IP Tip No.1
Never allow your brand name to be used as a verb or a noun
Under UK Trade Mark law, a registered trademark can be challenged and revoked on the grounds that it has become “the common name in the trade for a product or service”.
Let’s take HOOVER vacuum cleaners as an example. Unfortunately, this brand is frequently misused as both a verb (e.g. “I’m hoovering the carpet” instead of “I’m vacuuming the carpet”) and as an noun (e.g. “Where is the hoover?” instead of “where is the vacuum cleaner?”). It is therefore very important that you police the use of your trade mark to ensure that any reference to it in literature is as an adjective e.g. “Our HOOVER vacuum cleaners are now on special offer”.
IP Tip No.2
Always keep & properly maintain laboratory records & experimental notebooks
In the UK and Europe, regardless of who comes up with an invention first, a “first to file” rule is operated. This means the first person to file a patent application will be granted the monopoly rights. However, under US patent law, the “first to invent” will succeed. This can be evidenced by thorough and well kept laboratory notebooks which must be permanently bound and page-numbered to prove the earlier date of invention and on-going attempts to exemplify and improve the invention.
IP Tip No.3
If you need to work with someone else to develop a new idea, make sure you have a written agreement between you covering ownership of rights before you start work.
You may need to work with a consultant or contractor to develop aspects of your idea that you do not have the resources to do yourself. Don’t just rely on the fact that the consultant “seems a good chap” or is a friend. Get a proper agreement drawn up between you in writing before you commence work. It should make proper provision for ownership of any rights arising from the work. If you are paying the consultant, make sure that the rights belong to you. If your intention is to share the rights, then have this fully spelled out. Written agreements are there for when things go wrong, rather than when you are all good friends, and can make sure that you do not get into protracted and expensive legal proceedings later down the line if the idea is successful. The agreement should take into account the different forms of intellectual property rights that might arise from working together.
IP Tip No.4
Don’t rely on registering domain names to protect your brand.
It doesn’t really give any protection. Registering your trademark will give you control of conflicting domain names and trademark abuse in general. Please see our domain names page for more information.
IP Tip No.5
Seek patents in your own markets – don’t worry about trying to stop manufacture around the world
Patents cover specific territories – for example, a UK patent covers only what happens in the UK. You can use a patent to prevent infringement by importation, so even if copies of your product are being manufactured in, say, China, you can use your patent to stop them being sold in the UK. In some circumstances, you can even stop the infringements entering the country. So you don’t need to patent in every possible country where the product might be made, just in the markets that are likely to be important to you commercially.
IP Tip No.6
Google AdWords – can others’ trademarks be used as keywords?
Trademark owners have complained that their rights are being infringed if search engines (such as Google and Yahoo!) allow third parties to purchase their trademarks as keywords in order to bring up in the search results sponsored links and advertisements for the third parties own websites.
There have recently been a number of cases on this very issue and another important ruling has now been given by the ECJ in Portakabin v Primakabin. It essentially says that using a trademark belonging to someone else in order to trigger search engine adverts is unacceptable where the advertising ”does not enable average internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or from an undertaking economically linked to it or, on the contrary, originate from a third party“.
Please see our Domains Names page for more information.
IP Tip No.7
A registered limited company name does not grant trademark protection
This is a common misconception! Simply registering a limited company name with Companies House does not mean that your company name has any trademark rights which you can enforce against another party. Nor does it mean that you will not be liable for trademark infringement yourself.
Before registering a new company name with Companies House, you must ensure that your chosen name does not conflict with any earlier trademark rights. Trademark professionals offer comprehensive clearance searches which will provide you with a full analysis of any conflicting earlier rights that are identified as being similar to your chosen trading name. If you wish to stop other people from using a trademark similar to yours, you should seek registered trademark protection.
IP Tip No.8
Don’t assume that use of your own name will always be a defence to trademark infringement
It is quite well known that Section 11(2)(a) Trade Marks Act 1994 provides a defence to trademark infringement in respect of the use by a person of their own name in the course of trade. However, few realise that this defence has the proviso that such use must be made “in accordance with honest practices in industrial or commercial matters”.
So what are “honest practices”? Honest practices require a duty to act fairly in relation to the legitimate interests of a trademark owner. If use of your own name in the course of trade amounts to passing-off, then it is unlikely to be deemed to be “in accordance with honest practices” and this defence would not be available.
