Trade Marks

Trade Marks (TMs) (e.g. “FORD” or “FOCUS”) protect brands.  TMs exist as Registered TMs and Unregistered TMs.  Whilst there are areas of overlap between Registered and Unregistered TMs, there are also some important differences. The most important is that, in principle, the first person to apply to register (and not the first person to use) the Mark for particular goods and/or services obtains exclusivity.   

Beware, TM Registrations override Company and Domain Name Registrations! 

Registered TMs are identified with the international symbol ® and confer an exclusive right to use the TM for the registered goods/services.  They can be for any sign capable of being represented graphically.  The signs can consist of words, designs, letters, numerals, sounds, colours or the shapes of goods or their packaging.  TMs cannot be registered for signs which are descriptive of the goods/services, or which have become generic (e.g. aspirin and linoleum).  A Registered TM’s term is indefinite if renewed periodically.  Registered TMs prevent third parties from using, without consent, an identical or similar sign for identical or similar goods/services.  However, comparison advertising is allowed and a well-known supermarket chain is fond of this kind of advertising. 

Unregistered TMs are protected in the UK by prevention of what is known as Passing-Off, i.e. one person passing-off goods/services as those of another person.  It can, in certain circumstances, provide broader protection than a Registered TM.  To show Passing-Off, those complaining must prove that they have goodwill in their names, logos or other indicia, or get-up, that a misrepresentation by the defendant has occurred, and that the misrepresentation has caused damage to their goodwill.  Only if all of these elements are proven will the Courts act, and this makes a Registered TM a much more easily enforcible right. 
  
Therefore, it is wise to have a search conducted before you adopt a TM, so as to avoid infringing other people’s Registered TMs.  If the search is clear, you should obtain Registration of your TM, so that you need not rely upon Passing-Off to prevent misuse, nor find that you have to stop using a TM because someone else has obtained a Registration for it! 

                                              Patents

Patents protect technical aspects of inventions, for example their function, construction and use.  Patents provide a twenty-year monopoly for preventing third parties copying your invention, in return for disclosure of your invention so that the public may practice it once the monopoly expires.  Prevention of copying is enforceable through the Courts, which can levy heavy sanctions upon infringers by preventing further copying, and payment of damages.  Patents are territorial, necessitating a filing strategy to protect your markets. 


In Europe, Patents are granted for innovations that meet four criteria.  They must be new, inventive, capable of industrial application, and not excluded subject-matter – such as computer programs, scientific or mathematical formulae, presentation of information, business methods, etc. if the invention relates to those things as such.  However, excluded subject-matter can form patentable inventions if its application provides a technical contribution and meets the other criteria.  Patents are not granted for methods of treating humans or animals.  In the US, however, nearly everything is patentable. 

A Patent Application includes a Specification, which is a hybrid technical / legal document and has the dual purpose of legally defining the monopoly sought and technically detailing at least one example of the invention.  The Application is examined by the Patent Office – and amended by the applicant in the light of any subject-matter publicly available before its filing date – until it meets the four criteria. 

Obtaining grant of a Patent takes years and, for the UK, at least two years, and costs a few thousand pounds.  With similar if not greater expense in other territories, a family of Patents covering just one invention in the US, Japan and six main industrial countries of Europe costs a few tens of thousands.  Whilst expensive for individuals, this represents a relatively small percentage of a Company’s R&D budget and is often easily afforded through being able to demand higher prices because the product/process is patented. 

Remember to keep your innovation confidential at least until filing of your Patent Application, and to check that commercialisation of your innovation would not infringe other people’s Patents. 


Not all inventions are capable of being granted Patent protection - please follow this link if your would like to know more about whatkind of inventions are barred from Patent protection in the UK.


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