Intellectual Property

Intellectual property (IP) protects creations of the mind that are granted exclusive rights under the law. These rights enable creators and owners to manage and profit from their work, which can include inventions, software code, literary and artistic pieces, designs, logos, names, and images used in commercial contexts. Additionally, IP rights help restrain third party infringements.

In the UK, several types of IP protection are available:

• Patents: protect inventions and processes for up to 20 years, giving exclusive rights to use, make, sell, and import.
• Trade marks: safeguard logos, symbols, and names used to distinguish the offerings of a particular business. Trade marks are renewable indefinitely if there is genuine and continuous use.
• Copyright: covers original literary, dramatic, musical, and artistic works, and lasts for the creator’s lifetime plus 70 years.
• Design rights: protect product designs. Registered design rights last up to 25 years from the date of filing, however, unregistered rights continue for shorter periods.

Common IP issues include but are not limited to:

• Failing to develop and protect trade marks as part of your brand. Lacking effective agreements, leading to independent third parties and sometimes consultants, suppliers, or customers gaining ownership of your IP.
• Not having written agreements with agents manufacturing, distributing, or selling your products, risking loss of control or damage to the integrity of your IP rights.
• Not keeping evidence of new inventions, designs, publications, and documents to prove IP rights.
• Investing in new products without checking for conflicting IP rights owned by third parties.
• Disclosing inventions prematurely, invalidating any patent applications.
• Not securing ownership of IP created by web, marketing, or design agents through written agreements.
• Carrying out patent, trade mark, and design searches in appropriate jurisdictions before investing in new products and brands in relevant markets.

Enforcing your IP rights requires actively identifying and pursuing infringers. This can be challenging and costly, so it is important to properly understand and protect your IP at the outset.

Lawyers with specialist knowledge of IP can assist you by providing guidance on the complexities of IP law. This will help you protect your IP through various methods, such as securing patents, trade marks, and design rights, understanding any copyright you may be automatically entitled to, and conduct IP audits.

IP lawyers can resolve issues related to domain name disputes, passing off claims, and misuse of confidential information. They can also advise on entitlement to IP ownership, draft and review contracts to ensure your IP rights are well-protected and properly licenced and represent you in cases of IP infringements.

If you are entering an agreement which involves IP such as in connection with selling your business, licencing your rights, entering a joint venture or franchise agreement, it is important to seek advice from an IP solicitor. Successful businesses understand IP, protect it, and keep it under regular review. If someone copies your invention or brand, your lawyer can quickly advise on the best course of action. At TWM Solicitors, we can help you work through these situations efficiently.

The owner of IP is typically the person or entity who creates the IP or, in some cases, the person or entity to whom the rights have been transferred by assignment. The ownership rules can vary depending on the type of IP, the commercial situation, and the context in which it was created.

Determining whether your creation qualifies for protection will depend on the material you have generated. Each type of IP has a specific set of criteria and requirements, and we can assist you in determining these criteria, the relevant type of IP, and advising you on how best to utilise your IP rights to protect your creation.

You and your business may own certain types of unregistered IP.  Innovative products such as a design or your brand name and logo may attract such unregistered IP rights. If you produce work such as art, music, literature, or software, this may already be protected by copyright, but you will need to understand how it works.

As all the types of IP mentioned above are different in nature, they protect different things:

• Patents – technical inventions and processes.
• Trade marks – branding on goods, packaging and in marketing collateral.
• Copyright – the expression of creative ideas such as written material (including software code), music or art.
• Design rights – the shape and configuration of a product and/or its individual character.
• Database right – sets of data such as customer mailing lists.

For help with identifying what IP your business owns and the best protection strategies, contact our IP team.

The UK Intellectual Property Office (IPO) is the government agency responsible for registered or granted IP rights within the United Kingdom. The IPO’s main functions include the registration of trade marks and designs, the granting of patents, providing general information and guidance, and handling certain disputes related to entitlement to IP.

The IPO plays a crucial role in supporting innovation and creativity by protecting the IP rights of inventors, creators, and businesses throughout the UK. You can learn more by visiting the IPO’s website here.

It is advisable to register your IP as soon as possible, providing you don’t disclose your business plans prematurely. Registering your IP is a crucial step in protecting your rights and ensuring you can enforce them if necessary. The process for registration will vary depending on the type of IP you are seeking to protect.

A trade mark can be registered in the United Kingdom by making an application to the IPO along with payment of the relevant fees. The application requires details of the trade mark you wish to register together with a description of the goods and services that you intend to use your trade mark for.

The application is reviewed by the IPO to ensure that your mark qualifies as a trade mark and is therefore legally capable of registration. The IPO will also publish details of your application in the Trade Marks Journal to allow for any objections. Provided that there are no issues the IPO will then issue you with a certificate of registration.

A registered trade mark lasts for 10 years from the date of registration. You must renew your trade mark every 10 years for it to stay in force.

While unregistered trade marks are recognised in the UK and are enforceable by means of legal action for “passing off”, there are several benefits to registration.

First and foremost, it grants you sole rights to use your trade mark for the goods and services listed in your application and provides you with a stronger and more easily provable case against any third party that attempts to use your mark without your permission.

It also provides greater leverage in the event that a third party attempts to register a similar or identical mark. Having your mark registered gives you stronger rights to oppose an application for registration by a third party which can then be rejected. Knowledge of its existence might in itself also be a deterrent to third parties who search the register of trade marks before launching their own conflicting brand.

A trade mark registration holds significant value. It has the potential to enhance your brand and creates a valuable asset which can be monetised through licensing, offering an extra stream of income for your business, adding to its value when you sell the business.