Likewise, if you adopt to trade under a name without first demonstrating reasonable diligence in searching for conflicting earlier marks, then this could be a factor that is taken into consideration in deciding whether you have acted fairly and in accordance with honest practices.
There are many complex issues that must be considered to determine if this “own name” defence will be available to a trader, so please always seek specific advice on your particular circumstances before choosing your business name or assuming that you can rely on a defence
IP Tip No.10
When filing a patent application, don’t “spoil the ship for a ha’p’th* of tar”. Be thorough for best protection.
Generally speaking, once you have filed a patent application, you are stuck with what you said about your invention in the initial patent specification. Your protection will be based on what you have said in the specification, not on what you have omitted. So make sure that you help your patent attorney do the best possible job by supplying him or her with as much information as you can on the invention, not just what you think might be relevant. Information about what does not work could be just as important as information about what does, so take care to keep a record of your failures as well as your successes. This could be important in making your patent useful.
Remember: a quick, cheap, patent application will almost certainly not result in a strong and valuable patent, whereas taking the time and money to get it right will certainly strengthen your position. A patent attorney can prepare a professionally drafted patent specification to provide the best possible basis for a strong patent. Please visit our patent pages for more information.
* An abbreviated form of halfpennyworth, for those unfamiliar with the peculiarities of the old pounds, shillings and pence days of the UK currency! The halfpenny represented a very small sum.
IP Tip No.11
Comparative advertising using third party trademarks: follow the Directive to avoid infringement.
Comparative advertising occurs where one trader compares their products or services to those of a competitor. This is often done in order to demonstrate price comparisons to consumers; to compare quality; or even to indicate the intended purpose of their products (such as accessories or spare parts). Such advertisements will often identify the competitor or their products by their trademark, which naturally gives rise to trademark infringement considerations.
Legislation has tried to find a balance between protecting the interests of trademark owners and assisting consumers to make informed choices. The current position is that comparative advertising is permitted providing that the third party’s trademark is used “in accordance with honest practices”. This question is often subject to complex interpretation, but further guidelines can also be found in the Comparative Advertising Directive 84/450 which sets out a list of requirements that an advert must meet in order to be lawful.
To briefly summarise these criteria, the advert must not be misleading or create confusion, it must not discredit or denigrate the third party’s trademark, it must not take unfair advantage of their reputation, and it must not present goods/services as imitations or replicas of others which bear a protected trademark.
We would strongly recommend that professional advice is sought in advance before use is made of a third party’s trademark for any purpose. If you would like specific advice on this subject, please contact us.
IP Tip No.12
IP rights are assets that can be valued and included on a balance sheet
IP can often represent a significant proportion of the total value of a business’s assets. For many large companies, the greater part of their market value is based upon their IP (intangible assets) rather than their concrete capital assets.
All of the IP rights within a business should first be identified by conducting a thorough IP audit. The extent of the resulting portfolio of rights is often a surprise to many businesses! Once identified, a business can then ensure that all of their IP rights are properly protected. Identifying and protecting IP rights can also lead to helping a business to commercialise its IP in order to generate additional income, such as through licensing agreements with third parties.
An accountant can provide a professional valuation of the IP rights and can advise on including them on a balance sheet. Once valued, it may even be possible to use the IP as collateral for a business loan.
For more information about identifying the IP rights within your business, visit our page on IP Audits.
IP Tip No.13
Using “look-a-like” packaging is likely to amount to trademark infringement
Product packaging that intentionally imitates the packaging of a well-known brand is prohibited if it “takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark”. Importantly, liability can still be found even if there is no confusion between the goods in question and those of the trademark owner. The policy behind this is that leading trademark owners should be able to prevent their competitors from “riding on the coat tails” of the power of their brand’s consumer attraction, reputation and prestige.
Practically speaking, deliberately using look-a-like packaging to attract customers (even if they are not confused as to the item being an imitation) is likely to satisfy the test for taking “unfair advantage” of, or being “detrimental to” a trademark with a reputation and, accordingly would thereby amount to trademark infringement.
If an action for trademark infringement is successful, both the damages that can be awarded, and the legal proceedings themselves, can be very costly. Other remedies may also be available to a successful claimant, such as an injunction restraining any further infringement of their rights and the delivery up for the destruction of any goods already marked with the infringing mark.
