Introduction to
Intellectual
Property
Dr. Kirsty Brummell
Defining
Intellectual
Property
Intangible property resulting from creativity and innovation
Patents
Confidential
Information /
Know-How
(Trade Secrets)
Plant Varieties
Database
Rights
Why protect
Intellectual
Property?
➢ To stop other businesses/individuals from using what you
have created without permission i.e. your brand name,
designs, literary works, artistic works, invention
➢ Can help act as a deterrent to competitors and other businesses
from using your IP
➢ Helps you to control your business reputation and the value of your IP
➢ Provides you with opportunities to maximise on the commercial
potential of your IP through e.g. licensing and sales agreements
➢ Can help attract investors when they are looking at whether to
invest in your business
Trade Marks
Badge of
Origin
A trade mark means any sign which is capable of
distinguishing the goods or services of one
business/individual from those of other traders
Main brand
name
S logo
Cartoon character
Front of pack design
Other types
of Trade
Marks
Slogan
Shape
Colour
Position
Pattern
Tips for
Selecting a
Brand Name
✓ The more inventive, unusual, unique your brand
name/logo is, the easy it will be to protect as a
Trade Mark and stronger rights
✓ Avoid descriptive terms for your main brand name in
relation to products or services offered where
possible
✓ Avoid common terms in use in the general language
and in your trade
✓ Avoid using a brand name that could create confusion
as to the nature, quality or geographical origin of your
products or services
✓ Think about long term strategy and whether your brand
name/logo will be suitable if your business expands into
other product and service areas and markets
How to
protect your
Trade Mark
Trade Mark law in the UK is governed by the UK Trade Marks Act (1994)
Registered Trade Mark Rights
❖ The best way to protect your brand name/logo is through trade
mark registration
❖ Trade marks are territorial rights and trade mark applications can be
filed at national Trade Mark Offices e.g. at the UK Intellectual
Property Office or via an International Madrid trade mark system
(country designations).
Unregistered Trade Mark Rights
❖ Goodwill and reputation in relation to use of a trade mark built up
over time
❖ Protection through the common law tort of passing off
❖ Can be more difficult to prove compared with registered TM rights
Is your brand
name
available to
use and
register?
Importance of Trade Mark Clearance Searches
▪
It is advisable to carry out proper trade mark clearance searches
ideally prior to using and registering a brand name or logo
▪ Searches are made to determine whether there are any existing
trade mark rights which could be used to prevent the use and
registration of your brand name/logo
▪ Search results are analysed to determine risk levels to use
and registration of a trade mark
▪ Searches should ideally be made in those countries
in which you intend to sell your products
and services
Trade Mark
Registration
Process
UK TM Application
File Application
Examination (3-4 weeks)
Publication in UK
online TM journal
Opposition Period (2 months)
Registration and
issuing of Certificate
4 months approx
- Classification system of goods (1-34) and services (35-45)
- Once registered a trade mark can in theory be renewed
indefinitely (renewal due once every 10 years)
-
First trade mark filing can be used as priority date for further
TM Applications within 6 months of original filing date
Trade Mark
Applications
In Other
Countries
Overseas Trade Mark Applications
o Nationals – TM Applications filed in individual countries via their
national TM Offices
o EU Application – covers 27 Member States (and also UK during Brexit
transition period)
o
International Madrid Trade Mark System
- TM Applications filed at WIPO
- Country/Regional designations can be selected
- Based on ‘home’ TM Application
- Covers 122 countries
- Members represent more than 80% of world trade
- Benefits are cost-effectiveness and streamlining of admin
- Disadvantages - dependent on home country App
- time to register can take longer
Tips on using
your Trade
Mark
Trade Mark Use
▪ Appropriate Trade Mark usage is important for maintaining a mark’s
distinctiveness and preventing a possible loss of rights
▪ Use your trade mark followed by the common descriptive name of the
goods or services where possible/appropriate e.g. DIVINE chocolate
▪ Highlight your trade mark and place the TM or ® symbol as appropriate
next to your main trade mark. Note that the ® symbol can only be used
once a trade mark is registered
▪
Include a trade mark statement on your packaging/other materials and
website to show that your trade mark is owned by your business
▪ Where you have licensed your trade mark, you should ensure that use by
the licensee is controlled and in line with the points above – brand
guidelines
Introduction
to Design
Protection
o Designs can be protected via registered and unregistered design rights
o Registered designs protect the appearance of the whole or part of a
product
o The definition of what constitutes a product is quite broad – any
industrial or handicraft items (except computer programs) and can also
include packaging, labels, cartoon characters, graphic symbols, computer
icons, logos, patterns (textile design)
o Designs from various industries can be protected and range from every
day design products to a one-off designer product
o A few examples of well-known design products e.g. Coca-Cola bottle
shape, SMEG fridge, VESPA scooter
Design law in the UK is governed by The Registered Designs Act 1949
Design
Registration
Examples
How can you protect your Design?
