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PROTECTING AND ENFORCING YOUR INTELLECTUAL PROPERTY
Like other forms of property, intellectual property needs
to be protected. Some of the most basic measures that should
be taken to safeguard intellectual property are set out below.
REGISTERED TRADE MARKS
Provided that you have has sufficient funds, the best
means of protecting a trade mark is usually by registration.
Once registered, it is essential to use a trade mark; if
a registered trade mark is not used for five years, it can
be declared invalid.
Care should also be taken only to use the trade mark in an
adjectival sense, as trade marks can become descriptive and
therefore cease to be valid, if used as a verb or a noun.
Some organisations go further than this and do not permit
their mark to be used in the body of any text. Two well-known
examples of marks that were lost due to misuse are "escalator"
and "aspirin", which have now become generic.
Placing the ® symbol next to a registered trade mark
draws attention to its status and helps to distinguish the
mark. This also provides a warning to any potential infringers.
It is worth putting a word mark in inverted commas or typing
it in upper case to show that it is a trade mark and to differentiate
the trade mark from surrounding text, which also helps to
maintain its distinctiveness.
There are various options for registration of trade marks.
These include national, (European) Community and International
(Madrid Protocol) Routes. Costs will vary from around £750
- £1,500. per country for national applications. Time
to registration could be anything from, 6 months to three
years.
Once registered, a trade mark may be protected by an action
for infringement. In cases of urgency, preliminary injunctions
may be obtained.
UNREGISTERED RIGHTS - PASSING OFF
Trade marks that are not registered can be protected to
an extent by using the ™ symbol. This does not indicate
that the mark is a registered trade mark but merely that the
organisation using the mark claims certain rights in it. It
serves as a useful warning to anybody who might pass off their
goods/services as those provided by somebody else. Using the
® symbol with a mark that is not registered is a criminal
offence.
It is also useful to keep press cuttings to demonstrate the
reputation that is associated with marks and "get-up".
These may be very useful evidence in respect of a claim for
passing off against another body that is using similar marks
and "get-up" to promote its activities.
The essentials of a passing off action are, first, the establishment
of goodwill and reputation, in the name or "get-up"
to be protected, second, a misrepresentation on the parts
of the Defendant and, third, damage or the real likelihood
of damage to the business of the claimant. Once again, preliminary
injunctions will be available in cases of urgency, particularly
where it might be possible to show inquantifiable damages
to the claimant. Similar actions are available in civil law
and other countries as unfair competition actions.
COPYRIGHT
Original copyright material should be kept in a safe place,
in case it needs to be produced during litigation. Originals
can be placed in an envelope, which is signed and dated across
the seal, and covered with clear tape. Alternatively, you
can also post it to yourself to provide independent evidence
of when the work was made.
A record of the author of a work, their nationality, when
the work was made or first published or the place of first
publication should also be kept, as they may be needed to
prove that the work qualifies for protection. If the author
is not from the European Union or countries such as the United
States and the work is first published outside such a country,
it may be worth taking advice on qualification.
The © symbol together with the name of the copyright
owner and the year of first publication should be placed on
copies of the work to preserve rights under international
conventions and to warn potential infringers.
Care should be taken with employment contracts and job descriptions.
If an employee creates a copyright work and it is not made
in the course of his employment, the copyright may belong
to the employee. Similarly, if people other than employees,
such as outside consultants or agencies, are to create copyright
for you, the copyright should be assigned or licensed (but
preferably assigned). Otherwise, your rights to use it will
be uncertain.
All documents of title i.e. employment contracts, assignments
and licences should be kept safely. Computer software is protected
by copyright, as a literary work. The copyright exists in
the underlying code.
Moral rights also subsist in copyright works, although these
rights are very limited in the case of works made by employees
in the course of their employment. Where possible, waivers
should be obtained from the author. Otherwise, they might
insist on being named as author or object to the work being
altered. For example, if the design consultant who produces
a logo does not waive his moral rights, he could use those
rights to prevent modification of the logo at a later stage.