IP Tip No.14
Overlap your IP protection to further safeguard your creativity
Few realise that it is often possible to obtain multiple forms of IP protection which all relate to the same article. For example, a new product may qualify for patent protection in respect of a new technical function that it offers; the visual appearance of the product and its packaging may be protected with a registered design; a trademark registration may be obtained for the brand name that is applied to the product and any accompanying instruction manuals and advertising literature may be protected by copyright.
There can also often be some overlap whereby, for example, a new logo may qualify for both registered design and registered trademark protection. Each form of protection has different advantages, so by having both, you can maximise the potential benefits of each.
Assessing which forms of protection are available, and the advantages of each, should be carefully considered when you are formulating an IP protection strategy for your business.
IP Tip No.15
Don’t discuss your idea with others without a confidentiality agreement.
Patents are granted for developments which are novel and involve an inventive step at the date a patent application is first filed. For something to be novel, it must not have been “made available to the public” in any form. This includes telling other people about the invention. So you really need to keep the invention secret until your patent attorney confirms that the patent application has been filed.
But it is often necessary to talk to others to assess whether the idea has any commercial merit, or to help with certain technical aspects. This is where the confidentiality agreement (or non-disclosure agreement) becomes important. By getting written confirmation that your discussing the invention with someone else is to be treated as confidential, and therefore does not constitute a public disclosure, you make sure that your discussions cannot be used to attack your patent at a later date. Visit our page on confidentiality agreements for more information.
IP Tip No.16
Domain name disputes: Trademark rights must pre-date registration of domain name
Domain name disputes frequently arise whereby one party asserts that they have more legitimate rights to own a domain name which has already been registered by another party. In order for such a complaint to succeed, the general rule is that the complainant must provide evidence that they have (identical or confusingly similar) trademark rights which pre-date the date that the domain name in question was registered.
If the domain name was registered before the complainant established any trademark rights in the name, then logically it is very difficult to satisfy the requirement to demonstrate that the domain name was registered in bad faith. It follows that securing your rights with trademark protection at the earliest possible date will go a long way to support your position should any conflicting domain names be registered by others later on in the future.
Please contact us if you would like advice on resolving a domain name dispute.
IP Tip No.17
Seek professional advice before threatening to bring an action for infringement.
In a competitive marketplace, most traders want to take immediate action to alert an infringer of the existence of their registered rights and to inform them that they will take action against them for infringement if they continue. In many cases, the mere threat of such an action can serve as a sufficient deterrent to stop them, since most traders would prefer to avoid the cost and implications of a legal battle.
However, before doing so, rights owners should be aware of the “threats” provisions contained within the relevant UK legislation (s.21Trade Marks Act 1994; s.70 Patents Act 1977; s.26 Registered Designs Act 1949 and s.123 Copyright, Designs and Patents Act 1988). These provisions allow an aggrieved person to bring an action to stop unjustified threats being made against them and to claim damages for any loss sustained as a result of the threats. They exist in order to protect traders from receiving unsupported and damaging allegations of infringement from their competitors.
The threats provisions and interpreting case law must be carefully observed, so please always seek professional advice before entering into any such correspondence with another party.
IP Tip No.18
Changes to the appearance of a registered trademark could affect its validity
During the lifecycle of a brand, companies often want to “re-vamp” its style and appearance, for example, with new colours or logo elements … but beware! Few realise the importance of using a trademark in the form that it was registered in order to maintain the validity of the registration.
When an application to register a trademark is filed, the application must include a graphic representation of the trademark. This is essential because it is the appearance of the trademark in this form that will be used for comparison purposes when assessing its similarity with other marks. In order to maintain the validity of a registration, it must be put to genuine use within five years from the date of registration, otherwise it can be attacked and revoked from the Register. The catch here is that if a trademark owner has changed the appearance of a registered trademark, such that it differs in elements which can be said to alter its distinctive character, then it could be argued that the registration has not been used.
If your company is considering a make-over of any of its brands, please seek advice first as to whether the proposed changes could impact upon the validity of their corresponding registrations. It might be the case that a new application for trademark protection should be sought for the new version of the brand.
IP Tip No.19
Always obtain permission before using copyright material.
If you would like to use a work that is protected by copyright, for example, by publicly performing a piece of music or by publishing a photograph in a magazine, then you must obtain the permission of the copyright owner beforehand.
Permission is often granted in the form of a licence. There are a number of organisations known as collecting societies which represent the interests of copyright owners by granting licences and collecting royalties on their behalf. See for example the Copyright Licensing Agency and the Performing Rights Society.
