If you have a brand or logo that customers identify with you, are about to launch a new branded product or service, or have composed a new instrumental for a soundtrack, or have written a song, comedy sketch, etc, then it is important to protect such Intellectual Property sufficiently, because doing so could prevent someone else using them for financial gain without your permission, and 'free riding' on your hard work and hard earned goodwill that may be attached to such IP. And in the case where someone infringes your IP, if it is sufficiently protected, it could most likely give your case much weight in a Court of Law during an infringement case, than if it wasn't.In addition it is also important to have your brand name, logo, screened (and searched) before publication or use so as to ensure that you are not unknowingly using someone else's trade mark (and thereby infringing their IP) or if its an invention idea you are trying to obtain a patent for, then to ensure that no one else has already patented it , or that it is not already in the public domain.
Furthermore, once registered, most IP, be it patents and or trade marks are valuable assets that could increase the value of your business though acts such as licensing. It is also important to note that protecting and enforcing IP, are two distinctly different activities. Once your IP is properly protected, it is often required of the owner of the IP to ensure that the IP is adequately enforced from the outset, and sometimes this is important in preventing loss of rights. On a slightly different note, it is also important for other IP such as copyrights (be it an instrumental, a new song or a drama sketch ) that appropriate measures are put in place before disclosing such work. Minimally, a good contract should be negotiated with the record company(or your agent), and before signing such a contract, the artist(s) should ensure that an experienced IP professional has carefully reviewed such documents and presented all the pro's, and cons (including any possible undesirable effects that could later arise).
How much investment is required in order for me to make money from my invention?
Hopefully your invention will be financially rewarding, however an inventor may need to invest substantial sums in order to bring this to fruition. But it is also important to remember that there are no guarantees that any particular product will sell well, and launching something new always involves a degree of risk. Inventors should balance facts with reason and seek professional advice not only regarding IP protection, but also business strategy on the commercial exploitation of an invention. We often provide individual inventors / SME's with a list of funding organizations / initiatives, which provide finance to new ventures / inventors. Although success is never guaranteed, it is always worth approaching such bodies to try and secure funding. You can contact us here, to obtain this list.
What should I do if I think someone is importing into the UK, products that infringe my IP?
Patents are territorial rights and are enforceable only in the jurisdictions they cover. A UK patent will only give its owner rights within the United Kingdom. This includes the right to stop others from importing articles which infringe the owner's rights into the UK. If an applicant desires patent protection in other European countries or the USA for instance, they must make separate applications at the European Patent office or the US patent office, as at present there is no single world-wide system of granting patents, although there are some treaties/ conventions (Covering Europe, US, and other parts of the world, see Patent Cooperation Treaty route here) that award a patent applicant protection in a number of jurisdictions. However, it is important to note that what you get in these instances is not one single patent as such, but a bundle of national rights which must be pursued individually. Furthermore most jurisdiction will have specific (and usually slightly different) requirements that must be satisfied before a patent is granted from the single Patent application.
There are three commonly used ways of obtaining foreign patent protection:-
(i) Filing separate national applications in individual countries of interest (you can request more information here);
(ii) Using the Patent Cooperation Treaty (PCT) route; It is important to note that the PCT enables the filing of an international patent application, but this must eventually be followed by the filing separate national and / or regional patent applications covering every country in which patent protection is sought. Thus,the PCT does not itself result in a single granted international patent, but it is a way of facilitating the early stages of the patenting process by allowing the filing of a single international patent that can branch into national patent applications; and
(iii) Using regional Patent routes, e.g for European countries, the European patent application (you can request more information here.
A patent gives its owner the right to prevent others from making, using or selling the invention without the owners permission. A patent does not give the inventor the right to make, use or sell an invention. This is because the inventor's ability to do these things may be subject to the patent rights of others.
In the UK, a patent has a life of up to 20 years from the date of filing. However, in the pharmaceutical industry where marketing permission must be acquired before a drug can be put on the market,and which effectively delays the time it takes for a drug to get to market, it is possible to obtain what is known as a Supplementary Protection Certificate(SPC), which are governed by EU regulation 469/2009 (there is a separate regulation covering SPCs for plant protection products, regulation 1610/96)and ensures that the total term of protection is still 20 years. In practice most patents are maintained for shorter periods of time, mostly because of the pace of technological advancement, and also economic reasons such as short product lifetimes.
