FAQs Trade Marks
Written by Michael Coyle on 24 December 2003« Return to Reading Room
1. What is intellectual property?
Intellectual Property (or "IP") is the term used to cover "intangible assets", therefore, something owned by an individual or company that does not have a fixed physical form; with the exception of a description or image on paper.
The term IP covers a wide range of aspects, including: · Inventions; · trademarks; · brand names; · logos, art and designs; · music, software codes; · confidential information and trade secrets.
Many forms of IP rights are registerable. Such rights include: Patents for inventions; · design registrations; · trademark registrations.
The exception is the area is copyright. Areas of copyright include creative designs and common law rights within the area of trademarks. More recently copyright can be applied to software also.
2. How do patents, trademarks, designs and copyright differ from each other?
It is important not to confuse the core elements of IP.
Patents: these concern the area of new inventions and the idea/thought behind the invention.
Trade mark: the registration of a trade mark allows the protection of brand names and/or logos. A trade mark can protect brand names/logos for both products and services.
Design: the appearance of a product can be protected by registering a design. The way a product work or the mechanics of it are not covered under such a registration.
Copyright: this protects the expression of ideas, not the idea itself. The ideas must be "original works of ownership and subsists in various types of work. The main forms are Literary , Musical and Artistic works. The words on a page, the specific arrangement of paint on a canvass or the specific source code in a computer program through to scribbling in a page can all be considered as copyright as long as they are "original"
3. What are patents?
Patents are designed to protect newly developed or improved industrial, chemical and biotechnological products or processes (new inventions) and can also cover computer software. One could also refer to patents as the 'Inventors Rights'. By registering a Patent you are entailed to prevent others from making and using your invention for a fixed period of time. This is normally a period of 20 years. After this period has expired the rights to the patent may be used by others to produce or use your invention. Without a registration, it is difficult to prevent others from making and using your invention.
Not all inventions can be patented. To be able to patent an invention, it must be new and it must be inventive. By failing to be so, it is unlikely to be awarded a patent registration.
An invention tends only to be considered as "new" if it, · has not been shown or · described to the public (whether in a publication, by exhibition or verbally) world-wide;
prior to filing a patent application. Selling, getting orders or trying to get orders can also make a patent registration invalid. To ensure that a registration is valid the new inventions must be kept secret. Discussions concerning selling, marketing etc. could also invalidate the registration. Therefore, all the new invention details must be kept secret if you want to obtain valid registration for them in the future.
4. What are trade marks?
A trademark is a brand name or logo. Some countries allow the shape, colour and even the smell to be registered that can be associated with a product or service with a company or person. Brand names or logos that are associated to a service with a particular company are sometimes called "service marks". These service marks are governed under the umbrella of trademarks. Some countries allow fragrances, colours and shapes or a product to be registered.
By obtaining a trademark you have the right to prevent others from using the same or a similar mark on the same or similar products or services. The duration of a trademark is indefinite or as long as you wish.
A trademark protects the owner from unfair competition, forgery, and protects the goodwill of a business. It also a means for a consumer to identify a service or product.
Within the UK, trademarks come in two forms. Registered trademarks and common law rights. Counties that provide rights to those who have registered a trademark first are known as "first to file counties". Those who use common law rights are referred to as "first to use countries".
Even if you have common law rights in your trademark through the use of the mark, these rights can be difficult to enforce. It is much simpler and safer (and usually more cost effective) to stop others using your mark unlawfully if the mark has been registered.
For a trademark to be registerable;
· it must be new (not registered by another) and · it must be distinctive (more than just an obvious word or picture and it must not describe the nature or any features of the product or service concerned).
5. What are common law rights in trade marks?
In some countries, trademark rights belong to the business (or individual) that uses the mark first. It does not have to be registered. The unregistered rights in a mark are called "common law rights". This is because they are given by the virtue of a court's decision in "common law" countries.
It is always a benefit to register a mark rather than rely on the common law. This is because on the face of it you have taken the steps to ensure that you officially own the right. It is always safer in a dispute situation by providing a trademark certificate rather than sifting through business records attempting to gather information and provide evidence showing that you own the right.
6. What are designs?
Design registrations, commonly referred to as designs, cover the external appearance of newly developed industrial product or pattern.
