An effective brand protection strategy can protect your most valuable assets, namely your brand name and image, and the reputation and good will inherent in your branded products.
A proper strategy should deter competitors from infringing your rights and will certainly assist you in enforcing them, if they were ever infringed. English law provides for a variety of registered and unregistered intellectual property rights which can assist you to avoid costly litigation and which are summarised in this edition.
Registering your brand name and/or logo as a trade mark provides you with a cause of action against those who use a sign that is identical or (in certain circumstances) similar to your registered trade mark. In this way, the law seeks to protect any ‘mark’, it could be a name, logo, colour scheme, sound or one of several other elements of the public face of a business, which is capable of distinguishing the goods or services of one business from another.
There are 45 classes in which a trade mark may be registered and a trade mark is registered only in the particular categories which are relevant to the business of the company using the mark.
This is probably best demonstrated by the fact that a mark such as ‘POLO’ has been registered by different proprietors in respect of motor vehicles (Volkswagen), confectionary (Nestle) and clothing (Ralph Lauren). Once granted a trade mark may last forever, provided a renewal fee is paid every ten years.
The law of passing off is based on the perception that a competitor should not be permitted to divert trade away from an established business by deceiving customers into believing, through the use of a very similar logo or brand, that the competitor’s product, service or business is linked to or endorsed by the established business. If you have not registered your trade mark then passing off is the option available provided you can demonstrate that you have built up goodwill in your name/logo, the other party’s actions have confused the public and your brand has been damaged as a result.
A registered design protects the overall visual appearance of a three dimensional product. Designs can be registered solely in the UK or as Community Registered Designs in the EU. Protection is available for the visual features of a product including the lines, contours, colours, shape, texture, materials and ornamentation but not for what it is made from or how it works.
A registered design can be a valuable asset. Registration creates a monopoly right within the geographical area in which you have registered lasting up to 25 years and tends to be cheaper than other forms of intellectual property protection such as patent protection.
Unregistered design right
More limited rights in a design arise automatically (ie without registration) in the UK under the Copyright Designs and Patents Act 1988 and under European legislation. The UK unregistered design right is a monopoly right lasting between ten and 15 years, however, you must prove unauthorised copying to support an infringement action. Protection under the European right is wider but lasts just three years.
Copyright arises automatically without any need for registration. It protects literary, dramatic, musical and artistic works from, as the name suggests, unauthorised copying. Copyright does not protect ideas. It is only when the work is fixed in a permanent form, for example in writing, that copyright offers protection. Copyright confers on the owner of the right the exclusive right to reproduce, distribute, perform or adapt the work. In most cases copyright lasts for the life of the creator plus 70 years.
A patent protects new inventions and covers how things work, what they do, what they are made of and how they are made. A patent gives the owner the right to prevent others from copying manufacturing, importing or selling the invention without permission for up to 20 years. In order to qualify for protection an invention must be new and involve an inventive step which is not obvious. It must also be capable of industrial application. A patent is a monopoly right and enables you to stop others from copying, manufacturing, selling, and importing your invention without your permission. Applying for a patent is a lengthy and complex process but provides invaluable and comprehensive protection in the right circumstances.
Acquiring all relevant and available domain names in connection with your business name is a practical method of further protecting your brand. Domain names are awarded on a first come, first served basis. Being the owner of a registered trade mark, for example, does not automatically entitle you to use that mark as a domain name. Only one party can own a domain name and there may be a number of parties who are legitimately entitled to trade under a particular domain. It is important therefore to act quickly and register all appropriate domain names while they are still available. It is possible to challenge the ownership of a domain name if its registration is in bad faith (eg cyber squatters) or amounts to trade mark infringement or passing off.
Occasionally information is so key to a business that it is more beneficial to keep it as a genuine trade secret and to rely on the law of confidentiality than to register rights which require public disclosure of the information. Protection of a trade secret can, in principle, extend indefinitely and therefore may provide an advantage over patent protection which lasts for just 20 years and requires public disclosure.
If it would be difficult to copy the process, construction or formulation of your product, keeping it confidential and disclosing its details to as few people as possible under conditions of strict confidentiality may give you the protection you need. The disadvantage of relying on a trade secret is that it does not stop anyone from inventing the same process or product independently, and trade secrets can be difficult to keep. Perhaps the most famous (and successfully kept) trade secret is the Coca Cola formula which has remained unpatented and secret for over a century.