If someone uses your registered trade mark without your permission, you can bring infringement proceedings against them.

But what if your trade mark is not registered with the IPO or not capable of being registered at all (but still qualifies as a trade mark)? “Passing off” occurs when one party misrepresents their goods or services as those of another party, or being associated with that party, whose branding has an established reputation. This misrepresentation can potentially damage the goodwill and reputation of the brand that is being passed off.

Passing off as a cause of action is separate to an infringement action and can be brought in addition to a case for infringement. Passing off also protects the distinctive aspects of any goods or services where there could be confusion, but cases are harder to prove. The party must show that the relevant features are capable of distinguishing their own goods or services from those of others but any entitlement to bring a passing off action will not be conclusive.

There is no copyright register in the United Kingdom.

Copyright protects the expression of ideas in substantial and recordable form. It is governed by the Copyright, Designs and Patents Act 1988. Copyright typically relates to creative works such as books, computer software, art, and films. On the creation of an original literary, software, dramatic, artistic, or musical work, copyright protection applies automatically.

The copyright term for literary, musical, dramatic, and artistic works is 70 years from the date of death of the author of the work. However, this can vary, and the duration of a copyright depends upon the type of work it relates to and when the work was published or created.

Registered designs are registered at the IPO for rights to come into effect, whereas unregistered design rights come into effect automatically without any formal registration process.

The scope of protection and the criteria for infringement vary greatly between registered and unregistered design rights. The main difference lies in the scope and duration of protection, and the evidence you need to prove to establish infringement.

Both registered and unregistered design rights play crucial roles in protecting the visual aspects of 3-dimensional products.

The registration processes for the different kinds of IP each have unique challenges. For trade marks, issues could include similarity to existing marks, lack of distinctiveness, third party objections, and incorrect classifications. Patents require novelty, detailed descriptions, proper claim scope, eligibility, and regular maintenance fees. Design registration needs novelty, clear scope, accurate documentation, and periodic renewals. This is why it is important to seek expert legal advice when registering your IP.

In the event that your application for registration is rejected, the IPO has an appeals process in place. For instance, where your trade mark application has been rejected, you can file a request for an appeal with the IPO using the relevant form. This request must include the required fee, a statement detailing the reasons for your appeal, and any supporting evidence.

Alternatively, if you do not wish to appeal, you have other options. You can amend your trade mark application, provide additional information or evidence to support it, eliminate or reduce the content of any class of goods or services which are problematic, or submit a new trade mark application altogether.

If you need expert support, regardless of your circumstances, please contact TWM Solicitors. We are here to assist you every step of the way.

While allowing another party to use your IP might seem like giving away part of your competitive edge, it is actually a strategic and commercially necessary move that can enhance your business’s growth, and market reach while allowing you to derive significant income. For example, granting a licence to a third party giving the right to manufacture, distribute or sell your product within a particular market.

It is essential to negotiate the terms of use carefully to ensure they align with your business objectives and provide adequate protection for your IP.

Before entering into a licence agreement, you should consider several factors to ensure that the arrangement aligns with your business objectives and protects your IP rights effectively. It is important to establish the value of your IP, identify the correct opportunity and conducting due diligence on any potential licensee. It is essential to ensure that the licence agreement is carefully drafted to ensure that it is contractually enforceable. It must deal with the scope of IP rights under licence, warranties and indemnities, the division of liability, payment provisions and dispute resolution.

In the UK, enforcing your IP rights involves careful consideration of the infringer’s liability, the defences it may raise, and the extent to which the costs of any action are proportionate. Your IP solicitor can help you identify the appropriate remedies for infringement, such as an injunction to stop further infringing acts, claiming financial compensation for damages, or payment by way of the profits made from the infringement, and requesting the surrender or destruction of infringing products.

When it comes to exploring the different legal routes there are several legal options for pursuing these remedies through different courts and procedures in the UK including:

• Intellectual Property Enterprise Court (IPEC) – Small Claims Track: suitable for claims up to £10,000, particularly if your primary objective is to secure an injunction to stop further infringement. However, the ability to recover costs is very limited.
• Intellectual Property Enterprise Court (IPEC) – Multi-Track: the IPEC multi-track is suitable for claims with a value above £10,000 but not exceeding £500,000. This track offers a middle ground for more substantial claims.
• High Court: no maximum claim value, making it suitable for significant or complex infringement cases where substantial damages are sought. The winning party can recover all reasonable costs from the other side.

When safeguarding your IP on an international scale, you will likely need to file additional applications in various jurisdictions to ensure your rights are protected.

IP laws differ from one country to another, offering you the option to either file separate applications for each territory or opt for consolidated applications covering multiple countries simultaneously. For instance, if you wish to register your trade mark at an international level you can do so in countries which have signed up to an agreement called the Madrid Protocol, controlled by the World Intellectual Property Organisation (WIPO) in Switzerland.

An international application must be based on an existing trade mark application, or registration in one of the member countries. You are free to file individual trade mark applications in countries that are not signatories to the Madrid Protocol. It is also possible to obtain trade mark protection in all EU countries by an application to the European Union Intellectual Property Office (EUIPO) for an EU trade mark (EUTM) which is a single and separate trade mark. An EUTM application or registration can be the basis of a Madrid Protocol application.

For design protection, you can use the Hague System, also administered by WIPO, which can grant a bundle of rights following a single application, or alternatively, file separate applications in individual countries or in countries outside the Hague System.

Given the complexity of these options, it’s advisable to seek guidance to make informed decisions tailored to your business needs.