In the UK & Europe, the invention must be new, it must involve an "inventive step", it must have some industrial application (Industry may also include use in agriculture), and it must not encompass subject matter that is excluded from patentability. In other countries, there are slight differences in undertaking this ascertainment, although most have novelty, inventive step and industrial application. There are also other subject matter that may be "patentable" in other countries, which are excluded in the UK & Europe (eg. business methods and programs for computers as such)
It is highly advisable that you request a Patent Search for the jurisdiction in which you propose to market your invention. The search could reveal whether something similar already exists in the public domain, or whether someone else has filed an application for a similar product or process. At Mancunium IP, we have experience in conducting both patent and trade mark searches covering various jurisdictions. You can find more useful information about patent searches in this section of this website.
Yes, as long as its an 'international' exhibition. But generally, and seemingly against commercial sense, it may not be a good idea to do so because it may be possible for someone to copy your idea, or even come up with a very similar variant. And if an application for a patent is then filed in respect of the variant, in the same or different jurisdiction, it may make it difficult for you to get protection as your idea may have been publicly disclosed, and the variant may 'anticipate' your invention. Eventually, it may be impossible to bar them from making, using or licensing their variant to others, because in Europe (unlike the US), inventorship is judged on a first to file basis, so that the person who files an application first is generally regarded to be the inventor.
If you are due to display your invention at an exhibition, ensure that you send the details of your invention to your representative to file a Patent, hopefully before the exhibition, but even if it means faxing them details of the invention on the morning of the exhibition.
"I want someone else to steal my idea, after which I can apply for a patent and sue for infringement or demand royalties?"
When you file a first provisional application at a patent office regarding an invention that hasn't previously been the subject of any patent application, a filing date is obtained for that application. That filing date is the priority date. This is important because that filing will have an effect in other subsequent patent filings in 'Convention countries' (for example, countries acceded to the Patent Cooperation Treaty) such that the subsequent filings will be considered as having been filed at the priority date in those convention countries. But in order to do this, the applicant must make the subsequent filings within 12 months from the filing/ priority date. All patent documents claiming priority will have priority data printed on them.
Trade Mark protection lasts indefinitely in the U.K., however a proprietor is required to renew the trade mark every 10 years. It is also important to note that a trade mark owner is required to use the mark in respect of the goods and/services for which the mark is registered to ensure that the mark is not open to revocation on the grounds of no-use. Furthermore, for other countries such as the US, it is important to present 'proof of use' during the application process.
A name is a sign capable of indicating origin, so it is possible to register one's own name as a trade mark in respect of goods/ services. However it is important to note that if your name is confusingly similar/ or identical to a well known trade mark, it may be difficult in certain instances for you to register your name for the goods or services concerned, if the well known mark/ earlier trade mark is registered in respect of identical/ similar goods (and even if it is not registered it may in some instances not be possible to obtain trade mark protection).
The first thing to do is to request trade mark search for the jurisdiction in which you propose to your your mark. The search will flag up whether the proposed word, mark, or logo is already in use by someone else. At Mancunium IP, we have experience in conducting both patent and trade mark searches covering various jurisdictions at affordable rates. You can find more useful information about trade mark searches in the trade marks section of this website.
Passing off is a common law right that provides a remedy to a trader who does not own any registered trade marks but want to stop a third party from copying the "get up" / "goodwill" of one of their products or services. It is commonly defined as a misrepresentation by a trader in the course of trade to prospective customers which is calculated to injure goodwill or business of another, and which causes actual damage to such another.
Genericide is a process by which a trade mark loses the trademark function as an indicator of origin because the trademark is used widely and indiscriminately to refer to a type of product or service in the Industry. For example, escalator was originally a protected trademark used to designate the moving stairs manufactured by a specific company. Eventually, the word became synonymous with the very idea of moving stairs and thus lost its trademark protection. Other examples of trademarks that have become generic terms are thermos, trampoline, and cola. In order to ensure that your mark does not become generic, you should ensure that it is used as an adjective modifying a noun and not as a noun in itself. For example, instead of saying "Have you finished xeroxing that report", you could encourage users to say something like "Have you finished photocopying that report". Some trade mark owners always carry a warning that indicates that a mark is a registered trade mark and prohibits use of the mark as a noun or verb. In addition to enforcing your rights each time you notice misuse, it may be useful to use the trade mark in association with nouns / the generic name for the product. So you could put "Xerox photocopiers" or "Google Search Engine", "Velcro touch fastener", e.t.c.
