Trade Marks and Patents – how to protect your rights

We regularly attend Pure B2B meetings, a mastermind group where business leaders share business experience and wisdom, helping each other overcome challenges and make important decisions.  At one of these, I met Alison Cole of Graham Watt & Co LLP in Sevenoaks, a trade mark attorney who advises clients on how to protect and exploit brands.

She raised lots of interesting points and opportunities which we felt could benefit our clients and friends, so now over to Alison ….

“Whatever clever idea you may come up with, and whatever you might choose to call it, fortunes can only be made if you can get some protection against copying by competitors.

To be in the best possible position to come up against competitors, to attract consumer attention or to gain marketing exposure, being able to increase perception that you are an innovative and creative company is key.  In an increasingly difficult financial climate, you need to make the most of your ‘unique selling-point’.  As is frequently seen on programmes like BBC’s Dragon’s Den, potential customers, investors, licensees etc will ask what level of protection you have obtained for your idea.  A registered item of intellectual property (patent, trade mark or design) is a highly effective tool for securing additional funding as it is a tangible, listable asset of your company.

If you have invented a new product or process, a patent agent can provide advice on how any novel elements may best be protected and whether the marketing of such a product is likely to impact on the patent rights of others. If you have created a new design, whether it be the shape or configuration of the product or the pattern or ornament applied to it, a patent or trade mark agent can provide advice on how any novel elements may best be protected. And one must not forget that names and logos used in association with the marketing of the product can usually be protected as registered trademarks.

Patents

The invention is defined by the patent ‘claims’ in such a manner that the public can judge whether they are likely to infringe it. Commercially, the broader the definition of the invention the better, but at the same time the invention must be both new and non-obvious with respect to what is already known.  The patent must also describe the invention sufficiently for a person of reasonable skill to carry it out. This is your bargain with the state. In return for protection, you are obliged to fully disclose the invention. While obtaining effective patent protection for your product can be somewhat costly in the long term, patenting need not be solely the domain of big business with deep pockets. Initial costs can be more affordable than you might first think, and profits from a successful product can help to fund the later costs to provide further security.

Whatever your invention may be, professional advice should always be sought at an early stage. Even casual public disclosure of your idea before your application has been filed can invalidate your rights,so keep everything confidential until you have talked to a patent agent and followed their advice.

Designs & Copyright

To be registerable, a design must be new, which means it must not be the same as any design which has already been made available to the public. That is why it is so important to talk to your patent agent at an early stage, before the design becomes published.  Design registration is relatively inexpensive and, if objections are not raised by the Patent Office, registration can be confirmed within a matter of weeks. Protection lasts for 5 years, but can be extended up to 25 years by the payment of renewal fees.

Even without a registration, some form of protection may still exist for your design.  An unregistered right, known as ‘Design Right’, can be used to stop copying of a design. This protection lasts for up to 10 years from the date of first marketing of the product, subject to a maximum of 15 years from the creation of the design. Actual copying can sometimes be difficult to prove, so a design registration should always be sought whenever possible.

Finally, there will be some instances where copyright can be relied upon to protect the appearance of your product, especially if it involves some literary aspect, such as instruction manuals.

Trade Marks

Trade marks are the signs which distinguish the goods and services of one trader from those of another. While the composition of your favourite shampoo may change over the years, by selling the product under a particular mark the manufacturer ensures that the customer continues to associate the product with that company.  The registration of trade marks provides protection for the goodwill and reputation of your business in its products and services. Trade marks can therefore be a valuable asset of the company.  Registration of a trade mark in the United Kingdom is usually a relatively simple and inexpensive exercise. A trade mark agent can draw up the application for you, file it at the Trade Marks Registry and conduct any negotiations to overcome any objections which may be raised by the Registry.

A mark must be distinctive to be registerable. Thus, logos tend to be relatively easy to register, as are invented words or known words which have no bearing on the quality and character of the goods. Marks which are descriptive or deceptive are best avoided. Misspellings don’t help however, so you would expect to have difficulty registering a mark such as ‘SupaComputers’ in respect of computers.

Marks are registered in respect of a specified list of goods, and these are broken down into 45 classes for administrative purposes. It is quite common for marks to be registered in two or more classes. Thus, for example, KodakTM is registered not only for films but also for cameras; and Marks & SpencerTM is registered in respect of clothing, food, financial services and much more.

Whether you are concerned about the risks of infringement of someone else’s registration, or wish to register your own mark, or both, it is wise to consult a trade mark agent at an early stage. He can identify any likely difficulties and advise on the costs involved. The cost of such a search will be far less than the cost of re-branding a product after launch.

In summary, whatever idea you have which may be capable of making your fortune, talk to your patent or trade mark agent as soon as possible to ensure that it is you and not someone else who reaps the rewards.”