Whistle stop tour of IP: What is it and what do you need to know?

Intellectual Property (IP) Rights are vital for any designer/brand, no matter how big or small – but what are they and what do you need to know about them? This is a whistle stop tour of the main IP Rights in the UK and EU that you need to know about and why.

Trade marks

Trade marks are “signs” which help consumers identify one company’s products or services from those of another. Brand names and logos are the most common trade marks but in fact, they can come in a variety of different forms:

• Words

• Logos

• Shapes

• Positional

• Patterns

• Colour (single)

• Colours (combination)

• Sound

• Motion

• Multimedia

• Holograms

Words and logos are the easiest trade marks to protect as long as they: (1) are not descriptive (i.e. you can’t protect “shirts” as a trade mark covering t-shirts); (2) misleading; (3) offensive; (4) are distinctive; (5) are not emblems or flags (without permission); or (6) are not similar/identical to other trade marks already out there for the same/identical products or services.

Shapes, patterns, colours etc. are protectable, but it is much harder to do because consumers are not always used to viewing these elements as badges of origin. Therefore, a fashion brand would usually need quite extensive use of the shape or pattern and evidence before being able to protect the mark successfully. That said, these elements are often important branding elements for designers or fashion brands and so, just because they are hard to protect, doesn’t mean they shouldn’t be protected. You just need an informed strategy on how best to do it.

Trade marks are protected for goods and services which fall in 45 classes otherwise called the Nice Classification. It is important to cover the goods and services that (i) you will use the mark for; (ii) you might want to use the mark for in the near future; (iii) you’d be bothered about a competitor using your mark for. As an example, you might be using your trade mark on clothing, so it’s sensible to have this covered in an application. However, you might not be happy if another company releases an accessories brand using a similar mark. Therefore, you should also consider covering fashion accessories such as eyewear and jewellery to give you a broader scope of protection. If you’re unsure what to cover, a trade mark agent can help advise you.

Once registered, trade marks are forever rights…as long as you renew them every 10 years. However, after 5 years post-registration, a third party could apply to cancel your trade mark for any goods and services you are not using it for. If you’re not using the mark at all, then the entire registration could be cancelled. You will also need to show you are using the mark if you want to rely on it in oppositions against others.

Before applying for a trade mark, you should instruct a qualified attorney to conduct a trade mark search. This will identify any existing third party marks which could present a risk to your use or registration of your chosen mark. Your advisor will be able to guide you on how to navigate the risks so you can proceed with your chosen brand safely or not (if the risks are too high). This process could save you significant costs and issues down the line by avoiding conflict with third parties and issues in using your brand.

Lastly, evidence! Evidence is always key in the legal world. Make sure you are using your trade mark as a brand. Sounds simple but so many brands have seen negative decisions against them because they were unable to prove use of their mark as a trade mark. Make sure the consumer knows the trade mark belongs to you – marketing, articles, customer reviews, marketing analysis etc. It’s all important and good to get into the habit of collecting and saving this information from the beginning.

Designs

Designs protect the look of a product. They protect the physical shape, configuration, decoration, colour and pattern. They cannot protect a concept or functional aspect of a product.

The design must; (i) be novel (different from other designs already out there); and (ii) have individual character (create a different overall impression on the informed user).

Valid registered designs allow the owner to prevent anyone from creating a design which is similar in overall impression to the registered design.

Timing is essential when it comes to designs. There is a 12-month window from the date of first disclosure to file a design application. Meaning the moment your design has been shared (enters the public domain in legal terms) the countdown is on. If you miss the 12-month window any design you file will not be valid. You may still be covered by unregistered design rights.

Be aware when discussing your designs with third parties and consider obtaining Non-Disclosure Agreements (NDAs) before doing so. If you are freelance, make sure you check the terms of any contract before you sign it so you are clear on who will own the IP.

Once registered, designs are protected for 25 years, as long as you renew them every 5 years.

Unregistered designs

The scope of unregistered designs in the UK is less than a registered design. Unregistered designs prevent people from copying your design without permission, rather than using something that is similar.

The length of protection depends on the type of unregistered design. Shape and configuration (i.e. arrangement of the parts) of 3D objects lasts for 10 years from the date the design is first sold or 15 years from creation (whichever ends first). There is also a caveat which states you must allow other people to use your design in the last 5 years of protection if they ask (“licence of right”). For the appearance of a product, protection lasts for 3 years from the date your design becomes public. Appearance of a product includes the shape, colours, texture, materials and ornamentation.

For the EU, protection for unregistered designs is 3 years from the date it is made public in the EU.

Copyright

Copyright in the UK is automatically generated once something is created and recorded. There are territories, such as the US, where copyright can be registered, but that is not the case in the UK. Copyright subsists in;

• Literary, dramatic, musical and artistic work

• Software, web contact and databases

• Sound and music recordings

• Film and television recordings

• Broadcasts

• The layout of published work

Copyright stops others from copying, distributing, adapting or otherwise making available your work. It also stops people from showing your work without permission.

You can infringe someone’s copyright intentionally or unintentionally by copying a substantial part of a work that they own copyright in. You do not have to be aware of the earlier work for your current work to infringe. As well as this, you do not have to copy the whole of a piece to be accused of copyright infringement. You can copy a piece (no matter how small), and this would constitute infringement.

Depending on the type of work you have depends on how long the copyright protection lasts.

Patents

Lastly, patents. Patents are awarded to processes or products. They are commonly used for medicines or machinery. In the fashion world, patents can be used for protecting new manufacturing processes or new material.

Patents are the most difficult form of IP to protect. They are costly and the application process is complex, but they are worth it when it comes to protecting a new process or material.

Patents must be; (i) new; (ii) inventive; and (iii) something that can be made/used, a technical process or a method.

They can’t be; (1) literary, dramatic, musical or artistic works; (2) ways of doing business, playing a game or thinking; (3) a method of medical treatment or diagnosis; (4) a discovery, scientific theory or mathematical method; (5) ways of presenting information; (6) “essentially biological” processes; or (7) ‘non-technical’ software.

Patents last for 20 years in total. However, you must renew them every year after the 5th year if you want to keep it.

As patents are so technical, it is always best to speak to a patent attorney about these things.