While patents are the focus of many IP articles or careers information, they are not the only form of IP, and patent attorneys will from time to advise on the other forms of IP rights. The major other categories of IP are trade marks, designs and copyright, but in addition to that there are a number of even more specialist rights.
Here, Claire Birro, MCITMA, Solicitor, and Dr Alicia Instone, CPA, EPA, MCITMA of Cleveland Scott York, give some more details on the different types of intellectual property that exist alongside patents.
What is a trade mark?
A trade mark is any sign which serves to distinguish the goods or services of one owner from another. A trade mark can take many forms, for example, it could be a word or a logo or a combination of the two.
There are two types of trade mark rights in the UK. First there are unregistered rights, which are acquired through use; these rights are also known as common law passing off rights. Second there are registered rights, which are acquired by filing an application at the UK Intellectual Property Office (UK IPO). These two rights can exist simultaneously.
A trade mark can only be registered if it is inherently registrable. This means it must be distinctive for the goods and services in relation to which it will be used. Trade marks which, for example, describe a characteristic of the relevant goods or services are unregistrable. The UK IPO carries out an assessment of the inherent registrability of a mark when an application is filed and can raise an objection if it finds that the trade mark does not meet the criteria for registrability.
Trade mark rights are infringed when a third party uses an identical or similar mark in relation to identical or similar goods or services. In some circumstances infringement can occur in relation to dissimilar goods or services. Infringement can occur unintentionally when a third party innocently adopts a mark that is too close, although this sort of unintentional use is not a defence to infringement. Infringement can also be intentional, for example, supermarket look-a-likes where supermarkets create packaging which is similar to a famous brand. There is also a huge market in counterfeit goods; this is where counterfeiters copy famous brands.
What does a Chartered Trade Mark Attorney (CTMA) do?
While Patent Attorneys will occasionally advise on trade mark matters, and some attorneys are dual qualified patent and trade mark attorneys, trade mark work is usually done by specialist Chartered Trade Mark Attorneys. A CTMA’s role is broad, advising on a wide range of trade mark issues both in the UK and overseas. Amongst other things, they advise on the adoption of new trade marks and guide clients through the application process. A CTMA also advises in relation to infringement and enforcement of rights. The question of infringement is often not clear cut, so the job of a CTMA is interesting and challenging.
Qualification as a CTMA is achieved through examination whilst working as a trainee in-house or in private practice. CTMAs are members of the Chartered Institute of Trade Mark Attorneys in the same way that patent attorneys are members of the Chartered Institute of Patent Attorneys; both professions are regulated by the Intellectual Property Regulation Board (IPReg).
What is copyright?
Copyright protects original literary, dramatic, musical and artistic work. So, for example, there is copyright in a book, a film, a painting or a song. Copyright protection arises automatically (i.e. there is no application process) and is infringed by copying.
Trade marks can be protected by copyright in addition to trade marks rights, so attorneys need to be familiar with copyright law.
What is a UK unregistered design?
UK unregistered designs protect the shape and configuration of a design. UK unregistered design protection arises automatically once a design has been recorded in a design document (i.e. there is no application process) and is infringed by copying. UK unregistered designs last for 15 years from creation or 10 years from first marketing, whichever expires first.
What is a Community unregistered design?
Community unregistered designs protect the shape and configuration and/or the surface decoration of a design. Community unregistered design protection arises automatically once a design has been made available to the public within the Community (i.e. there is no application process) and is infringed by copying. Community unregistered designs last for 3 years.
What is a registered design?
There are both UK and Community registered designs which protect the shape and configuration and/or the surface decoration of a design which can include a 2D image, cartoon character or GUI as well as traditional 3D articles. In order to obtain a UK or Community registered design an application needs to be made to either the UKIPO or to the EUIPO as applicable.
Both UK and Community registered designs are true monopoly rights and copying doesn’t need to be show for there to be infringement, only that the infringing design gives the same overall impression on the informed user as the UK or Community registered design. UK and Community registered designs last for up to 25 years with renewal fees having to be paid every 5 years.
What is a database right?
A database right exists to recognise the investment that is made in compiling a database, a database is defined as a collection of independent works, data or other materials which are arranged in a systematic or methodical way and are individually accessible by electronic or other means
Database rights are created automatically, (i.e. there is no application process) and are infringed by copying. Database rights last for 15 years and each time a database is substantially modified a new set of rights are created for that database.
What is a semiconductor topography right?
Semiconductor topography rights protect the pattern fixed on integrated circuit boards which have at least two layers, wherein one layer is made from a semiconducting material wherein the pattern is for the purpose of performing an electronic function.
Semiconductor topography rights are created automatically, (i.e. there is no application process) and are infringed by copying. Semiconductor topography rights last for 15 years from creation or 15 years from when an article is first made to the pattern, whichever expires first.
What is plant variety right?
A plant variety right or plant breeders right as it is also known, are granted to the breeder of a new variety of plant. The right gives the breeder exclusive control over the propagating material (including seed, cuttings, divisions, tissue culture) and harvested material (cut flowers, fruit, foliage) of the new variety. In order to qualify for a plant variety right, a variety must be new, distinct, uniform and stable. There are both UK and Community rights. The Community plant variety right lasts for a period of 25 to 30 years, an annual fee is due to keep the right in force. The UK plant breeders right also lasts for a period of 25 to 30 years, an annual fee or testing fee, may be due to keep the right in force.
This article was contributed to IP Careers by Claire Birro, MCITMA, Solicitor, and Dr Alicia Instone, CPA, EPA, MCITMA, both of Cleveland Scott York.