Intellectual Property Rights

What are the objectives when creating IP?

\-maintaining fair competition and encouraging the production of a wide range of quality goods and services

\-underpinning economic growth and employment

\-sustaining innovation and creation

\-promoting technological and cultural advances

\-enriching the pool of public knowledge

What is intellectual property viewed as to a business?

a vital asset

required the “the jewel in the crown” to many organisations

strong brand may tempt investors

only asset left in hard times e.g. credit crunch

What are drivers for business?

\-inherit family business - acquire intellectual assets as part of inheritance

\-follow a dream and turn aspirations into commercial reality

\-respond to a problem and react following a flash of inspiration

\-improve existing technologies

\-number of sources

* home environment
* work environment
* hobbies

What are intellectual assets?

patents - invention protects function of products

trademarks - brand external face of company (often regarded as the most powerful piece of advertising a company is ever going to get)

designs - external appearance of a product

copyright - automatic unregistered right

How long does a patent last?

protection for a period of 20 years which provides the opportunity to take full advantage of the technology

How long does a trade mark last?

forever as long as kept in force, allows opportunity to diversify within a brand and enabled franchise operations

What are the regulations of IP?

international treaties & conventions

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European union

* community trade mark

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National legislation

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Statue law

* trade mark act 1994
* copyright designs and patents act 1988
* patents act 1977
* registered designs act 1949

Common law

* passing off
* confidence

What is passing off?

protects traders from unauthorised use of (un-) registered trade marks and other representations to misrepresent their goods/services as someone else’s

i.e. a trader tries to take unfair advantage of another trader’s reputation, passing of his products as that supplied by a more reputable trader

Case law example of passing off

Reckitt & Colman Products v Borden Inc



Reckitt produced lemon juice in this plastic lemon, been selling like this for years, had a reputation for this, borden decided to put their product in a plastic lemon, taken to court as they would damage jiff lemon, steal their goodwill and customers might buy the wrong lemon juice, Borden were not allowed to market their product in a plastic lemon as they established goodwill for being around for more than a decade, people may be mislead very conceivable

How are trademarks distinguished?

R in a circle

®

Why use trade marks?

Important for a company’s brand

Must consider brand right from the start

Established businesses spend vast amounts of time and money on research to identity a niche market before they launch a product

Businesses may try to re-brand

Consumers buy branded products and it’s the trademark they’ll identify

Why does research pay in terms of trade marks?

prime opportunity to create a brand identity

check IP office database to see if others have adopted this brand or something similar

mistakes are expensive to rectify and can destroy consumer confidence

e.g. don’t use wrong colour, symbol or number for market you’re entering

can use trade mark agent to add value to application

How many types of trade marks are there?

34 classes for goods, 8 classes for services

What does it mean you to have bona fide intent to use your trademark?

Can’t take out a trade mark to reserve it, must plan to use it

What kind of objections can be raised around trade marks?

absolute grounds of refusal (based on mark)

relative grounds of refusal (conflict with 3rd party rights)

What falls into absolute grounds for refusal?

non-distinctive - “ APPLE “

descriptive of their underlying goods/services

customary expression of the trade

consisting exclusively of shapes which results from the nature of the good themselves, necessary to obtain a technical results, or which give substantial value to the goods

deceptive to the public

contrary to public policy/morality

What falls into relative grounds for refusal?

conflict with earlier identical/similar mark for identical/similar goods

conflict with mark of repute

conflict with earlier rights

* confusing similarity
* can be overcome by obtaining permission of holder of earlier mark
* UK IP Office conducts search of national, community, international trade marks

Once registered how long is a trade mark protected for?

10 years, renewable every 10 years

When will a trade mark be revoked?

If not in genuine use for five years without proper reason/ use of TM is liable to mislead public

When would the holder of a trade mark take action?

if TM or similar mark used on packaging, stocking/offering (inferior) goods for sales under TM, importing/exporting, using TM on business papers or advertising

What are the basics rules of patents according to the patents act 1977?

invention/innovation must be new and not known anywhere in the world

invention must have an inventive step not obvious and simple adaptation

inventions must be industrially applicable

the unwritten rule: must be commercially viable - most important… is there a market?

What are the benefits of patents?

provides exclusive rights to innovation for twenty years

state gets access to technology - stops others from re-inventing the wheel

international registration available but comes at a cost so consider wisely

How do you avoid having your invention nicked?

don’t make details known before filing

if you work with others use a non-disclosure or confidentiality agreement

can DIY a patent but an agent provides a value added service

if employees create something during employment which they made a significant contribution to their employers can get compensation

Case law example of compensation for employee invention.

*Kelly and Chiu v GE Healthcare Ltd*

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Having established that the invention they made was worth £50 million to Amersham International (subsequently taken over by GE), the judge held that Kelly was entitled to £1 million, and Chiu to £500,000, for the value of the inventive contributions they made to their employer's profitability, in addition to their regular pay, of course.

What does registered design do and how long does it last?

protects the external appearance of a product

can test for 12 months before you file

lasts for 25 years and costs £60 for first give years

Example of dispute over design

Robert Welch Designs ltd said Argos copied their cutlery design. Received over £100,000 compensation for sales and legal costs when claim was found valid. Later agreed a licensing deal.

What is copyright and how long does it last?

automatic right - not registered - provides people who produce creative work to take ownership over what they have created

c in circle is internationally recognised

©

lats for 70 years after author’s death

property rights to works can be passed on as part of an estate, sold, licensed or given away

Who does copyright apply to and what does it cover?

authors, artists, photographers, musicians

protection of expression (work in tangible form), not ideas

since it’s an automatic right up to rights owner to prove they’ve been copied

retain your original to prove ownership

How does copyright work with authors?

author = first owner of work

may licence or sell copyright to someone else to exploit it - publisher, recording company

author = retains moral rights and gets royalties

owner = holds all economic rights to control commercial exploitation of the work (and takes legal action against copyright pirates/illegal file sharers)

How does copyright ensure flow of revenue for decades?

as it lasts 70 years post authors death

e.g. Tolkien’s worth sold for £10,000 and produced millions and will continue until 2046

john Lennon’s estate earns £12.3 million a year

What trends/developments are affecting IP?

pace of innovation/technological change

\-increasing value

\-technology to harm IP (mp3 tech, internet)

Changes in business structures

\-reliance on brands & logos

\-outsourcing

Changes in marketing practice

\-brand based marketing

use of imagery and associations with brands in marketing activities

\-image based industries

brand v brand competition