Introduction to Intellectual Property Rights

INTRODUCTION TO INTELLECTUAL PROPERTY (IP) RIGHTS

To be patentable, an invention must:

• be new: you must not have made your invention public and no-one else can already have thought of it;
• involve an inventive step: it must not be obvious to someone knowledgeable in the relevant subject; and
• be capable of industrial application: it must be capable of being made or used in an industry. “Industry” is broadly interpreted.

To be registrable, a trade mark must:

• be distinctive;
• not already be customary in your trade; and
• not be merely descriptive: (i.e. not merely describe the quality, value or geographical origin of your goods or services).

To succeed in a passing-off action, you need to prove all of the following:

• goodwill or reputation attached to your goods or services in the minds of the public so that your unregistered trade mark is recognised by the public in the relevant market as distinctive of your goods or services;
• a misrepresentation by the other person (whether or not intentional) leading or likely to lead the public to believe that the goods or services being offered by them are associated with you; and
• the likelihood of damage (through loss of reputation or sales) suffered by you by as a result of the misrepresentation by the other person.

Some points to note:

• Copyright protects the tangible expression of an idea and not an idea itself.
• Although copyright usually rests with the author of a work, employers own the copyright in works produced by employees in the course of their employment.
• The duration of copyright in most original works is the life of the author plus 70 years.

Registration requires:

• A novel design: one that is not identical to an existing design.
• A design with individual character: one that creates a distinct impression from any existing design in the public domain.
• A form of design that is not dictated by the product’s function.

• Database Rights: these arise automatically in a database, where a substantial investment has been made in obtaining verifying and/or presenting its contents. The rights are enjoyed by the person who makes the investment and lasts for 15 years. Copyright can also arise in databases where the selection or arrangement of material is original.
• Protection for trade secrets: these secrets can be protected by the use of a confidentiality agreement.
• Design right: these arise automatically and no registration is required. Design right gives an exclusive right against copying rather than the monopoly right enjoyed for a registered design, and lasts up to 15 years. The design must not have been copied and must not be common place. It only protects the three-dimensional aspects of the design.
• Protection of goodwill: in terms of "passing off" from having someone else benefit from your trading reputation, described in more detail above.

• Protection: we can provide advice and assistance with the registration of trade marks, design rights and patents and in providing evidence of the creation of unregisterable rights, such as copyright.
• Licensing and exploiting: we can review, advise on and draft licensing agreements, transfer agreements and other IP contracts.
• Compliance: we can review and advise on compliance procedures or provide management and staff training.
• Enforcement: we can advise on disputes; provide representation in ADR; and provide advice and representation in infringement actions.

Contact Details:       

Name:

Austin Flynn

Callum Murray

DDI:

0131 247 1260

0131 247 1237

Email:

austin.flynn@morton-fraser.com

callum.murray@morton-fraser.com