Intellectual property: transactions, litigation & dispute resolution
What is a trade mark?
A trade mark is a “sign” used to differentiate goods or services originating from one source from those originating from another source. Trade marks must be registered at the Intellectual Property Office. Trade marks can take a variety of forms, the more conventional being words, slogans, numerals and figures. More unusual types of trade marks such as colours, sounds and gestures might be registerable, if they are capable of being represented graphically.
I have a registered trade mark - can I stop other people from using it?
Yes – the owner of a trade mark can bring infringement proceedings against anyone who, without authorisation, uses an identical or similar mark in the course of trade in connection with identical or similar goods. Where the marks, or the goods, are not identical, it is also necessary to show that this use causes confusion. If your trade mark has a reputation in the UK, you may also be able to prevent others from using the same or a similar sign where that use takes unfair advantage of, or is detrimental to, your trade mark. It is important to note that there is no need for the goods or services to be similar in this case.
What should I do if I think someone is infringing my trade mark?
Whilst sending a letter to someone who you think is infringing your intellectual property rights seems like a good idea, care needs to be taken not to fall foul of the UK Threats legislation. Click here to read a more detailed briefing note on this issue. Suitable disputes can be advanced through the Intellectual Property and Enterprise Court (IPEC), which contains measures for cost capping and a shortened timeframe. This Court is often an attractive route for clients, particularly SMEs, as it allows them to assess their costs exposure at the outset of a dispute. For a more detailed note on this court, click here. For more detail and further FAQs, click here to read our trade mark fact sheet.
What is “Passing Off?”
The term “unregistered trade mark” is often used to refer to the intellectual property rights on which a party can rely to protect goodwill and reputation in its business. The legal cause of action under which these rights can be asserted and enforced is known as “passing off.” Passing off can occur in various situations, the most common is “classic” passing off, which is used to prevent third parties from selling or promoting goods and services under the pretence that they are someone else’s, i.e. to prevent them from “passing off” their goods and services as originating elsewhere.
What is the legal test for passing off?
The legal framework for passing off actions has developed through case law, rather than being set out in a statute. There are three requirements for classic passing off: Goodwill – there must be goodwill or reputation attached to the goods or services in question; Misrepresentation – there must be a misrepresentation to the public that leads or is likely to lead members of the public into believing that the goods or services offered by a third party are those of another entity; and Damage – damage has to be incurred (or be likely to be incurred) as a result of the misrepresentation. For more details and further FAQs, click here to read our passing off fact sheet.
What can be protected by a Patent?
Patents protect new and inventive products or processes. Patents must be registered at the Patent Office. Our specialists advise on disputes relating to the enforcement of patents and patent validity, as well as disputes arising from patent Licence Agreements.
How long does patent protection last?
Patents last for 20 years from the date they are filed. It can take a number of years for the patent to be granted and, after grant, renewal fees need to be paid to maintain the registration.
Patents and trade secrets – what are the differences?
An inventor has a choice between patenting an invention and keeping it as a trade secret. The advantage of patenting is that, if the patent is granted and not invalidated, the patent owner has a monopoly over that invention for 20 years. Furthermore, it is no defence for an infringer to show that they developed their infringing product without reference to the patent. The disadvantage of patenting is that after 20 years the monopoly is lost and the invention can be copied. With a trade secret, there is no limit on how long the monopoly lasts, so long as the owner is able to maintain confidentiality. A trade secret will not however prevent use by someone who can show that they independently developed the same invention, or where they reverse engineered a product available on the open market. For more details and further FAQs click here to read our patents fact sheet.
What is Copyright?
Copyright is a right held by the creator of original literary, dramatic, musical and artistic works, sound recordings, films, broadcasts and typographical arrangements of published editions. Copyright does not require registration although it must be assigned in writing.
Confidentiality / trade secrets / know how
By entering into confidentiality/ non-disclosure agreements, you can impose contractual restrictions to prevent disclosure of highly sensitive information. Our specialists advise on issues relating to breaches of confidence and theft of trade secrets and know-how, including data theft by employees.
These are rights protecting the shape and configuration of products or their packaging. It is best practice to register design rights, although design rights might arise even if no steps have been taken to register them.
These are not only functional (to allow a website to be easily found online) but they often indicate ownership of a product or service. It may be possible to prevent third parties from maliciously registering domain names that seek to take advantage of your reputation and/or compel the transfer of domain names to you.
These are automatic rights held by the creator of a database, if there has been a substantial investment in obtaining, verifying or presenting its content.
Claims for comparative or misleading advertising
Advertising must not be misleading or confusing to customers, discredit a competitor or take advantage of a competitor’s IP rights.
This is an important mechanism by which you can prevent the publication of material that adversely affects your business’ reputation and causes serious harm. With the power of the internet and social media today, this is a powerful tool to prevent unjustified media coverage of your business or brand.
The contents of this article are intended for general information purposes only and shall not be deemed to be, or constitute legal advice. We cannot accept responsibility for any loss as a result of acts or omissions taken in respect of this article.
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