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Trademarks & Copyrights - Protecting Your Business

Every business owns some intellectual property, such as a trade mark manufacturing process or confidential information, but most fail to appreciate this fact and the potential value comprised in this property. The value may not only be in the exploitation of these rights to generate new business, but also in protecting an existing business from imitators and asserting monopolistic rights to limit the activities of competitors.

Some companies will readily spend hundreds of thousands of pounds in developing and protecting their brands, trading styles, and commercial information. Increasingly, such as in the IT and software industries, the whole of the business is dependent upon intangible assets, things that cannot be touched or processed in any physical sense, for example the rights in a computer program or an information database.

So what are trade marks and copyright and how can you use them to protect your business?


Trade Marks

As the name suggests, a trade mark is some indicator that distinguishes your goods or services from those of others. In fact, the terms ‘trade mark’ and ‘service mark’ are generally used to distinguish between marks for different types of product, though the legal issues relating to them are the same. Trade mark here will be used to cover both variants.

A trademark can be any form of indicator and is not limited to words or logos. Phrases, slogans, some designs (such as the classic coca-cola glass bottle), colour schemes, sounds, and even smells and gestures (such as the Asda bottom pat) can be registered.

The essential elements required for registration are that the mark is capable of distinguishing the applicant’s goods or services (or goods or services he genuinely intends to offer). There must therefore be some actual or intended trade and the proposed trade mark cannot be the same or confusingly similar to an earlier mark.

A trading name may therefore be registrable as a trade mark but only if it is used to distinguish one business’ particular goods or services from those of others. It is possible for two or more identical trademarks to co-exist if they are each used for completely different goods or services where there is no risk of confusion.

Although some limited rights can vest in a trade mark that has not been registered, registration offers far superior protection giving the owner an exclusive rights to use the trade mark in connection with the business sectors for which it was registered and the right to sue anyone that uses the same trade mark or a confusingly similar mark in the same (and sometimes any) trade sectors.

Registration gives the owner the right to use the ® symbol against the trade mark. This should not be confused with ™ and SM which may be used where the mark is not registered but unregistered rights are asserted, and the improper use of the ® symbol is an offence.

Any business that has a reputation in its goods or services almost certainly has one or more trade marks, but most do not own registered marks. However, the legal costs of bringing an action against someone based on unregistered rights would far exceed the costs of a standard trade mark registration. As all trade mark applications are carefully scrutinised before being approved and registered, the fact of registration is a substantial deterrent to any businesses that may be tempted to try to trade off another’s reputation.

Once registration has been granted, the legal scales are significantly tilted in favour of the registered proprietor. Thus, the first to successfully register a particularly catchy trade mark can acquire a substantial advantage over others in the sector. Conversely, even an established business with a strong local reputation but no registered rights may find its ability to expand under a particular banner or to sell its brand image is severely curtailed by someone else’s registration.

Registered trade marks can also be sold and licensed and can become highly marketable as assets in their own right.

A trade mark application is not necessarily a lengthy or costly process. The UK registration fees (excluding costs of any professional advice taken) can be as little as £200 for a simple mark in one sector and rising if multiple areas of business are to be covered by the registration. If there are no complications, the process could be completed in as little as 6 months. The most important date is the date the application is lodged, from which priority over others will generally be assessed even if confirmation of registration takes a long time. Trade marks do have to be renewed, usually every 10 years, though the process for this is straightforward and relatively cheap.

It is worth noting, however, that trade mark registrations are only valid in the country or territory where it is registered, though it is now possible to apply for a single mark that covers the whole of the EC territories (including new entrants as they join) and various international treaties vastly simplify the process of expanding an existing registration into multiple jurisdictions. Thought should therefore be given to possible international use of the mark and appropriate protection obtained.


Copyright

Copyright is term given to rules protecting a whole range of works, including photographs, paintings and other works of art, literary works, films, soundtracks, websites and computer programs.

Unlike registered trade marks, copyright protection arises automatically without formality. The legal issues usually arise in determining whether or not something qualifies for copyright protection and, if so, who owns it.

Although subtly different rules apply to the different forms of work covered by copyright protection, they share a common requirement for originality. This should not be confused with novelty or aesthetic appeal, which generally have no bearing on the issue of copyright. A ‘bad’ work can still enjoy protection as long as it is original. Nor does originality always require a great deal of time and effort to be expended. It is usually sufficient that there is some element of creation, even if this is limited or even computer generated.

Although not a legal necessity, copyright is usually asserted by the use of the © symbol and it is recommended that owners also display their identity and the year of creation of the work in order to establish a presumption against subsequently created works. As originality is a prerequisite for the right to arise, copies of all drafts and earlier versions of a published work should also be retained in the event that it becomes necessary to prove when copyright first arose in respect of the work and that is was original and not copied from some other work.

Leaving a copy of the work in a sealed package with a solicitor or accountant or other person bound by professional rules is also a good way of proving when the item was created and thus a date at the latest for when any copyright in it arose.

Copyright gives the owner (which in the first instance is usually the author) the rights to control the reproduction of their work and to prevent unauthorised copying. The term ‘copying’ here includes many forms of use, adaptation, display, distribution and sale. However a truly independent creation will not infringe an existing copyright however similar the two works may be, though a Court will be invited to consider carefully whether the similarities are pure coincidence or evidence of unlawful copying.

Although a logo may enjoy copyright protection as an artistic work, names phrases and titles do not generally enjoy copyright protection and would need to be considered under trade mark rules.

Equally, copyright only exists in the actual expression of the work, such as the particular words of the novel, the form and structure of the painting, or the code in the computer program. The idea for the work will not be protected under copyright rules, but may be capable of protection by confidentiality arrangements and technical inventions may be protected by patent registration.

As with trade marks, copyright can be sold or licensed and can become a source of substantial income. A key part of the business of many famous brands is in the exploitation by licence of copyrighted and trade marked characters and stories such as Winnie the Pooh (Walt Disney) and Thomas the Tank Engine (Gullane/HIT Entertainment). In some cases, companies or family trusts exist for the sole purpose of exploiting a single copyrighted work.

A common problem area is where more than one person has been involved in the creation of the work, in which case parts of the work may enjoy separate copyright to their respective creators or may be jointly owned by them. It is a common misperception that joint copyright owners can each exploit the work as they see fit; in fact, they need to work together and agree how the work is to be exploited and which is often a cause of friction if not addressed early.

Also like trade marks, copyright is territory specific though international conventions do allow UK copyright to be recognised (and thus enforced) in most parts of the world including Western Europe, the United States of America and many parts of Eastern Europe including Russia. As copyright is automatically created, no procedure is required to register these rights in the convention countries.

Copyright lasts for a considerable period of time, in the UK being up to 70 years after the year of death of the author, though some types of work have a slightly shorter period of protection of 50 years after the death of the author. Different rules apply for computer generated works.




If you would like to discuss any issues relating to copyright or trade marks or other areas of intellectual property law, then please contact Austin Blackburn ablackburn@nash.co.uk, an associate solicitor at Nash & Co Solicitors specialising in intellectual property and business law issues.