Choosing the Right IP Protection

Author Ron Maijen
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Source Wikipedia Playing Card

Jane Lambert

There is usually more than one way to protect an intellectual asset.  A brand, for instance, may be protected by trade mark registration or by the law of passing off. A business owner's choice will depend on many factors such as the business's resources, the value of the intellectual asset, the vulnerability of the IP right to cancellation and so on.

Trade Mark Registration
A trade mark can be registered for the United Kingdom alone or for the whole of the European Union including the United Kingdom for so long as the UK remains a member of the EU.  It is also possible to register a mark in some or all of the countries that are party to the Madrid Protocol by applying for an international registration. 

In each case, there are three sets of costs to take into account.  The first is for searches to ascertain whether there are any early registrations that might conflict with the application. Secondly, there are the fees charged by each office for processing the application.  These start at £200 for an application to the Trade Marks Registry of the Intellectual Property Office ("the IPO") for the registration of a mark for one class of goods in the UK.  Thirdly, there may be attorneys' fees for conducting the search, drafting the application and dealing with objections from examiners or third parties in the IPO or indeed the registries of any of the other countries in which registration is sought.  Sometimes a hearing may be necessary for which counsel must be briefed.  The cost of a trade mark application may, therefore, range from a few hundred pounds for a single country where there is no objection to many thousands of pounds for a contested application.

A registration may be challenged even after it has been granted on the grounds that the mark should never have been registered or that it should be revoked because it has not been used or it has ceased to be distinctive.  The challenge may be brought in the registry or by way of counterclaim in infringement proceedings.

Although some trade mark infringements are criminal offences in the UK, it is primarily the registered proprietor's responsibility to enforce his or her rights.  The small claims track of the Intellectual Property Enterprise Court ("IPEC") can hear claims for damages of £10,000 or less that can be tried in no more than a day.  In the small claims track the costs that can be recovered from an unsuccessful party are limited to a few hundred pounds.   Claims up to £500,000 that can be tried within 2 days can be brought in IPEC's multitrack. The costs that may be recovered from an unsuccessful party in IPEC are capped at £50,000. Any other claim has to be brought in the Chancery Division of the High Court where cases and costs are managed but the amount that can be recovered from the unsuccessful party is unlimited.

Passing off
The right to bring an action for passing off arises automatically so there are no application costs.  On the other hand, is usually more difficult and hence more expensive to bring such an action than it is to sue for trade mark infringement.  The claimant has to prove that he or she has goodwill by reference to a trade mark, trade name, logo, get-up or other indicia which usually requires voluminous evidence of sales and advertising. Secondly, he or she has to prove that the defendant has misrepresented a connection with his or her goods, services or business by, for example, using the same or similar name, mark, logo or get-up. Thirdly, the claimant has to prove loss or damage such as loss of sales or reputation.

Actions for passing off can be brought in the small claims track or multitrack of IPEC or the High Court with the same costs consequences as for trade mark litigation.  Actions for passing off are often brought with trade mark infringement claims.

Since it has become possible to register marks for services, there are very few businesses that decide deliberately to rely solely on the law of passing off. Quite apart from the ease with which a trade mark action can be brought, a trade mark is a right that can be assigned, charged or licensed for money or moneysworth which is not the case with an action for passing off.

Designs
A new design with individual character can be registered for up to 25 years for the UK alone as a registered design or for the whole of the EU including the UK as a registered Community design ("RCD").  Any design that can be registered as a registered design or as an RCD enjoys automatic protection against copying throughout the EU including the UK for 3 years as an unregistered Community design ("UCD").  As the UK is now party to the Hague Agreement concerning the International Registration of International it is possible to apply for the registration of the design in the contracting countries from a single filing.

Original designs of the shape or configuration (whether internal or external) of the whole or part of an article made by UK nationals or nationals of certain other countries are protected automatically against copying for up to 15 years in the UK by unregistered design right.

Artwork for surface decoration can be protected automatically against copying for the life of the author plus 70 years by copyright in the UK and other countries. Certain other designs can be protected by copyright for the same term as works of artistic craftsmanship.

The process of registering a design or RCD is simpler than the process of registering a trade mark because there is no substantive examination.  Accordingly, the process is quicker and cheaper. The IPO charges £50 to register a single design as a registered design and the European Union Intellectual Property Office ("EUIPO") €230 to register an RCD. However, design registrations can be challenged after grant by cancellation proceedings in the IPO or the EUIPO or by way of counterclaim in infringement proceedings.

Design registration is appropriate for high-value items that are likely to be on the market for a long time such as jewellery or electrical appliances.  For toys, fashion items and other items that are likely to go out of style quickly the terms provided by UCD and unregistered design right may be quite long enough.

