The digital revolution has dramatically changed how we interact with technology. Consumers are now also co-creators and technology is becoming increasingly commoditised, with companies sharing software and consumers building upon existing platforms. The only way companies can exploit this is to use and protect what is at the centre of the revolution, Intellectual Property (IP).
Depending on what your business model is, you may find that your IP is your primary asset. If properly protected, IP can be used to attract investors, grow your market share and keep your competitors from using your innovations.
This tip sheet will provide you with general guidance on how to protect your IP through the use of trade marks and how to benefit from copyright.
What are they and what do they do?
- The words “trade mark” and “brand” are used interchangeably – although “trade mark” usually refers to a particular word or logo whereas “brand” is used more broadly to describe a business’s overall branding (a “brand” may include a number of “trade marks”). A trade mark is a word or logo which is used to distinguish your goods and services from those of others, indicating the goodwill and reputation of your company as well as the consumer recognition, trust and loyalty that your brand enjoys.
- A trade mark gives you the right to exclusive use of the mark in connection with the goods and services for which it is registered.
- Registration of a trade mark gives you the right to sue for infringement any person who uses an identical or similar mark in connection with identical or similar goods.
- A registered trade mark is also a valuable commercial asset that can be licensed or assigned to others and renewed indefinitely.
- Consult an expert in trade mark law before choosing your trade mark as it is important to check that your trade mark is both protectable (not all words are protectable) and that your trade mark does not conflict with another business’s trade mark.
- Don’t commit to a new trade mark without a proper search to ensure your trade mark does not conflict with another business’s trade mark.
How can I apply to register my trade mark?
- Assuming no-one objects to your trade mark, it generally takes 6 months from filing the application until the registration of the trade mark is granted.
- Trade marks can be filed nationally in relevant EU Member States. Alternatively, it is possible to file a single EU-wide Community Trade Mark (CTM). A CTM is incredibly efficient and cost effective as it offers protection across all 28 EU Member States through a single application. The cost of filing a CTM is similar to the cost of filing 3 national applications.
- Trade mark applications are examined by the trade mark registry to ensure the application meets the relevant legal requirements. Most importantly, the trade mark registry will ensure that your trade mark is sufficiently distinctive. Terms that are descriptive are not registrable, nor are terms or expressions that are not distinctive. To be an effective trade mark, the trade mark should be eye catching and memorable and capable of distinguishing your goods or services from those of your competitors. Once your trade mark application is accepted by the trade marks registry, there will be a period of time (the “opposition period”) during which any business that objects to the application (generally because the application is too similar to earlier trade marks) can file an opposition. An opposition is like a mini-litigation and will be determined by the trade mark registry. Opposition proceedings usually last about 12 to 18 months.
- In the EU, there is no requirement for you to prove that the trade mark is, or will be, used for the goods and services covered by the trade mark at the time of filing – it is therefore possible to file for a broad range of goods and services which helps prevent the need to file new applications as your business grows and evolves. However, once the mark has been registered for 5 years, third parties can apply to revoke your mark if it has not been used and you will need to be able to prove use of your mark to rely on it in infringement or opposition proceedings.
Practical tips for your trade mark policy
- Protect your brand in all relevant countries;
- have a well-thought out plan for policing your brand, enforcing your rights as appropriate; and
- ensure your trade mark protection keeps up with your growing and evolving business.
What is Copyright?
- Copyright is a right that arises automatically on the creation of a work. There are a variety of works that are protected by copyright, including: written works (of any kind), digital works, drawings, graphs, paintings, broadcasts, photographs, videos, music, computer software, dramatic works and certain databases. To the extent that your brand or trade mark is a logo, therefore, it will also be protected by copyright (in addition to registered trade mark protection).
- To get copyright protection, the work must be original and tangible. It is sometimes said that copyright protects the expression of an idea as opposed to the idea itself (although that distinction is sometimes blurred).
- There is no need to register copyright to obtain protection (save for in the US – see [link]). Although copyright is a national right, there are a number of international treaties in place that ensure reciprocal protection of copyright works in most jurisdictions throughout the world.
- In Europe, copyright law is a mix of European Directives which harmonise the law of some aspects of copyright and national law. The result is that protection and enforcement of copyright can differ depending on the particular type of work involved and the particular jurisdiction.
What does it protect?
- If you are the owner of a copyright work, you can prevent anyone else from copying, adapting, distributing, renting or otherwise dealing with the work – or a “substantial part” of the work. Whether or not a “substantial part” of a work has been copied is judged both on a qualitative and quantitative basis – it is not merely a matter of determining how much has been copied but what has been copied as well.
- As stated above, copyright does not, generally, protect an idea but rather, the expression of that idea. So, a copyright work is (generally speaking) not infringed if someone takes the underlying concept but expresses it in a different way.
Who owns the copyright?
- In the UK, the first owner of copyright is the person who created the work (the author). Copyright is a property right and can be transferred or licensed by way of contract. If the author is an employee, the law provides that the employer is the first owner of any copyright (in most circumstances).
- However, where the author is one of your contractors or other third party (e.g. a design agency or outsourcing company), the copyright will belong to that third party unless a provision is included your agreement with them which transfers ownership of the copyright to you.
Practical copyright tips
- Since there is no register of copyright works, it is important to maintain evidence, where possible, of the date of creation of the work, the effort that has gone into creating the work and who the owner of the copyright is.
- If you upload copyright works onto the internet be aware that (a) it is extremely easy for that work to be copied and re-distributed and (b) uploading onto certain sites may mean that you can lose control over the copyright work to the host site. It is important to check terms & conditions of those any sites to which you intend to upload works and that you are comfortable with them.