Whilst it is true that there are a few exceptions that may allow you to use a work that is protected by copyright (for example, a teacher showing a film to a class of students during a lesson for educational purposes), it is certainly not advisable that you assume that you can rely on any such exceptions without first always obtaining professional advice. Please refer to our Copyright page for more information.
IP Tip No.20
Owners of registered IP rights: make sure that the Register is kept up-to-date.
The importance of maintaining accurate and up-to-date contact details on the Registers cannot be stressed enough. In the case of the UK, the address for service details that are recorded are relied upon by the UK Intellectual Property Office (UKIPO) in order to serve notices upon the proprietors of IP rights.
If any changes are made, for example to your recorded business name, or if you move address, this information must be immediately be recorded with the UKIPO. It is the proprietor’s responsibility to ensure that the contact information is accurate at all times – if these details are obsolete, then these critical notices may never reach you.
It is also very important to record the details of any licensees so that, in the event of any subsequent infringement proceedings for example, the licensee is entitled to the (rights and remedies) protection afforded by the relevant legislation.
IP Tip No.21
When commissioning a design, don’t assume that you will own the copyright.
Many are surprised to learn that the copyright in a work usually automatically belongs exclusively to the creator/author of the work, not the person who commissioned it.
Common examples are where a freelance designer creates a new company logo for their client, or where a photographer is commissioned to take some pictures for a client’s company brochure. Unless there is a specific agreement (e.g. a clause in a contract) to the contrary, then it is often the case that the photographer or designer will retain the copyright. This means that you will need their permission to reproduce it, or put another way, they do not need your permission to use that logo or photographs again.
It is therefore always advisable to discuss the ownership of the subsequent copyright with your designer/photographer before commissioning the work and ensuring that you agree terms that both parties are happy with. Please refer to our page on Copyright for more information.
IP Tip No.22
Trademark rights are “exhausted” once the goods have been put onto the market by the proprietor.
Many traders own trademark rights, but how many have heard of the “doctrine of exhaustion”? Furthermore, how many traders can explain what it means or how it affects them?
In essence, the doctrine of “exhaustion of rights” can provide a defence to trademark infringement where the re-sale of genuine goods is concerned. This doctrine provides that following the first sale of a product bearing a protected trademark by the trademark owner (or with their consent) in any EU member state, the trademark owner’s rights will be “exhausted” i.e. they will lose their exclusive rights to control onward sales of that actual product in other EU member states. Naturally, this defence does not apply to the use of the trademark in connection with a competitor’s goods or upon counterfeits, only the re-sale of the trademarks owner’s own genuine goods.
Most traders are affected by this issue in the context of parallel imports – this is where a non-counterfeit product is imported from another EU member state without the permission of the intellectual property owner. In these circumstances, if the goods bearing the trademark were sold in the first country by the proprietor (or with their consent), then the doctrine of exhaustion may provide a defence to the importer of those genuine original goods against liability for trademark infringement.
This is a complicated area where exceptions may apply therefore specific advice should always be sought if you have any questions relating to your particular circumstances.
IP Tip No.23
Don’t use a ‘Clip-Art’ image for your business logo – you do not own the copyright.
As a general rule, most computer software licences grant permission for the user to make use of these art and photo images for home/personal use only. Use of an image on a business card or business stationery or advertising, for example as a company logo, may constitute use for ‘commercial purposes’ and so could amount to a breach of the terms of the software licence and copyright infringement.
Furthermore, if you make use of an image as your company logo for which you do not own the copyright, you cannot prevent others from reproducing the same image in the same way. This could cause confusion and become very problematic in the future as you build up goodwill and reputation and your customers grow to recognise you by this logo.
Always make sure that you own the copyright to your business logo and then consider obtaining registered trade mark protection. Please refer to our page on Copyright and Trademarks for more information.
IP Tip No.24
Ways to save money on trademark renewal fees …
If you own a bundle of trademark registrations throughout Europe, you could potentially save a great deal of money by consolidating the registrations into one Community trademark (CTM) registration. You can claim “seniority” i.e. the filing dates of the national registrations so that your CTM protection is backdated and then allow the national registrations to lapse. Since CTMs involve the payment of only a single fee in one currency, this saves on both official renewal fees in each jurisdiction and local Attorney fees.
