Everyone knows that patents, trade marks and registered designs have to be registered, that applications for patents and trade marks are examined, that all those registrations can be challenged and that it all costs money. But there are some intellectual property rights ("IPR") that cost nothing and these should be considered when budgeting for the protection of intellectual assets.
These fall into two groups:
- those created by a succession of judicial decisions (sometimes called "common law") such as the right to enforce and obligation of confidence or bring an action for passing off; and
- those created by British or EU legislation such as copyright, design rights, database rights and unregistered Community designs.
Some rights are alternatives to registrable rights such as the obligation of confidence and patents. Others supplement registrable rights such as the law of passing off and trade marks. I will consider each class of intellectual asset - that is to say, brands, design, technology and creative works - in turn,
Trade marks, business names, the get up of products, the layout and livery if business premises or other distinguishable signs can be protected by the law of passing off. The right to bring an action for passing off arises in the following circumstances:
- consumers of a product or service associate a supplier or its products or services with a particular sign;
- a competitor misleads such consumers by offering goods or services under a similar sign; and
- the supplier loses sales or suffers some other kind of loss and damage.
The action of passing off can sometimes be used to protect signs that cannot be registered as trade marks but there are two drawbacks. The first is that the action can only be brought once consumers have begun to associate a business or its goods and services with a particular sign. That is not always easy for start-ups or other small businesses. The second drawback is that complainants have to gather a lot of evidence about their goodwill or reputation and the alleged misrepresentation before an action can be launched. Thus, a passing off action tends to be more complex and expensive than an action for trade mark infringement.
There are five ways in which designs can be protected in the UK:
- new designs having individual character can be registered under the Registered Designs Act 1949;
- new designs having individual character can be registered as registered Community designs under the Community Design Regulation;
- designs that could be registered as registered designs or registered Community designs are protected from copying throughout the EU for up to 3 years as unregistered Community designs by the Community Design Regulation;
- aspects of shape or configuration of the whole or part of an article can be protected from copying by unregistered design right for between 10 and 15 years under Part III of the Copyright Designs and Patents Act 1988; and
- artwork for textiles, wall coverings and also surface decoration may be protected from copying as copyright works for the life of the author plus 70 years under Part I of the Copyright Designs and Patents Act 1988.
Registration of a design as a registered design confers a monopoly of a design whereas the other rights confer protection only against copying. The significance of the distinction is that a monopoly may be infringed by making, selling, importing, exporting, using or stocking a product that looks like a registered design even even without copying. The other rights are infringed only where copying has occurred and that is not always easy to prove.
Patents are monopolies that are granted for disclosing a new invention to the world. The law of confidence is the very opposite in that it can be used to keep technical information secret. An obligation of confidence arises when A ("the confider") discloses technical or other information that is not generally known the use or disclosure of which could harm the confider or benefit a third party ("confidential information") to B ("the confidante") expressly in confidence or in circumstances giving rise to an on obligation of confidence. The obligation continues for so long as the information remains secret. If is breached by using the information for a purpose other than the one for which it was disclosed or by passing it on to a third party without the confider's consent or other lawful excuse. The obligation subsists for so long as the information remains secret. One legitimate way of learning a business secret is by buying a product, taking it apart to see how it was made and reverse engineering it. There are however some products that cannot easily be reverse engineered such as food and drink. The recipes for chartreuse and Coca Cola have been kept secret for centuries.
Some new technologies such as computing and financial services cannot easily be protected by patents in the UK at any rate. The source code of a computer program is generally kept secret while the code itself (whether in digital impulses or human readable form is protected from unauthorized reproduction by copyright.
The casing and circuity of products with a short shelf life such as mobile phones, toys and consumer electronics can be protected from copying by unregistered design right.
An intellectual property right that can be used t protect compilations of data are database rights - that is to say the right to prevent unauthorized extraction and re-utilization of data held on databases.
Works of Art and Literature
Original artistic, dramatic, literary and musical works, broadcasts, films and sound recordings and published editions of typographical works can be protected from copying and other restricted acts for varying terms by Part I of the Copyright, Designs and Patents Act 1988.
Actors, dancers, musicians, singers and other performers can object to the unauthorized broadcasting, filming or taping of their performances by Part II of the Copyright, Designs and Patents Act 1988.
Publishers of an unpublished work in which copyright has expired are protected from unauthorized copying and other restricted acts by publication right.
The provisions relating to copyright, database right, publication rights and rights in performances are set out in an informal consolidation published by the Intellectual Property Office.
Intellectual Property Insurance
As with all IPR it is essential to consider how they will be enforced. In the case of a new business that is best achieved by before-the-event insurance.