What is Intellectual Property?
Intellectual property (IP) is the umbrella term for the intelligence behind products that makes them unique and functional. It is increasingly the driver of wealth creation in the economy.
IP is a valuable asset and often very costly to create.
To obtain protection for your IP, you must have created it.
Because IP law, and the degree of protection available, varies greatly across the world, it is always wise to consider carefully the likely markets for which protection is needed, the costs associated with obtaining formal IP protection in those markets and the risks associated with the application process.
IP can exist in many forms:
Trademarks can be words, symbols or both and are best protected by registration at the Intellectual Property Office (IPO). Registration in the UK is valid for the UK only and lasts for 10 years.
A trademark is registered according to a 'class of use', so, for example, the same trademark could be registered by two different organisations for two different use classes. As long as no confusion arose between the two, this would not cause any problems.
Generally, it is best to register your trademark(s) in all the use classes in which you intend to use them and in the national markets in which you intend to use them. A search should be carried out before deciding to use a particular trademark as an application to register a trademark may be opposed by another business with a similar mark if it thinks your registration might harm it if granted.
Contesting trademark actions is notoriously complex.
Design rights apply to specific designs of products. A design registration lasts for 25 years and must be renewed every 5 years. Most designs can be registered, but those of 'bolt-on' products which fit onto other products would not normally be allowed to be registered if, for example, the practical effect were to allow the design owner a monopoly on the supply of spare parts for a machine.
A patent is legal protection applied to an invention which has a unique feature and is more than an obvious application of knowledge in the public domain.
In practice, patents are difficult to obtain and enforcing them can be very expensive. Also, a filed patent application is public knowledge, so once the application is made, your competitors may become aware of it.
For a patent to be granted, the subject matter of the patent cannot be in the public domain, which could include talking about it in advance of the patent being filed.
Before considering applying for a patent, both technical and commercial legal advice should be taken. Sometimes, better protection can be achieved for less by using design right protection and/or confidentiality agreements.
Copyright (which includes software code)
The right to copyright protection is automatic in the UK, but not necessarily elsewhere (signatories to the Berne Convention provide copyright protection in their countries). It applies to most original work and protection lasts for the lifetime of the artist plus a further 70 years (in other countries it is the lifetime of the artist plus 50 years).
Note that the functionality of software (what it does as far as the user is concerned) is not capable of being copyrighted. If someone sees a software package you create and writes a new and better system to perform the same function, there is nothing you can do about it unless they have copied your computer code or your design.
Domain Name etc. Disputes
Disputes over domain names and 'passing off' (which is the legal term for when one business presents itself as if it were another to effectively trade off the other business's goodwill) are quite common. Fortunately, Nominet, the world registry of domain names, has a dispute resolution procedure and can transfer a domain name from an infringer to the proper owner when this can be justified.
As well as the specific things you can do (see below), there are general remedies available to obtain compensation if your IP rights are infringed.
When international arbitration proceedings led to a decision that went against an online gaming firm client and resulted in them having to transfer valuable domain names to the claimant, the only way to stop this from happening was to issue substantive proceedings in the IPEC court at very short notice.
After a strongly-argued case, our clients overturned the original arbitrators decision and kept their domain names.
What Can I do if Someone Infringes My Intellectual Property Rights?
The general procedure for dealing with infringements of Intellectual Property (IP) follows a pattern, and a succession of defences are typically raised if an allegation of IP infringement is made.
One must ascertain whether the IP is capable of being protected and is in fact protected in the jurisdiction in which the alleged infringement takes place.
It is commonly argued that the IP protection claimed is not valid because the IP rights were incorrectly granted. Most forms of IP protection have limited territorial scope and only last for a limited time, so making sure the protection relied on is still valid is essential.
In patent cases, it is often argued that the patent should be revoked because its subject matter was 'obvious' or in the public domain.
For damages to be awarded, the infringement has to have caused a loss and that loss has to be demonstrated and its value calculated. Here, expert witness evidence is often crucial.
One of the common arguments regarding designs and trade names is over whether an average consumer would have been deceived into thinking that a product with a similar name or packaging or design is the same as the 'protected' product and might therefore buy it instead. A defendant will normally deny that any confusion would arise and that, if it did, the loss would be at most trivial.
The best course of action to take will depend on a variety of factors, such as:
- whether the infringer is likely to negotiate;
- the type of infringement and the jurisdiction(s) concerned;
- the costs of enforcement action; and
- economic factors such as the likelihood of being paid if the outcome is successful and the value of compensation likely to be received.
Once the infringement of IP has been proven, a variety of actions can be taken, the aim of which is commercial compensation for the loss suffered. In the UK, in such cases the loser pays the winner's legal costs, so there is a powerful incentive to come to the table and negotiate a settlement without having to go to court.
Under UK law, the infringer can be required to pay all the profits made by the infringement to the rightful owner of the IP.
If the infringement is causing significant damage before the matter can be resolved, it may be possible to seek an injunction, which is a legal order to stop the infringement. An injunction against future use is the normal outcome of a successful action for IP infringement as well.
When a home improvement company found another company offering similar products under a similar name, the potential for damage to the company's business was clear. The threat of action for 'passing off' and breaches of trademarks and copyright was sufficient to achieve a prompt resolution of the matter and a satisfactory compensation package was negotiated.
How Selachii Can Help
Selachii is a dynamic litigation and dispute resolution law firm based in Kensington, London. We put the best interests of our clients at the heart of everything we do. We work with both businesses and private individuals, giving them legal advice and support which is unique to them and their situation.
IP Disputes demand a strongly commercial approach. We are experienced in dealing with IP disputes of all kinds and take the highly commercial approach to their conduct needed to achieve optimum results.
We don’t believe in simply handing out one-size-fits-all solutions to problems. We will focus on your specific circumstances before working out the best and most cost-effective way of helping you achieve your aims.