The first thing to do it to contact your professional representative, patent attorney or solicitor as soon as possible. They will ascertain whether or not actual passing off or infringement may have taken place and will advice you appropriately on what options / course of action is available. At Mancunium IP we are able to assist clients in such a situation and offer advice on the options available to both IP owners, but also those accused of infringement.
Assuming that the business relationship has presently terminated, there are a number of issues here but the first question to ask is was there a contract governing their use of your trade marks?
When did the business partner begin to use the trade mark, was it before you registered the trade marks or after? The reason you have to ask these questions is to determine if he has common law rights in the trade marks? If you hold a registered trade mark, did you obtain this prior to your business relationship, or during your business relationship? Who came up with the trade mark? Is there anything that could cause him to reasonably claim that he was a co-owner of the mark before its registration?
If there is a contract, what does that stipulate about use of the trade mark once the relationship comes to an end. Even if you do not have a contract that addresses post-termination sales, you may still have legal recourse against your former distributor under certain circumstances, and their use of the mark may constitute trademark infringement if you can demonstrate that such sales are likely to cause confusion among the consuming public as to the origin of the goods. The problem you are likely to face here is that if the consumers of your products are deemed to be above average or more discerning (for example if the individuals who buy your goods are skilled professionals, architects, design engineers, etc) the threshhold for actual confusion has been interpreted as being quite high. But if it is established that the former distributor does not have any common law rights, then if your customers are unaware of the end in the business relationship, you may have a stronger case.
Infringement issues could also arise if your former distributor is selling goods of lesser quality using your trademarks in ways that would suggest they are affiliation with your company. Additionally, you may have recourse if their use of the trade marks is diluting your mark, if your mark has a reputation with the relevant public. Dilution can take two forms: tarnishment or blurring.
Tarnishment occurs if your former distributor is advertising your well known products as new, when in fact they are actually inferior to your new products.
Blurring occurs in dissimilar products whereby the distributor is using your trade mark to on dissimilar products leading to the detriment of the prestige of your mark.
The appearance of a product or a product part, in either two- or three-dimensional form, be it an industrial item or a structure, can be protected as a design . A product includes parts of a complex product, packaging and typographic typefaces, but excludes computer programs. This product appearance may result from shapes, lines, contours, colours, textures, structures, materials, or ornamentation. Shapes of food packages, designs for watches, jewellery, tools, furniture, footwear, or clothes can be protected as designs.
A design can be protected if it is new and has individual character. It is considered new if no identical design was made available to the public before the unregistered design was first disclosed, or before the filing or priority date of the registered design. Designs are deemed to be identical if their features differ only in immaterial details. A design can be made publicly available by entering it into the channels of commerce, publishing the design, or exhibiting the design so that it becomes known in the normal course of business to the sectors concerned. When assessing novelty and individual character, a disclosure shall not be taken into consideration if the designer or his successor in title has made a design available to the public during the 12-month period preceding the date of filing of the application or the date of priority.
Firstly, you may find it useful to know that we have a trustworthy associate whom some of our clients choose to use for manufacturer vetting in china / Taiwan (more here). They will sign NDA's, and get the manufacturers to also sign NDA's. However, we usually recommend applying for a Industrial Design more here. The NDA will be testament that the a manufacturer agrees that any IPR arising out of the manufacturing will be yours, while the Industrial Design will give you exclusive right to the particular design.
While relatively few companies know the importance of IP protection, it does help (especially for a new product), for a maker / seller to secure IP protection in the relevant jurisdiction in which the goods will be made and sold, or if your budget does not allow, atleast where they will be sold. We couldn't emphasize this more. So having a registered design (UK) or Registered Community Design (RCD) in place would have meant that in such circumstances, where there is clearly an aspect of copying, one can bring infringement proceedings before the Patents County Court (which has a low cost streamlined procedure for IP infringement cases) quickly and present evidence of registration. For registered Designs, the onus is on the defendant (infringer) to prove they did not copy, and their actions were innocent. Further, one can instruct customs to confiscate/block any infringing products from entering the relevant jurisdiction, and in the case of a Registered Community Design, it means that the Design protection will protect the product in the whole EU. Similarly, if copying of an article that is protected by an RCD does occur, the unauthorized maker/ importer can be the subject of RCD Infringement proceedings. If the product is a functional product, and the protectable elements of it are novel functional features, it is highly recommended to seek patent protection.