A guide to Intellectual Property
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Written on 21 May
Many forms of IP rights are registerable. Such rights include:
· Patents for inventions;
· design registrations;
· trade mark registrations.
2. How do patents, trade marks, designs and copyright differ
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
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 trade mark 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 trade marks. Some countries allow
fragrances, colours and shapes or a product to be registered.
By obtaining a trade mark 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 trade mark is indefinite or as long as
A trade mark 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, trade marks come in two forms. Registered trade
marks and common law rights. Counties that provide rights to those who
have registered a trade mark first are known as "first to file
counties". Those who use common law rights are referred to as "first to
Even if you have common law rights in your trade mark 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 trade mark 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
5. What are common law rights in trade marks?
In some countries, trade mark 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 trade mark 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
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
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
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
10. What is the Community Trade Mark Treaty?
The Community Trade Mark Treaty (CTM) provides for a single
trade mark right effective in all member countries of the European
Union (EU). Unlike the Madrid Agreement and the Madrid Protocol it does
not bundle the trade mark registrations. Specific countries cannot be
selected as a CTM registration covers all of the EU automatically.
11. What is the Madrid Agreement/Protocol (International trade
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
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
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
"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
"TM" - Trade Mark
Informs others that the word or brand name concerned is a trade mark.
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 trade mark in one country does not
necessarily mean that the company concerned has registrations in other
"SM" - Service Mark
Services Marks are similar to TM's. Service marks are brand names and
logos used to sell services.
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
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 trade marks, 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.
Written by Izaz Ali
About the Author
Solicitors offer services and advice for litigation,
commercial contracts, Intellectual Property and IT legal agreements. We
are experts in commercial law with a heavy emphasis on Intellectual
Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of
Higher Court Advocates and we are the appointed Solicitors to the
largest webdesign association in the world, the United Kingdom Website
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Article Published/Sorted/Amended on Scopulus 2014-06-10 09:08:25 in Legal Articles