Exploring Intellectual Property Rights
Pippa Mckernan takes us on a whistle-stop tour by exploring some of the most fundamental concepts within Intellectual Property Law. In the age of technological innovation and consumerism, the protection of Intellectual Property rights is a crucial concern for businesses.
What are intellectual property rights?
Intellectual Property (‘IP’) rights include patents, copyright, and trademarks. They protect intangible property, such as words, business symbols, product designs, and processes.[1]
IP rights are fundamental to businesses as they enable IP owners to prohibit others from using their property by applying for an injunction. The grant of an injunction allows companies to protect their reputation as others are prevented from using their name and goodwill. Furthermore, IP protection enables a business to claim damages as a result of loss caused by a decrease in sales, or the depreciation in the brand’s reputation, as a result of the use of the IP by an unauthorised legal person.
By way of an example, the well-known brand, ‘Lego’, has to regularly enforce its IP rights against companies which sell very similar products, or which use its name and logo. In 2019, Lego blocked a trademark for ‘Lepin’, which was used on building blocks.[2] It is essential for Lego to take such actions because Lego does not want its consumers to become confused, and accidentally purchase a competitor’s product, thinking it is Lego. Furthermore, as Lego licences its trademark, the licensee will not want to pay a fee if others are able to use the mark without also paying a fee. Finally, if Lego does not defend its trademark rights, it risks losing them, as its product will no longer have individuality in the marketplace.
IP rights can be licenced or assigned. With a licence, the right to use the IP is given to a particular individual for a particular purpose and is often confined to a specific geographical and temporal scope. In exchange for the use of the rights, the IP owner is usually provided with financial incentives. These financial incentives can take the form of royalties, which are paid at regular intervals, or as a one-off initial payment. A business may choose to licence IP rights to raise capital, or so that its brand can be used on other products. For example, an author of a book may licence the name (trademark) and the drawings (copyright) to a stationery company, so that the characters and its name can feature on pencil cases etc. This form of licence is very common and has clear advantages for each party involved. Specifically, the income received by the licensor, as well as marketing benefits, and the increased profit generated by the use of the IP for the licensee.
An assignment is where the IP is sold to another party. Usually, the person assigning the IP retains no rights in it. An assignment may be made where the owner of the IP no longer has a use for it, or where they wish to raise capital. Assignments are commonly made by freelance workers, such as photographers and website designers, as it may be important for the IP to be owned by the business commissioning the work. Moreover, assignments are frequently made during company acquisitions because the purchasing company is likely to want to be able to use the brand’s name and other IP.
Patents
A patent enables the owner to exclude others from using the invention, as claimed in the application, for a maximum period of 20 years.[3] Patent owners can only enforce their rights against the invention as actually ‘claimed’ in the invention, irrespective of the invention’s real-world application. Accordingly, it is very important that the claims, which are descriptions of the invention’s composition, purpose and operation, are clear and contain every element of the invention.
Patent protection is territorial. This means that if registered in the UK, the patent is not enforceable outside of the UK. However, registering in the UK alone is expensive. The additional requirement to make a patent application in Europe, or internationally, can increase costs considerably. Despite the increased costs, if a patent is only applied for in the UK, nothing can be done to stop the invention being made and sold in other countries. Therefore, it is worth considering protection in countries where the invention might be used or sold.
To be considered patentable, the invention must be novel;[4] involve an inventive step; and be capable of industrial application. Novelty means that the invention is not part of the state of the art[5] (anything which already exists), at the date of filing the application.[6] The ‘inventive step’ requirement means that the creation of the invention must have involved a process or procedure that was not obvious to a person who works in the field of the invention. Finally, industrial application requires that the invention can be made or used in any kind of industry, this requirement is fairly easily satisfied.
One particularly interesting example is a patent for the layout of the Apple stores. The patent protects the use of the glass panels which form a transparent cube featuring the Apple logo, it also protects the staircase and the display stands. The application was granted because the exact layout has not been previously used in the way that Apple has used it, this makes the ‘invention’ novel. In terms of the ‘inventive step’ requirement, Apple stated that every feature was precisely designed to provide a superior user experience for a customer exploring an electronics store. The use of the layout and the manner of implementation was held to fulfil the ‘inventive step’ requirement. Finally, the fact that the stores are used to sell Apple’s products demonstrates that they are used in a specific industry, fulfilling the third and final requirement for patentability.
To patent an invention in the UK, an application must be made to the UK Intellectual Property Office. The application must include a description, drawings, and claims of the invention. The claims and drawings should be sufficiently detailed and precise to enable a person to recreate the invention. This is because once the protection period has expired, the patent will be made available to the public domain for anyone to use. For this reason, it is imperative that an intellectual property professional drafts the patent application, thus mitigating the risk of the application being refused as a result of any inadequacies.