By having a registered design you are entitled to prevent others from copying or making similar copies of you design. The fixed period terms various from country to country and is between 10-25 years. It is very difficult prevent others using or even copying your design without registration.
If you are found to have infringed the design rights of another party, it could prove extremely costly. It is therefore always beneficial to conduct a design search to ensure no rights are infringed.
7. What is copyright?
Copyright is the right to prevent others from copying original "works". It is a right that is vested not only in the authors of original literary, dramatic, musical and artistic works but also in sound recordings, films, broadcasts and cable programmes. More recently, software can also be protected.
Copyright exists automatically, therefore there is no formal requirement to register work for it to be protected.
It is always wise to ensure that once a work is completed that you somehow get it dated clearly and filed. This will ensure that in the event of a dispute you have clear evidence that 'you own' the work. Only identical copies or copies comprising of a large part of the work is protected.
The duration of a copyright varies up to 70 years depending on the type of work.
8. What is the Patent Cooperation Treaty?
The Patent Cooperation Treaty (PCT) introduced the PCT system. This basically provides a method that allows the filing of patent applications in over 100 signatory countries. This system has ensured that the PCT filing method has become simpler when filing applications globally.
9. What is the European Patent Convention?
The European Patent Convention (EPC) is a cost effective and popular method of filling patent applications that cover most European countries.
10. What is the Community Trade Mark Treaty?
The Community Trade Mark Treaty (CTM) provides for a single trademark right effective in all member countries of the European Union (EU). Unlike the Madrid Agreement and the Madrid Protocol it does not bundle the trademark registrations. Specific countries cannot be selected as a CTM registration covers all of the EU automatically.
11. What is the Madrid Agreement/Protocol (International trademarks)?
The World Intellectual Property Organisation (WIPO) has introduced the Madrid Agreement and the Madrid Protocol. These are international treaties that provide a means of applying and protecting a mark by means of a single application (also known as International Applications). Although the two are slightly different the effect is the same.
A third party can however cancel a mark applied under the CTM if it is not used within a certain period of time. This is applicable in all countries.
12. What is the Hague Agreement Concerning the International Deposit of Designs?
The Hague Agreement Concerning the International Deposit of Designs allows you to protect designs in a limited number of countries by filing a single application. The World Intellectual Property Organisation (WIPO) administers this treaty.
13. What do "©", "TM", "®" "SM", "patent pending", "patent regn. no.", "regd. design no." and "design patent no." mean?
"©" - copyright Informs others that the work is to be copyright by the author. Being a globally recognised symbol this means that the work in questions cannot be copied in any country. Legal advice should be sought before using the symbol to ensure that the copyright protection period has not lapsed.
"TM" - Trade Mark Informs others that the word or brand name concerned is a trademark. To ensure that the company is rightfully owning the mark it is always prudent to have a search conducted.
"®" - Registered Trade Mark This informs others that the mark is registered. Registration can be effective in more that one county. Trade marks are only valid in the country they are covering (an exception is the International Trade Mark). Therefore, registration of a trademark in one country does not necessarily mean that the company concerned has registrations in other countries.
"SM" - Service Mark Services Marks are similar to TM's. Service marks are brand names and logos used to sell services.
Patent Pending The above term means that an application for registration of a patent has been filed, but the patent has not been confirmed. It does not mean that the applicant owns any rights behind the idea. Only confirmation that the patent has been awarded grants the applicant rights.
Regd. Patent No This means that the concept behind the product concerned has been patented in at least one country. Patents only cover a single country (with the exception of a European Patent). Registration of a patent in one country does not mean that the company has registrations in other countries.
Regd. Design No./Design Patent No. This means that the design of the product concerned has been registered in at least one country. Design registrations and design patents cover a single country. Registration in one country does not mean that the company has registrations in other countries.
14. What is Passing Off?
Passing off is concerned with the protection of the goodwill in a business and/or product and/or service. It often occurs when a party uses another's trademarks, brand names and maybe other features without permission, to mislead consumers. They are therefore 'passing off' or misrepresenting their products for another party's. Strictly speaking the area of 'passing off' is not an intellectual property right but a tort and has been developed by the courts in common law.
The principle aim of bringing an action in passing off is to prevent one person benefiting from the goodwill inherent in the business, product or service of another.
For further information, please contact Michael Coylle at Lawdit
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