3D
Character
Graphic Symbol
Dispensing
device
2D
packaging
Design
Protection
▪ Registered Designs provide legal protection against the unauthorised use
of your design – for up to 25 years in the UK
▪ Registrations can be obtained by filing Design Applications with the
relevant IP Office – in the UK e.g. at the UKIPO
▪ Registration can help attract investors and acts as a deterrent to copying
of your design by competitors and others. Also a useful tool when
negotiating a licence agreement
▪ Registration makes taking action against design infringement and
copying more straightforward
▪
In order for a design to be registrable it must be new and have individual
character
How can you protect your Design?
Design
Registration
Process
UK Design Application
File Application
Examination (2 weeks)
Registration and
design published
1-3 months approx
- Representations in the form of drawings or photographs
must be filed with the Application showing the relevant
views of the design
- Publication can be deferred for up to 12 months (not made
public)
-
First design filing can be used as priority date for further
Design Applications within 6 months of original filing date
Design
Protection
Tips
▪ Conduct design clearance searches, ideally before using your design and
filing any Applications
▪ Good practice to have clarity in terms of design ownership – document
the design development process, dates, creator names, keeping originals
safe, putting in place relevant agreements with e.g. designers when
commissioning designs
▪
Ideally better to file Design Applications before any disclosure. Where
disclosure required during design development process then good idea
to have in place non-disclosure agreements with e.g. any designers and
working partners
▪ Record the date of first public disclosure of the design (to ensure designs
are then filed before the end of the 12 month grace period in e.g. UK)
Introduction
to Copyright
Copyright law in the UK is governed by the CDPA 1988
➢ Copyright protects against unauthorised copying of literary, artistic,
musical and dramatic works
➢ Protects the expression or embodiment of a work which has been
created using some form of labour, skill or judgement
➢ Comes into existence automatically once a works is created and
recorded in some form
➢ The term of copyright protection for literary, artistic and musical works
is the life of an author plus 70 years
➢ The author of copyright is generally the first owner of copyright (usually
creator of the works)
Copyright
Tips
➢ Take steps to ensure that you or your business owns the copyright in the
works created where possible – through direct creation or where a
designer has created by taking an assignment
➢ Any original works are kept safely and evidence of the date of creation,
creator and date works are published to the public are recorded
➢ Document the process of creation of your copyright works by taking e.g.
photos/videos
➢ Marking your copyright work and materials with the © symbol can help
act as a deterrent against copying
➢ Having an IP professional countersign your original works, to show that
it has been seen on a given date and represented as being an original
work of the author
How can you help protect your Copyright?
Introduction
to Patents
➢ Patents protect inventions – something that can be made or used
➢ Territorial rights – Applications can be filed either via National (UKIPO),
European (EPO) or International (PCT) routes
➢ In order for a Patent to be granted it must be new, involve an inventive
step and be capable of industrial application
➢ Patent Application process takes around 3-4 years to grant for UK
➢ Patents usually last for 20 years in most countries including UK
➢ Once granted a Patent enables a patentee to prevent the making, using,
selling or importing of their patented invention (without permission)
The Patents Act 1977 is the main law governing the Patents System in the UK
Patent Tips
➢ Consider whether your invention is patentable – does it meet
patentability criteria?
➢ Consider ‘freedom to operate’ searches before filing a Patent
Application to check whether a similar invention already exists
➢ Do not disclose information about your Patent to the public prior to
filing a patent application (prior art)
➢ If working with other businesses/individuals in relation to your
invention, make sure that they sign a non-disclosure agreement
How can you help protect your invention?
Filing TM and Design Applications
Trade Mark and Design Searches
Monitoring and Watching Services
Portfolio Management & Maintenance
IP Audits and Strategy
Enforcement & Anti-Counterfeiting
Dispute Management
Commercialisation - licensing