This would not apply to an employee unless he were (or had
been) identified as the author.
Enforcement through courts is available in a similar way
to enforcement of other intellectual property rights.
DATABASE RIGHTS
A copy of the original database should be kept in a safe
place. Further copies should also be stored each time it is
significantly modified. The date of completion of the database
(or the date when it was first made available to the public,
if earlier) and the date of any significant modifications
should be recorded. The nationality and residence of the maker
should also be recorded as the right is not available to makers
from countries outside the European Economic Area that are
not established there. The name of the owner of the database
should be marked on each copy. The first owner of a database
right is the person or entity responsible for investing in
its creation.
Again, care should be taken with job descriptions and employment
contracts, as database right in any database created by an
employee outside his terms of employment may be owned by that
employee. Database right should also be assigned or, if that
is not possible, licensed, if it is created by consultants.
DESIGNS
Registration is the most effective way of protecting designs.
If the design is registerable, it should be kept secret pending
registration, as the right is granted to the first to register
unless it can be proved that they have infringed somebody
else's rights. It is therefore possible that an imitator may
register something similar, and the registration will be valid
unless you can prove that they copied. In addition, there
is a requirement to register the design within 12 months of
the date of the first non-confidential disclosure of the design.
The design registration system exists at both national and
(European) Community level.
Copies of the original drawings and models of the design
should also be kept, as with copyright. Similarly, a record
of designers and their employer or commissioner should be
kept in order to prove ownership. The first owner of a UK
design right is the commissioner and, if there is no commissioner,
then the employer of the designer (if the design is made in
the course of employment), and, failing that, the designer.
In the case of UK unregistered design right, in order to
prove that the work qualifies for protection, it is vital
to keep details of UK or EU nationality/habitual residence/place
of incorporation/or qualifying place of business of the first
owner. If none of the above applies, designs may still qualify
for protection if they are first marketed in the UK or EU
by an exclusive licensee who fulfils these criteria. If none
of the above apply, professional advice should be sought.
All documents of title relating to the design should also
be kept in a safe place.
The first owner of a Community design is the designer, unless
the design was created by an employee in the execution of
his duties or following the instructions given by his employer,
in which case the design will vest in the employer.
All goods that are protected by a registered design should
be marked with the registered design number to warn potential
infringers and to ensure that damages may be claimed in full.
The design number should no longer be applied when registration
has expired, as this is a criminal offence. Goods that are
protected by design right should be marked with an indication
of the ownership of design right.
Once again care should be taken with job descriptions and
employment and consultancy contracts.
PATENTS AND INVENTIONS
Patents protect noted products and processes that have
industrial; application.
It is vital to keep patentable inventions secret (apart from
relatively small numbers of disclosures under confidentiality
undertakings) until a patent has been applied for and, even
then, it may be beneficial to keep it secret until the application
is published, in case it is necessary to re-file. A single
non-confidential disclosure may be enough to prevent an invention
from being validly patented.
It is advisable to have an internal reporting system to ensure
that all inventions are properly documented. Notebooks should
be kept in order to prove the date when inventions are made,
and the steps taken to reduce inventions to practice, in order
to maximise the chances of winning US disputes over entitlement
to US patents (by somebody claiming ownership as the first
to invent - which is possible in the US). Inventions should
also be worked once a patent has been granted, as this will
prevent others from applying for a compulsory license (although
such licences are rare in the UK).
Patents are generally granted for 20 years and subject to
annual (and increasingly expensive) renewals. Enforcement
through the courts follows the same pattern as for enforcement's
of our intellectual property rights.
CONFIDENTIAL INFORMATION
Confidential information can only be protected if it is
kept confidential. Secrecy is therefore paramount and anybody
to whom the confidential information is revealed should be
obliged to execute confidentiality agreements beforehand.
Confidential information may be protected both in contract,
and at common law. Confidential information may often need
to be protected as part of moves against former employees.
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