Avoid Disasters – Protect Your Brand

Barry Riley

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;-

1.         Patent

2.         Design Right

3.         Trade Mark

4.         Copyright

5.         Confidentiality Agreements

The law of “passing off” is also a method if protection and is mentioned in section 6 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.  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” also.   Unregistered design rights last for 15 years from making the article or 10 years from that marketing whichever is the shortest.

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.

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.

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 6) 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.

It is also possible to register a Community Trademark in the EU as a “Community trademark”.  Under the system, one protection is made via any EU member country.

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 5).  The copyright 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, usually for a duration of 70 years + the lifetime of the author.

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.         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.

6.         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.

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.

For further information please contact Barry Riley.

briley@metcalfes.co.uk

0117 9453 042

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