Why and how to protect intellectual property rights in the UK?

Why and how to protect intellectual property rights in the UK?

Introduction

UK intellectual property (IP) law encompasses several different forms and types of IP such as copyright, trade marks, patents, design rights and trade secrets. IP is defined as any intangible creative work and, therefore, for legal purposes is considered an asset.

It is important to protect your IP to avoid possible infringement and dreaded, expensive, time consuming commercial disputes. It is also important to understand not only how to protect your own rights but also how to avoid infringing upon another’s IP.

The forms of protection that you are granted will vary on the work being protected and whether you have registered the work with the relevant organisations. Some IP rights are acquired automatically, these are known as unregistered rights, whereas other IP rights can only be granted upon application to the relevant organisations and they qualify as registered rights.

Copyright

Copyright covers a broad range of works. It falls within the automatic rights bracket, which means you do not need to apply to any organisation to acquire copyright for your work.

How does my work acquire copyright?

If you are the creator of the work, then in most instances, you will be the first owner of the copyright. However, if you are employed under a contract then who can claim ownership of the work will depend on the nature of the contract and the manner of the work.

For copyright to subsist, certain criteria must be met. The work will need to fall within one of the following categories listed in the Copyright, Designs and Patents Act 1988 (CDPA):

• literary, dramatic and musical works;
• databases;
• sound recordings;
• films;
• broadcasts; and
• published editions.

Generally, copyright will persist for 70 years from the end of the calendar year in which the author dies. This duration may be shortened to 50 years from the inception or publishing of the work in certain circumstances.

What can I do with my copyrighted work?

As the owner of a copyrighted work, you have free reign to:

• sell or transfer the ownership right of the work;
• rent or lend;
• reproduce copies of the work;
• perform, show, communicate; and
• modify or edit the work.

Any person who does not own the copyright and proceeds with one of the acts listed above may be held to have infringed upon the owners’ copyright. The key test is whether the act relates to a substantial part of the copyright work.

What steps can I take to protect my copyright?

As copyright is acquired automatically, protection is gained on creation. However, you may take further steps to ensure that people understand your work is copyrighted, for example by utilising the “©” symbol or leaving a dated copy of your work with your solicitor or by structuring your websites terms and conditions so they implement copyright safeguards.

How do I avoid copyright infringement?

The easiest way to protect yourself, is to acquire express permission either from the copyright owner, if you seek to reproduce their work; or you can purchase a licence from the Copyright Licensing Agency (CLA).

There are specific permissions provided within the CDPA, also known as “fair dealing” defences, that can provide a defence for copying the work without asking permission from the owner of the copyright and, they include:

• private study/research;
• criticism or review;
• reporting current events;
• text or data mining;
• quotation; or
• parody.

Be wary though, as the abovementioned defences do not apply to text-based works or the copyright of printed music.

Patents

Patents are a form of IP rights that provide protection for the owners of inventions. The owner of a patent can claim against anyone who sells, uses, makes or imports said patent without his/her explicit permission.

A UK patent will last for 20 years from the filing date, provided the appropriate renewal fees have been paid.

What are the requirements of a patent?

In order for the patent to be granted, the invention must be:

• novel, i.e. it must be new and not have been made available to the public;
• inventive, i.e. it must involve an inventive step, that would not be obvious to a person skilled in the area in which the patent is addressed, it is not enough that the patent be a mere modification of an existing piece; and
• industrially applicable, i.e. the invention is capable of being made or used industrially.

Certain inventions are excluded, such as:

• a mere discovery;
• a mathematical method;
• a scientific theory;
• aesthetic creations (i.e. artistic works as these falls under the remit of copyright);
• a scheme or method for performing a mental act, playing a game or doing business;
• a computer program; and
• the presentation of information.

How do I patent an invention?

You must apply to the Intellectual Property Office (IPO), a breakdown of the fees can be found here.

UK’s Government Guidance on patenting an invention states that the application must include:

• a description of your invention that allows others to see how it works and how it could be made;
• legal statements that set out the technical features of your invention that are to be protected;
• a summary of all the important technical aspects of your invention.

It is also recommended to include any drawings you need to illustrate your description.

