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Product protection - do you have it?

 

Article date:  01/06/2010

So, you have designed a product, you have a carefully thought out marketing and promotional strategy and are almost ready to launch the product to market and watch sales grow.  You think you have done all you need to get the product working for your business?  Think again.

Whilst all of the above are important in terms of getting your product known and available in the marketplace, businesses can't switch off to brand development and protection.  By doing this you become vulnerable to competing businesses using your product, brand, image and reputation to their advantage and riding off your success and hard work.

So what are the risks and how do you protect yourself?

Initially you need to look at the product itself.  You may attract design right protection in the product you are selling.  Design rights can be registered or unregistered.

Registered design rights' primary function is to protect the appearance of consumer items. By obtaining a registered design right for your product, you would be afforded the exclusive right to the design for a period of 25 years.   It would become an offence for anyone to use the design without your consent by either making, offering, importing or exporting a product in which your design was incorporated.

Unregistered design rights, unlike their registered counterparts, are created automatically and intend to protect three-dimensional shapes against copying. Unregistered designs are mainly used for functional items. They arise automatically from the moment the design is recorded in a document or from the moment an article has been made to the design.  Unregistered design rights last for a period of 10 years from the moment the item is first put on sale.

Remedies for infringement include damages, injunction, account of profits and orders for the delivery up and/or disposal of infringing articles.

Patents

Probably one of the most widely known ways of protecting your product would be by way of a Patent.

Patents are intended to protect newly developed or improved industrial, chemical and biotechnological products or processes. Patents are monopoly rights granted by the Government to protect inventions.  If a patent is granted, the inventor gets a monopoly over the use of his invention for 20 years.  One of the key factors however is that the product in question must not have been disclosed anywhere in the world prior to the application.  Therefore, if your product has already been placed in the marketplace or even if it has been disclosed by way of demonstration, advertisement or article, you will be too late to seek this type of protection.

The downside of getting a patent is that before the patent is granted, details of the invention go on a public register at the Intellectual Property Office which everyone may study. Therefore, your invention would not be kept secret during the application process.

An invention will be patentable if is satisfies four conditions. It must be new (i.e. not previously disclosed), constitute an inventive step, be capable of industrial application, and not be within any of the exclusions contained within the legislation. 

If the patent is granted in relation to your product, a third party may not make, use a process, dispose or keep a product which comes within one of the claims in the patent specification. Remedies for infringement include an injunction, an order for delivery up or destruction of the offending goods, damages, an account of profit and a declaration that the patent is valid and has been infringed by the defendant.

Protecting your brand

OK, so you have now considered protection for the physical product that you are selling.  But what about the brand and brand name that you have worked so hard to market and grow?  How can you protect this?

Copyright protection arises automatically to protect various types of work including artistic or literary works such as text, images, graphics and other artwork.  Copyright would therefore cover your brochures, website and other sales literature.

The owner of copyright has exclusive rights to prevent unauthorised copying or distribution of the work.  Please note this is only a right to prevent copying and there is a defence if the respondent can show that he independently created his work himself without reference to the original work, even if both works are similar or identical.

The remedies for infringement include suing for damages, obtaining an injunction (in this case to stop the infringing act), an order for the delivery up of infringing materials and/or an account of profits derived from the infringing material.

The difficulty is that it can be difficult to sustain a copyright action. For this reason, it may be of particular value to seek protection in other ways, for example by registration of a trade mark.

Trademarks

All businesses should consider whether they have a brand name, a product name or logo that could be protected by way of a trade mark. 

A trade mark is any sign which can distinguish the goods and services of one trader from those of another.  To be registrable, it must be capable of being represented graphically (in words and/or pictures).

Registration of a mark gives the owner the exclusive right to use that trade mark and to prevent unauthorised use through a legal action for infringement under the Act.  In effect, there is a statutory regime to protect the rights of the trade mark owner.  Remedies for infringement include bringing an action for damages and obtaining an injunction to stop the infringer continuing the offending act or actions. In addition a court can order offending goods or material to be delivered up or in some cases destroyed.

Trade marks can be registered relatively cheaply and so are a great way of protecting your brand.  Once you have a registered mark, why not consider licensing it to third parties who may distribute under the brand?  This way you can generate a licence fee for the use of the mark.  Trade marks also can be used to show your competitors that you take your brand and intellectual property seriously thus potentially acting as a deterrent to would be infringers.

Without such trade mark protection, you are left with the common law tort of 'passing off'.  Passing off is where an infringer sells his goods or services off the back of someone else's reputation. Very generally, it occurs where one party makes a misrepresentation calculated to injure the business or goodwill of a third party and where damage occurs to that party.

Passing Off actions are often difficult to sustain and proving the necessary elements can be challenging and expensive.

Once you have identified as a business the areas where you need to protect your intellectual property and have taken steps to do so, you can't sit back and relax.  Unfortunately intellectual property protection is an ongoing effort.  You should be aware of what your competitors are doing and should check that they are not encroaching on the intellectual property rights you have worked so hard to create and protect.  You should follow these top tips for ongoing protection:

Tip one: Search yourself

Try entering your product name or brand name into an internet search engine to see what comes up.  Are other companies using these terms to attract customers?  Particularly check the 'sponsored links' section to see whether competitors are using Keyword advertising based on your brand names.

Tip two: Recent registrations

Whether you have opted to register your brand or logo as a trade mark or not, you should keep an eye on the publications in the Trade marks Journal.  The Trade marks Journal is published weekly and is available on the UK Intellectual Property Office website.  You should check to see whether any marks have been applied for that are similar to those that you use in your business.

Tip three: Domains

Check which domain names are available.  Are there any domains containing your brand or product names that you could consider registering to prevent them being available to third parties?  This may include registering the same name under different extensions (such as .co.uk; .com and .org) or registering common mis-spellings or shortened alternative versions of the domain name.

Tip four: Competitor watch

Generally you should look to monitor your competitors' activities on an ongoing basis.  This should enable you to be in the best position to act swiftly if you do spot any infringing activities.

In summary, don't let your business produce a product and build up a good brand without considering the numerous ways of protecting these valuable assets.  Failure to consider and act upon your options could lead to your competitors stealing your ideas and customers.

Amy Shakespeare

Amy Shakespeare is a solicitor at Midlands law firm Higgs & Sons.  Amy works in the commercial department, which is based at the firm's new purpose-designed headquarters in Brierley Hill's Waterfront.  The firm was recently shortlisted for Birmingham Law Society Law Firm of the Year.  To contact Amy call 01384 327128.

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