Trade marks, copyright and design rights

Trade marks, copyright and design rights

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Trade marks

A trade mark protects any sign or symbol that allows your customers to tell you apart from your competitors. You can register a name, numerals, logo, slogan, designs, letters, domain name, shape, smell or sound.

A trade mark must be:

  • Distinctive for the goods and services to which you wish to apply the trade mark
  • Not deceptive, contrary to public policy, law or morality or registered in bad faith

If your trade mark meets these requirements, you may want to consider applying for a registered trade mark. For further information on registering a trade mark, please visit Intellectual Property Office.

Your trade mark does not have to be registered, but an unregistered mark can only be protected by relying on the common law of passing off or (in some cases) copyright infringement. A registered trade mark is preferable as it gives you a statutory monopoly to use that mark (e.g. in the UK if a UK mark) for the goods and services under which it is registered. It is much easier to pursue infringers under registered trade mark infringement as opposed to Passing off.

If you have a registered trade mark, you must renew it every 10 years to keep it in force.

Copyright

Copyright protects original artistic, literary, dramatic or musical works. You should only copy or use a copyrighted work with the copyright owner's permission.

You can copyright:

  • Literature, including novels, instruction manuals, computer programs, song lyrics, newspaper articles and some types of databases
  • Drama, including dance or mime
  • Music
  • Art, including paintings, engravings, photographs, sculptures, collages, architecture, technical drawings, diagrams, maps and logos
  • Layouts used to publish a work, e.g. for a book
  • Recordings of a work, including sound and film
  • Broadcasts of a work

Copyright does not protect ideas for a work. However, when an idea is fixed in a tangible form, for example in writing, copyright automatically protects it. This means that you do not have to apply for copyright.

A copyright protected work can have more than one copyright, or another intellectual property right, connected to it. For example, an album of music can have separate copyrights for individual songs, sound recordings, artwork, and so on. Whilst copyright can protect the artwork of your logo, you could also register the logo as a trade mark.

Moral rights

In contrast to the economic rights under copyright, moral rights are concerned with protecting the artistic integrity and reputation of authors.

Moral rights enable the authors of copyright, literary, dramatic, musical, artistic works and a director of a film, certain rights and certain privileges which are described below:

  • To be identified as the author of the work or director of the film in certain circumstances, e.g. when the work is communicated to or where copies are issued to the public
  • To object to derogatory treatment of the work or film which amounts to a distortion or mutilation or is otherwise prejudicial to the honour or reputation of the author or director
  • The right not to be falsely attributed to a work which they have not had anything to do with or with any amendment made to their work without their knowledge
  • The right of privacy of certain photographs and films where these are created for private and domestic purposes

The author or director has to indicate their wish to exercise the right to be identified by giving notice to this effect (which generally has to be in writing and signed) to those seeking to use or exploit the work or film. The giving of notice in this way is known as asserting the right to be identified.

The author or director can waive their moral rights (This may, for example, be required by a prospective purchaser of the copyright as a condition of the purchase). This must be done in writing and be signed by the person giving up the rights. The waiver can be based on conditions to suit the owner of the moral rights and if the person does not want to waive them completely, they do not need to. In the event that the person owning the moral rights wishes to waive his or her rights, such a waiver may be general or specific (i.e. it may relate to a specific work only or to all works in general), may relate to existing or future works, and may be on a conditional or unconditional basis. The waiver may also be subject to revocation, so that a waiver, once given, need not continue indefinitely. This gives an author or director some flexibility. They can change their mind in response to changing circumstances or opportunities.

If such a waiver is made in favour of the owner or prospective owner of the copyright to the works to which it relates, it shall be presumed to extend to anyone who is granted rights in the copyright by the prospective owner (for example, under a licence) or anyone acquiring or inheriting the copyright from the prospective owner, unless the contrary intention is expressed. It should be noted that under Section 94 of the Copyright, Designs and Patents Act 1988, moral rights cannot be assigned. The owner of moral rights can, however, on their death, transfer those rights to another person by way of a will.

The duration of the right to be identified, and the right to object to derogatory treatment and the right to keep certain photographs and films private, subsists as long as the copyright subsists in the work, which is generally the life of the author plus 70 years. However, the right not to be falsely attributed to work lasts only for the life of the author plus 20 years.

It is worth noting that there are certain exceptions which need to be considered when contemplating whether moral rights apply to a particular piece of work e.g.

  • Computer programs
  • Design of a typeface
  • Where ownership of a work originally vested in an author's employer
  • Work created for the purpose of reporting current events
  • Where material is created for use in newspapers or magazines
  • Where reference works are created for use in encyclopaedias or dictionaries

Design rights

Design protection covers the outward appearance of your product, including decoration, lines, contours, colours, shape, texture and materials. If you have a new shape or pattern for a product, you may be able to protect it as a design.

Registered designs

These are the essential features of registered designs:

  • Registered designs can protect both 3D and 2D designs and can be a one-off design. The design is protected across all sectors and is not limited to the product to which it was originally applied. Examples are typefaces and designs for plates or cars.
  • Parts of articles can be protected as designs, provided that they are visible in normal use.
  • The design must be new - an identical or very similar design must not have been disclosed anywhere in the world before the application. However, designers have a 12-month grace period after disclosure in which to file an application for a design.
  • The design must have 'individual character' - it must give a different overall impression from previous designs. However, it need not have artistic merit.
  • Specific designs are excluded, most importantly computer programs, features which are solely dictated by the product's technical function, and 'must fit' features (i.e. features that are necessary to allow an article to fit another article). However, modular systems are allowed.
  • Protection can last for 25 years.

Unregistered design right

Design right protects the appearance of a purely functional product.

It's a right to prevent copying that doesn't require registration and is valid for the lesser of either 10 years from the first marketing of articles made to the design, or 15 years from the creation of the relevant design document, subject to licences of right in the last 5 years of the term.

To be protected by design right, a design must:

1. comprise the shape or configuration (whether internal or external) of the whole or part of an article;

2. be original, which means that it must not be commonplace in a 'qualifying country';

3. be recorded in a design document or be the subject of an article made to the design; and

4. qualify for design right protection by reference to the designer or the person by whom the designer was employed, or the person by whom and country in which articles made to the design were first marketed.

To be protected by design right, a design must not:

  • be a method or principle of construction;
  • comprise features of shape or configuration of an article that enable the article to fit with another article so that either article can perform its intended function, or are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part; or
  • be a design for surface decoration.

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