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Protect Your Intellectual Property with a Trade Mark

Written by Jon Cooper

Broadly speaking, Intellectual Property (IP) can be applied to something unique that has actually been created by a person or people. An idea in itself does not qualify as IP.

Once you have IP, there are various methods of protecting it against theft or plagiarism depending on whether the IP is an invention, a product, a brand name, a design or a document. Copyright, patents, designs and trade marks are all types of intellectual property protection.

Copyright protection is applied automatically on writing and literary works, art, photography, films, television, music, web content and sound recordings.

Patents, design registration and trade marks have to be applied for and your IP may need more than one of these protections. For instance, you may wish to register the name and logo with a trade mark and apply for a patent on the invention itself.

It is important to bear in mind that registering a trade mark on a product name or logo or registering a design are relatively quick processes that take a few months whereas to patent an invention or product is a lengthy procedure that takes around five years.

In addition, it is not usually possible to obtain a patent for software. Patents can only be granted for inventions which achieve a new ‘technical effect’ and computer programs on their own are not considered to do that.

The key here is the hardware. In a scenario where the software is run on a computer to process inputted data and return a result, that is not considered new or technical in nature. Therefore, although the software itself is new, it is not patentable.

The only situation where it would be possible to patent software would be where it could be demonstrated that this software allows the hardware to achieve a technically new result.

At the base level, it is strongly recommended to register a trade mark to protect your brand, the name of your product or service. Not only does it enable the use of the ® symbol to convey ownership and take legal action against any infringements but also it makes it easier to sell or licence in the future.

In the United Kingdom, a trade mark registration takes around four months, if there are no objections. A registered trade mark lasts ten years and is renewable.

A key point, is that registering a trade mark in the UK only protects your brand in the UK. If you want to use your trade mark other countries, applications need to be made to the trade mark office in each country.

Alternatively, there are European Union and International trade mark application systems. An International application must be based on an existing trade mark application, so the UK registration would be a pre-requisite.

To qualify for a trade mark, the brand must be unique and can be made up of a combination of words, logos, sounds and colours.

However, a trade mark cannot:

In addition, a trade mark cannot be granted if someone else has already registered an identical or similar trade mark for the same or similar goods or services.

If this is the case, you can request the holder of the existing trade mark for permission to register yours. If they agree, they would need to provide their letter of consent to be included with your application.

The UK is part of the Nice Classification, the latest version of which came into force on January 1st 2016 and consists of thirty-four classes of goods and eleven classes of services. Essentially, a trade mark is applied for under one or more of these classes.

To make the process less onerous, the Intellectual Property Office has introduced the Right Start programme whereby they will assess your application and report whether or not it meets the rules for registration. If not, there is a period of two months to resolve the issues.

If the Intellectual Property Office examiner has no objections, the application will be published in the trade marks journal for two months, during which time anyone can oppose it.

The trade mark will be registered once any objections, if any, are resolved and the Intellectual Property Office will issue a certificate to confirm the registration.

The fee for a trade mark registration in a single class under Right Start is £200.00, £100.00 of which is payable on application and the remainder if the application goes ahead after the examiner’s report. There is an addition £50.00 fee for each secondary class that is registered.

Whist the process has been designed to allow the owner of the brand to relatively simply apply for a trade mark, there are specialist trade mark lawyers and firms that can manage this.

If you have any questions or would like assistance in protecting your brand, please email us at tax@cooperfaure.co.uk for further information.

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