Getting protection in place for IP is essential

'IP rights are being asserted more in this digital age'. Picture: TSPL
'IP rights are being asserted more in this digital age'. Picture: TSPL
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IP rights can be bought and sold, so guard them, says Pamela Abbott

Intellectual property rights have a long evolutionary history: last month the Intellectual Property Office (IPO) published patent number 2,500,000, the first having being granted by Henry VI in 1449.

IP rights are being asserted more in this digital age and this is a phenomenon to be welcomed. As the electronic world moves forwards in ways we can’t anticipate, it is reassuring to see there are legal rights which can be used as weapons in the battles which are an inevitable consequence of progress.

Simply put, intellectual property results from the expression of an idea and is an intellectual creation such as a brand, an invention, a design, a song or so on. It can be owned, bought and sold. There are numerous and varied forms of IP rights which can apply to the different types of property created.

Trunki

Recent cases involving illustrate some protections available, and show it is not just the “big boys” who can rely on them. One involves the popular children’s Trunki, a hard-shell suitcase with clasps which look like an animal’s nose and tail. Fans of Dragon’s Den might remember Trunki was dismissed as an investment opportunity largely because it was felt it could be copied by anyone, as the idea was incapable of patent protection. However, the owners of the Trunki brand were recently in court asserting their Registered Community Design right against an importer and seller of a similar product called the Kiddee Case. The Trunki’s design was held to give a strikingly different impression from other designs and benefited from wide protection as a result. The Kiddee Case was held to have all of the features which make Trunki so different, and infringed the Registered Design Right. This form of protection is relatively inexpensive and covers the entire EU. This case illustrates that even where one IP protection might not apply, another may prove invaluable.

BSkyB Group PLC

Another significant case saw BSkyB Group PLC win the battle against a giant of the digital era, Microsoft, over Microsoft’s use of the name SkyDrive for its cloud storage services. BSkyB has registered trade marks for its many and varied goods and services for the “SKY” name, registered in 2002 and 2006 – before consumers would have associated the word “sky” with digital storage systems.

In 2007, Microsoft launched SkyDrive and by 2012 SkyDrive was used for branding without any association with Windows Live. BSkyB made a claim against Microsoft for trade mark infringement and passing off. BSkyB argued that in the term SkyDrive, the “Drive” part was descriptive of the service only and “Sky” was the dominant feature – and being used for similar goods and services as those provided by BSkyB. This was likely to confuse the public into thinking SkyDrive was a BSkyB service, and BSkyB provided evidence of actual confusion having occurred. The court agreed and found that this could damage BSkyB’s goodwill.

Another lesson here is to register a trade mark as soon as possible: we are not always able to predict the connotations a word may have in the future.

Registration

Even if registration has not been applied for, vigilance is needed. IP rights can exist without being registered. Where someone tries to register, or has registered, a trade mark after the use by a business of that mark and is able to give evidence of that prior use, the registration can be challenged under the law of passing off.

Trade mark applications are filed all the time, and some could infringe earlier rights. Until 2007, the IPO raised identical or similar mark objections when a trade mark application was made and there was the possibility of conflict. Now the owners of existing or similar marks have to do that themselves. Few trade mark applications have been opposed, leading to concern within the IPO that many small and medium-sized businesses are not using the process to defend their rights due to fear of time and cost. So, a new fast track procedure, making certain forms of objections cheaper and easier, was introduced on 1 October – making the weapon of trade mark protection more accessible by all.

The law on IP rights is complex and specialised, but having the right protections in place can have massive implications for a business.

• Pamela Abbott is a solicitor with CCW Business Lawyers www.ccwlegal.co.uk

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