A basic guide to intellectual property principles

Partner Paul Gordon has prepared this simple guide to intellectual property principles, designed to help you decide whether you need to take any action to protect your interests in the UK.

The guide gives a simple overview of patents, design rights, copyright, trademarks and passing off, based on the law as at 4 June 2007.

It is not intended to be a definitive list of all intellectual property principles.

Patents

Patents protect ‘inventions’. The invention must be:

• new
• involve an inventive step, and
• be capable of industrial application.

Certain ideas cannot be patented. Unlike some of the legal principles below, the protection does not arise automatically. To gain protection in the UK you need to apply to the Intellectual Property Office (IPO).

If an inventor unknowingly announced his invention the day before filing his application, the invention would be in the public domain before the application was made. The inventor would not, then, be able to gain patent protection. It is therefore imperative that an application is made as soon as possible.

If the patent is granted, the invention will have protection for 20 years.

Design rights

A design is the appearance of a product, in particular, the shape, texture, colour, materials used, contours and ornamentation.

To qualify as a new design, the overall impression should be different from any existing design.

Designs may be subject to three types of protection:

• unregistered design rights
• registered design rights
• copyright.

Unregistered design rights

This is an automatic right, which protects aspects of shape and configuration of a three-dimensional article. The right exists from the point of the recorded design or when the article was made to that design. Generally, the right lasts for 15 years. Actions for breach of these rights are often difficult to establish in that you have to prove (a) that you hold the right and (b) that deliberate copying has taken place.

Registered design rights

This provides further protection for the appearance of the whole or part of an item resulting particularly from the features of lines, contours, colours, shape texture and materials of a product. It covers both two-dimensional and three-dimensional items. It lasts up to 25 years if registered with IPO (subject to periodic renewal). You will not have to prove to copy in infringement actions. This is more likely to act as a deterrent than simply relying on unregistered design protection. It will also make it easier for you to exploit the item, whether selling the rights or by licence.

Copyright

Copyright protects these categories of works:

• original literary, dramatic, musical or artistic works.
• sound recordings, films or broadcasts.
• the typographical arrangements of published editions.

Copyright allows you to protect your material and stop others from reproducing your work without your permission. The right arises automatically on creation of the work.

The number of years that copyright protection will last varies, depending on the nature of the work.

Trademarks

Many businesses represent their name in a certain manner. It is wise to consider registering that as a trademark at the IPO. Registering your trademark gives you the exclusive right to use your mark for the goods and services that it covers in the UK.

If you register your mark, it may dissuade competitors from using your mark, or a similar mark, without your permission. It will allow you to sell or licence the use of the mark.

If you do not register your mark and a dispute arises, you would have to rely on a claim for passing off, which tends to be more expensive and complicated.

[NOTE: Trademark law changed at the beginning of October 2007. A new system for applications means that owners of trademarks are now responsible for monitoring and enforcing their rights. Contact us for further information]

Passing off

This is an action in tort, used when someone else is seeking to benefit from the goodwill of your business. To succeed in such activities you would have to show:

• that you have goodwill in the reputation of your goods and services
• that the other party has made a misrepresentation in the course of trade, leading or likely to lead the public to believe that the goods or services offered by the other party are yours
• that your business has or is likely to suffer consequential damage.

Anyone who brings an action for passing off will usually have to present survey evidence to the court to support their case.

Partner Paul Gordon joined Willans from a City law firm in January 2005. He has specialised in dispute resolution since qualifying and has handled a broad range of commercial matters, including intellectual property, director and shareholder disputes, and engineering and construction cases.

Paul has acted for many notable clients including American Express, PizzaExpress, and a number of major financial loan companies such as GE Capital and Morgan Stanley, as well as many businesses with local interests.

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