Actions for the infringement of registered designs or RCD must be brought in the Patents Court or IPEC multitrack regardless of value.  They cannot be brought in the IPEC small claims track.  Claims for the infringement of UCD, unregistered design right or copyright may be brought in the IPEC small claims track or multitrack or the Chancery Division.

Technology
Those who have created a new product or process can choose to disclose it to the world in return for a patent or to keep it under wraps in the hope that nobody will work out how to make or use it.  In the case of CocaCola and Chartreuse, keeping stumm can be a very effective strategy as I noted in Trade Secrets and Non-Disclosure Agreements 1 April 2019.

Patents are the most difficult and expensive IP right to acquire but they can also be the most valuable.  They prohibit not just the copying of an invention but also making, importing, distributing, keeping or using it.  A person who makes or uses an infringing item can be liable even if he made or used the product or process quite honestly without referring to the patented product or knowing the existence of the patent.

Patents can be granted for the UK alone by the IPO or for the UK and up to over 40 other countries by the European Patent Office ("EPO"). Patents can also be granted pursuant to a single application in all the countries that are party to the Patent Cooperation Treaty ("PCT"). An application for a patent for the UK alone rarely costs less than £5,000 (see Dehns The Cost of a Patent).  According to Roland Berger, the cost of obtaining and maintaining a typical European patent in up to 6 countries from 10 years cost over €30,000 (see Roland Berger Market Research Study on the Cost of Patenting).  Registering the patent in the USA, China, Japan, South Korea, Brazil, Russia, India and other industrial countries can easily exceed £100,000.  In addition to searches and office fees, applicants have to pay for renewal fees which increase over the years in some countries. 

Attorneys' fees are also more expensive than for design and trade mark applications since the specification has to be sufficiently clear and complete to enable a person with the appropriate skill and knowledge to make or use the invention after the patent expires. The monopoly claimed must be broad enough for the owner of the patent to have the widest possible protection but it must not be so wide as to be invalid.

Patents granted by the EPO can be challenged immediately after grant in proceedings called "opposition". In the UK and other countries, patents can be challenged in the office that granted them in revocation proceedings or by way of counterclaim in infringement proceedings.  Such proceedings tend to be expensive.  According to TaylorWessing's Patent Map, patent infringement proceedings can cost between £200,000 and £1 million in London.  Claims have to be brought in the Patents Court or IPEC multitrack. They cannot be brought in the small claims track.

Businesses can rely on the law of confidence and the new Trade Secrets Directive to prevent unauthorized access to, use or disclosure of undisclosed technical information for so long as it remains outside the public domain. Trade secrecy has proved to be an effective way to protect the source code of computer programs over the years.  That protection is lost once the information enters the public domain which can result from reverse engineering or parallel research and development.

Software is also protected from reproduction by literary copyright for the life of the author plus 70 years. Data can be protected from unauthorized extraction and re-utilization by database rights. A modified form of unregistered design right can protect semiconductor topographies from unlicensed reproduction for up to 25 years.

Creativity
Works of art and literature including broadcasts, films and sound recordings as well as original artistic, dramatic, literary and musical works are protected automatically from copying, publishing, renting and lending, performance, communication to the public and adaptation for the life of the author plus 70 years. Her Majesty's Government is party to the Berne Convention which extends such protection to most countries of the world.  Actors, dancers, musicians, singers and other performers automatically have the right to object to the unauthorized broadcasting, filming or taping of their performances and the distribution of copies of those performances by virtue of Part II of the Copyright, Designs and Patents Act 1988. Those rights are known as rights in performances.  Broadcasters, film and sound recording studios which have contracted to record such performances also have the right to object to unauthorized broadcasting, filming or taping. Although piracy (copyright infringement on an industrial scale) and bootlegging (infringement of rights in performances on an industrial scale) are criminal offences, primary responsibility for enforcing copyrights and rights in performances rests with the rights holders. They can bring claims up to £10,000 in the small claims track of IPEC, £500,000 in the IPEC multitrack and all other claims in the Chancery Division.

Conclusion
This is the toolkit that is available to rights holders. I shall discuss how to select those tools at my talk on What is IP? et cetera at M-SParc (the Menai Science Park) on Friday, 26 April 2019 at 13:00 (see Anglesey to celebrate World IP Day 10 April 2019 and Maximizing your Intellectual Assets  23 April 2019).  If you want to attend you can register here.  If you can't make that seminar but would like my slides or handout or wish to discuss any other IP matter, please call me on 020 7404 5252 during office hours or send me a message through my contact form.