Creative industries contribute £85billion per annum to the UK economy according to government statistics, indicating the value of creative assets. In this article, Atiq Bhagwan and Liane Simmonds of Rawlison Butler, explain what IPRs you may own and how you can protect them.
When you own physical property, you decide who else may use it, and if so, how. Your business has similar property rights in its creative assets (for example your logo or product designs) which allow you to decide how these assets are used and to prevent unauthorised use. Your rights in these intangible assets are called ‘intellectual property rights’ (IPRs). IPRs cover a range of legal rights which protect ideas once they are expressed in a form which is capable of protection.
A trade mark is a graphic sign which indicates the source of goods or services to customers, for example the well-known Nike logo. Trade marks can be used across a variety of goods and services to build your brand’s reputation amongst your customers.
Registration costs depend on the number of marks, the number of classes of goods/ services and the countries designated in your application. If you obtain a registered trade mark, it lasts for a period of 10 years but this can be extended indefinitely if you pay the renewal fees.
You have the right to prevent anyone from using your registered trade mark, or any similar mark, in relation to goods or services identical to those in your registration. You can also prevent use of your mark in a way which damages or takes advantage of your reputation.
Copyright exists automatically in certain types of creative works (e.g. software, art) once they are expressed in some way, e.g. by being written down or captured in a photograph. There is no copyright register in the UK.
If one of your employees creates a copyright work in the course of their employment (for example an in-house software developer), your business will usually own the copyright automatically. You need to ensure that the copyright in works you have commissioned (for example a new logo developed by an advertising agency) is assigned to your business so that you can control how the work is used.
Copyright lasts for the life of the author, plus 70 years from the year in which the author dies.
Copyright enables you to commercialise works, for example by licensing a publisher to reproduce a work in print or online. Unauthorised use infringes your copyright, unless one of the exceptions to copyright set out in English law applies, e.g. for private research or reporting of news. It can be complicated to determine whether an exception will apply and so we recommend seeking legal advice.
Design rights protect the shapes of both functional and artistic items (e.g. clothing, furniture) against unauthorised copying.
You can register a design in the UK as long as it creates a different overall impression on an informed user, compared to designs which have already been made available to the public. Your registered design right can last for up to 25 years as long as you renew it every five years. It is also possible to register designs at the EU level for protection across all EU member states.
Unregistered design right arises automatically on expression of the design. In the UK, unregistered design right (UDR) lasts for 10-15 years but only protects the appearance of an item. Community unregistered design right (CUDR) only lasts for three years, but it protects surface decoration so is useful if you regularly produce designs which may not need protection in the long-term such as clothing.
You can enforce your registered design right by showing that a third party’s design infringes your registered design. However, if you are relying on UDR or CUDR you need to provide evidence (i) that your design is capable of protection under UDR or CUDR, (ii) that you own the design and (iii) that it has been infringed. It is therefore important that you record your design process.
A patent is a registered IPR which is valuable because it grants a 20 year monopoly right to use new inventions. Successfully registering a patent can be expensive, but the revenue it generates normally exceeds this cost because patents are only granted for new inventions.
You must seek legal advice on whether your invention is patentable before disclosing the invention in any way, e.g. through articles or demonstrations. If you inadvertently disclose your invention you will not be able to patent it.
You can assign ownership of your IPRs in much the same way as you can sell your physical property. However, as assigning an IPR means you will no longer be able to control how it is used in the future, it can be difficult to know what would be a fair price for the assignment at any given time.
You may prefer to license use of the IPR instead. A well-drafted licence will set out how and where the IPR can be used by the licensee as well as how long the licence lasts. You will receive royalty payments as set out in the licence agreement. The advantage of licensing your IPRs is that you retain ownership so you can still monetise the IPR outside the scope of the licence.
Enforcing your IPRs
You should regularly monitor potentially infringing use of your IPRs by third parties and be prepared to take action to prevent further infringement. The scope and method of protection provided by IPRs can vary in jurisdictions outside of the UK so you should consider taking legal advice from a local expert before taking enforcement action overseas.
If your IPRs are infringed, you may be able to resolve matters at an early stage by issuing a Cease and Desist letter. Alternatively, if immediate action is needed you may be able to apply to the Court for an urgent injunction to cease the infringing use. You can also make a claim to the Court for damages to compensate you for the infringing use, for delivery up of infringing items or an account of profits in relation to sales of infringing items.
In conclusion, here are the key points to address in order to protect your IPRs:
Review your creative assets to determine what IPRs you own and whether you need to have any IPRs assigned to you.
Register your IPRs where possible to make enforcement easier.
Protect your IPRs by regularly checking for infringing use and taking action where necessary.
This is a complex area of law, and so we recommend seeking legal advice to ensure you know what your rights are and how best to protect them.