As the application can be complex and costly, it is strongly advisable that you seek the advice of a legal professional when filing a patent as these will increase your chances that the patent be approved at first instance.

Design Rights

Design rights protect the aesthetics’ of part/whole of a product and may   include the texture, pattern, colour, shape and contours, among others. Design rights are divided into two categories: registered and unregistered.

As with copyright the author of the design is usually the owner unless the work was commissioned or created during the fulfilment of employment duties.

What is the difference between an unregistered design and a registered one?

Registered designs provide the owner with 25 years’ worth of protection, provided that the owner renews the protection every 5 years.

Where a design is unregistered, the protection will run for 10 years from the date the design is first marketed.  For the first 5 years the owner will have exclusive rights, whereas for the remaining five years, the owner may licence the design to other users and receive royalties as consideration.

More often than not, designs will fall into the multiple categories of IP i.e. copyright, registered and unregistered designs. Which right subsists will influence what specific claim you can proceed with should your design be infringed upon.

Trade Marks

In the UK, trade marks are more or less governed by one piece of legislation, that is The Trade Marks Act 1994 (TMA). A trade mark can be a valuable business asset as it usually acts as a badge of origin that allow businesses to distinguish themselves from other competitors.

Specifically, a trade mark can be any of the following:

• Words
• Designs
• Position
• Pattern
• Letters
• Colours
• Gestures
• Moving digital images
• Slogans
• Numerals
• Internet domain names
• The shape of goods or their packaging
• Smells
• Sounds

To be capable of constituting a trade mark, the sign must take the form of one of the above, it must be capable of being graphically represented (note, that an MP3 sound recording will suffice to register a sound) and lastly, it must be capable of being distinguished from services or goods of another business/user that falls within the same sector.

What are the absolute grounds for refusal of registering a trade mark?

Under the TMA and the accompanying EU regulations, a trade mark will be refused if:

• it does not fall within the definition of a trade mark;
• it is deceptive or made in bad faith;
• it is contrary to public policy or morality;
• it is devoid of any distinctive character;
• it is purely descriptive in nature; and
• it is a generic term or phrase commonly used in the relevant sector.

How and why should I register a trade mark?

A trade mark can still subsist even if you do not register it. In this case, you must rely on the common law of passing off which is an expensive and time-consuming route that can be avoided by registering your trade mark. For this reason, we recommend that you register your trade mark at the IPO and/or the EU equivalent, EU Intellectual Property Office.

In the UK once a trade mark has been registered it will last for 10 years. Upon the expiry of that period it can be indefinitely renewed every 10 years.

Once you have registered a trade mark, it is important to monitor the trade mark register and the market for any similar marks. The longer a conflicting mark remains in the public domain, the greater the risk of you potentially losing the right to claim for infringement.

Trade Secrets

Unlike the forms of IP discussed above, trade secrets are not governed primarily by a specific statue, rather they fall under the common law of confidence. That said The Trade Secrets (Enforcement, etc.) Regulations 2018 was recently enacted to implement an EU Trade Secrets protectDirective.

According to the EU Trade Secrets Directive, for an information to amount to a trade secret it must:

• be secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
• have commercial value because it is secret; and
• have been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

The duration of the protection is directly attached to the period of secrecy, in theory a trade secret could subsist indefinitely.

What steps can I take to ensure my trade secrets are kept out of the public domain?

Here are a number of practical tips or steps that you can take to protect trade secrets:

• identify what information amounts to a trade secret;
• draft confidentiality provisions into employee and supplier contacts;
• when working with new parties, enter into Non-Disclosure Agreements, merely indicating a document as confidential will not be adequate;
• ensure employees and suppliers know how to handle confidential information and the importance of maintaining secrecy;
• use encryption software or secure/lock away hard copies;
• create or designate a team responsible for the implementation of procedures protecting trade secrets;
• ensure that only those necessary have access to confidential information; and
• have an action plan in place, to enable the business to respond quickly and appropriately to a leak or loss of confidential information.

How can we help?

At the Jonathan Lea Network, we regularly advise businesses and individuals on how to register IP, how to protect it and how to move forward if your IP rights have been infringed upon.  Please email us to arrange a 20-minute no-cost no-obligation initial consultation to discuss your requirements and agree in principle different ways we can help you.