Another cost saving tip is to review the classes of protection that your registration covers. If you are no longer selling goods/services in a particular class protected by your registration, you can save money on individual class renewal fees by opting not to renew that particular class. This still allows you to maintain your registration without having to pay to protect goods/services in classes that are no longer of commercial relevance to your business.
IP Tip No.25
Display your rights to deter competitors from infringing.
Whilst there is no legal requirement to mark your product as “patented” or “patent pending/patent applied for”, it is strongly recommended. Displaying your rights in this way provides others with a warning that patent protection exists (or in the case of a pending application, may protect the product in the future) which could help to stop others accidentally infringing. It may also help to deter the deliberate manufacture, use or sale of the product if others are aware that legal action can be taken to stop it.
Whether your patent has been granted or is still pending, you should display both the patent number and country of the application. Please note that it is a criminal offence to mark an unpatented product as patented or to indicate that a patent has been applied for if it has not.
IP Tip No.26
Before launching into legal proceedings for patent infringement, get an opinion on validity.
A common defence to patent infringement is to challenge the validity of the patent rights relied upon. Before initiating any action with a third party, you are best advised to seek a professional opinion on the strength of your case. This opinion may determine whether you try to negotiate a settlement with the other party or press on with full infringement proceedings. We can provide you with a confidential and independent assessment of the main issues in dispute. Please contact us to arrange an initial review.
IP Tip No.27
If you are thinking of launching your trademark overseas, consider transliteration.
If you begin trading overseas, you may wish to give some thought to whether it would be advantageous to adapt your trademark to suit the local market, language and culture.
An obvious example is that an innocent, inoffensive word in English may have an entirely different meaning in an overseas non-English speaking country. However, there is also the issue that it is desirable for local consumers to be able to read and pronounce your trademark to enable them to remember and identify with it. If your trademark is written in roman characters, this may be difficult for a consumer in a country which has an entirely different alphabet or script, for example in China or Japan, since they may perceive your trademark as merely figurative. In this case, you may wish to explore the complicated task of conceptually and/or phonetically transliterating your trademark into the language in question. For more information on the translation & transliteration of trademarks, please contact us for our fact sheet.
IP Tip No.28
Once your trademark is registered, set up a watching service.
If you have taken the time and trouble to invest in the protection and registration of your trademark, you need to keep an eye on any new conflicting applications that are filed. The trademark offices in many countries, including the UK and Community trademark office, will not refuse a new trademark application for registration on the grounds of an earlier confusingly similar application or registration – it is considered to be the responsibility of the existing trademark owner to monitor publications for conflicting applications and object to their registration.
We offer a “watching service” which entails a regular search through all the latest published trademark applications. If a similar new trademark application to your own is identified, we immediately send you a watch notice. For more information, visit our Trademark Watching Service page or request our fact sheet.
IP Tip No.29
Make sure you register your design before the grace period expires!
In order to be protected with a registration, a design must be new and non-functional. Few people realise that marketing a design will destroy its “novelty” – this means that after a certain time limit, you will not be entitled to a registration to protect it. There is a grace period of 12 months from the date of first marketing your product design, so you must make sure that your application is filed within this time limit, if you haven’t already before marketing.
But beware! If you might need to protect your design overseas, bear in mind that some countries do not offer a grace period, so delaying could result in an invalid registration in those countries. Consult us before releasing your design to the market for advice on timing.
IP Tip No.30
Always have a trademark clearance search conducted before using a new brand name or logo .
It is very important to establish whether there are any conflicting earlier trademark rights which might be used to prevent you from using or registering your proposed new brand. A trademark clearance search can provide you with a full overview of the existence of any similar earlier trademark applications and registrations. This means that the risk of infringement can be assessed and the likelihood of you being able to register your proposed mark successfully can be gauged before you invest any time or money in your new brand.
IP Tip No.31
Be aware of the legislation protecting use of the Olympic symbols, logos and slogans.
It is hoped that the approaching 2012 Olympic Games to be hosted in London will provide UK businesses with a boost. However, before making any reference to the games (for example in advertising material or on any products) traders should be aware that the Olympic symbols and words relating to the games etc. are well protected. Only official sponsors and merchandise licensees of the games are authorised to use any of the Olympic brands or anything confusingly similar, including any representation that is likely to create an association with the Olympics in the public mind. For more information about the Olympic brands, visit the Official site of the London 2012 Olympic and Paralympic Games or refer to their guidance brochures.