For businesses, the term “intellectual property” (IP) usually refers to any assets that are not physical in nature, but which can still deliver significant value. While this definition is relatively broad, the legal mechanisms that allow businesses to secure their intellectual property are much more specific about what constitutes an IP asset and what is eligible for protection.
There are three primary types of IP protection for businesses: trademarks, copyright and patents. The regulations that apply to each of these categories determine the types of assets that are eligible and the rights businesses can exercise to protect their property. In this guide, JMW Solicitors’ Philip Partington details the different types of IP protection and how they apply to key business assets, advises on how to keep these assets secure and warns of the risks companies can face when they fail to do so.
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Which assets can be protected under intellectual property law?
Intellectual property can be very valuable, particularly as it relates to many aspects of a business’s brand identity. Trademarks are generally used to secure assets of this nature and can apply to visual designs, snippets of audio, and small pieces of text. Businesses must register their assets as trademarks in order to benefit from legal protection.
The elements of brand identity that are usually eligible for trade mark registration include:
- Company names
- Product names
- Packaging designs
- Sound effects
Eligibility also depends on certain restrictions beyond the composition of the asset, the most important of which is that a piece of intellectual property must be unique. In other words, you cannot register an asset that already exists, or even one that is judged to be too similar to a prior trade mark. Anything that is considered too generic – for example, phrases such as “We’re number one!” or “The best in the business” – is also ineligible to be registered.
You may be able to register other assets than those listed above, provided they meet the criteria for uniqueness and association. If you think this may be the case, you should consult an expert intellectual property solicitor before you decide how to move forward. Some businesses, for example, have been successful in protecting particular shades of colours as IP assets, but it could be extremely difficult and expensive to pursue this yourself. An IP lawyer will be able to advise you on the assets you can register and how to do so – including highlighting some examples of assets that you may not have considered and which may be vulnerable to copying, counterfeiting or theft.
As well as trademarks, businesses can benefit by registering patents to protect inventions and innovations. These must be functional products, rather than concepts or ideas, and you must be able to demonstrate how they work if they are to be eligible for registration. This is a useful way to prevent competitors from imitating new products that you have developed and ensure that you enjoy the maximum financial reward from your creation.
Do all pieces of IP need to be registered?
Some assets benefit from rights that are granted automatically. Unregistered assets qualify for a degree of protection automatically, but registration will always be more secure and allow you to fight back against infringement without risk. The exception is copyright, which applies automatically to certain assets as soon as they are created. These include:
- Written works of fiction or nonfiction
- Written music and recordings
- Non-musical audio recordings
- Television programmes, films and other visual media
- Pieces of software
Whether you need to register your assets or not, you should take an active role in defending your IP rights. It is important to remain vigilant against the risk of infringement, and failing to do so is one of the common pitfalls businesses encounter. Actively defending a piece of IP means monitoring trade mark applications to ensure that no other businesses attempt to register assets that are too similar to yours, and examining the work of competitors to ensure that they are not imitating your brand, intentionally or otherwise. If you do not prevent competitors from infringing on your IP rights, you risk financial losses and damage to your organisation’s reputation.
Are there other intellectual property pitfalls businesses must avoid?
Often, the biggest pitfall for businesses is that they fail to identify potentially valuable elements of IP, or do not understand that they can register certain assets to protect them, and fall victim to infringement as a result. Many businesses are unaware that they may need trademarks, patents and copyright to fully protect their assets.
Retail businesses, for example, may recognise that they use brand assets that are eligible for trade mark registration, but assume that copyright is not relevant. There is a general view that copyright applies to literary, dramatic or musical works, and is more relevant to publishing companies than those in the retail industry. However, this fails to take into account the breadth of content that is protected, and the nature of assets that are vulnerable to imitation and theft.
For example, radio and television advertisements are eligible for copyright protection and if they are commissioned and produced on behalf of a retail business, that business will usually be identified as the copyright holder. This means that if a competitor imitates a TV or radio advert, even under the guise of a parody, they may be infringing upon your intellectual property rights. This is a complicated area of the law and you should consult an expert for advice in such cases.
Other IP assets that are the frequent target of infringement are product descriptions. If you create original descriptions of your products or services for your website or catalogue and another business uses these without permission, this constitutes infringement. However, the same is true in reverse – if you intend to use product descriptions from a manufacturer’s website (or elsewhere), you should ensure that you have permission to do so to avoid committing infringement yourself.
The most effective solution to help you identify, register and defend valuable IP assets is to work with a solicitor who specialises in intellectual property. In this way, you can receive advice on developing and securing original brand assets; access clearing services to ensure that your IP elements do not infringe on existing trademarks; and, in some cases, benefit from monitoring services that will identify any infringement of your IP rights and enable you to take action. In this way, you can secure your business’ brand and retain its maximum value long into the future.
By Philip Partington, Partner, Intellectual Property, JMW Solicitors