to prevent them from using a design that is similar to yours. A design can be registered if it is novel and has its own individual character and protection lasts for 25 years if the registration is renewed every 5 years.
A design can be registered at a country level or a European level, where a Registered Community Design covers all member countries of the European Union and can be registered online at the EUIPO website, with costs starting at 350 Euros. The Hague System provides a means by which a design can easily be registered in multiple countries outside Europe. Patent attorneys can generally provide advice on registering a design.
Unregistered design right is another means of protecting designs. This protection arises automatically, however, you have to be able to prove that your design has been copied to enforce an unregistered design. With an unregistered design you have protection from copying of the 3D shape for 10 years in the UK or 3 years in Europe.