Once the application has been submitted, along with the relevant fees, the patent office will examine the application, and if acceptable, proceeded to grant the patent. The process from application to grant usually takes around three to four years. Once granted, the patent lasts for an initial period of 4 years, after which time it has to be renewed, and a fee paid annually.
Copyright
Copyright protection enables the owner to prohibit others from copying or using the IP. Copyright arises automatically and subsists in various types of work, including literature, artistic works, and musical works.[7] It is important to note that copyright protects the expression of the idea, rather than the idea itself. An example of this in practice is the spy film genre. Numerous films of this genre have been made, each of which has the same underlying idea. However, this is not the protectable element, the IP exists in the way that the film is shot, scripted, and the way in which the music is integrated.
The author of the copyright is usually the owner,[8] unless the right has been licensed or assigned. It is always important to check who actually owns the copyright, as the owner is the person with the right to enforce the IP rights. The owner can be identified by clarifying who actually made the work and enquiring as to whether any assignments have been made.
The duration of copyright protection varies depending on the type of work, but in literary works, such as a book, the copyright lasts for the entirety of the author’s life, and for an additional 70 years after their death. For a book written by two or more persons, copyright will expire 70 years after the last author has passed away.
In order for copyright protection to exist, the work must be a type of work as described in Section 1 of the Copyright, Designs and Patents Act 1988. These ‘works’ include literary works, dramatic works, and many others. The works must be original,[9] meaning that the creator must not have just copied someone else’s work. In a number of the works, there is also a requirement of ‘fixation’ this means that the work must be recorded. For example, the lyrics of a song must be written down, and if performed, there must be a recording for the copyright to exist.
Copyright does not provide monopoly protection, this means that if a very similar work was made, without knowledge of the first piece, no infringement would occur. This is because copyright protection prohibits the use or copying of a substantial part[10] of the copyright owner’s work. Accordingly, the alleged infringer must have had access to the work in order to have copied it. As a result, protecting copyright can be an uncertain, expensive and time-consuming endeavour, as the claimant must prove that the defendant had access to the protected work, and copied a substantial part of it.
Registered trademarks
A trademark is a sign, symbol, sound, colour, or word(s) which identifies a product, service, or business. Trademarks can be registered or unregistered. However, registration is strongly encouraged, as this provides clearer, more certain, and stronger protection.
To register the trademark, an application should be made to the UK Intellectual Property Office,[11] the process takes about 4 months. Prior to submitting an application, searches should be made on the trademarks register to check for any similar marks. A trademark is registered in a particular class, as clothing and/or catering for example. Multiple classes can be applied to the mark, though, after the first class, each additional class will require a £50 fee.
In order to be registrable, the mark must be capable of representation in a clear and precise manner.[12] This is usually easy to fulfil when it comes to logos, given how they are represented. However, it becomes more difficult with colours and smells. Furthermore, the mark must be capable of distinguishing the goods or services. This means that generic marks are unlikely to qualify. By way of an example, Coca Cola is a very well-known trademark and is used to distinguish the fizzy cola drink from its competitors. If a new lemonade drink was made, and a trademark, ‘Lemonade’ was applied for, this would likely be rejected as it is very generic, entirely descriptive, and is not able to distinguish this fizzy drink from other similarly citric drinks.
Once registered, the trademark will last for 10 years.[13] After this time, it can be renewed indefinitely, provided the mark is still in use, the fee is paid on time, and no objections are made.
Written by Pippa Mckernan.
[1] Lionel Bently, Brad Sherman, Dev Gangjee and Phillip Johnson, Intellectual Property Law (5th edn, Oxford University Press 2018) 397.
[2] UK Intellectual Property Office, ‘Trade Marks Decision’ (UKIPO, 19 March 2019) < https://www.ipo.gov.uk/t-challenge-decision-results/o14219.pdf> accessed 1 July 2020
[3] PA 1977, s2.
[4] Patents Act 1977, s1(1).
[5] Patents Act 1977, s2(1).
[6] Patents Act 1977, s 5(1).
[7] Copyright Designs and Patents Act 1988, s1(1).
[8] Copyright Designs and Patents Act 1988, S11(1).
[9] Copyright Designs and Patents Act 1988, s1(1)(a).
[10] Designers Guild Ltd v Russell Williams (Textiles Limited [2001] 1 WLR 2416.
[11] Trade Marks Act 1994, s32.
[12] Trade Marks Act 1994, s1(1).
[13] Trade Marks Act 1994, s40(3).