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A guide to copyright, trademarks, passing off and unregistered design rights

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Posted by Luke Moulton on 21 November 2011

Luke Moulton Associate

The cost of intellectual property protection is notoriously high, particularly if you are seeking worldwide protection. It is a common misconception that protection only arises when a registration of a particular intellectual property right is successfully achieved.

This article seeks to dispel that misconception by giving a brief introduction to some of those intellectual property rights that exist upon creation or which otherwise arise without the need for any application for registration and the accompanying fees.

While the rights below do not amount to an exhaustive list of rights necessary to protect an owner's product, work, creation or invention, they may give at least some comfort to those without available funds for professional advice/IP registrations to know these rights arise. Where possible it is, of course, preferable to obtain specialist advice. 

Copyright 

Copyright automatically arises on the creation of an original work. In the UK (unlike the US) there is no official registration system for copyright works. To qualify as an original work, it must have been created through your own skill, judgment and individual effort and must not have been copied from other works. Copyright does not protect ideas for a work; it is only when the work itself is fixed; for example, in writing, that copyright automatically protects it. 

Copyright applies to a broad category of works - literary, dramatic, musical, or artistic works; sounds recordings; films; broadcasts; and typographical arrangements of published editions, such as books. The general rule is that the first owner of the copyright is the author, although there are exceptions to this rule, such as works made by a person in the course of his employment. 

It is important to note the above rule of ownership applies to commissions. The author (not the purchaser) of a commissioned work (and this would, therefore, include IT contractors, for example) owns the copyright. Therefore, any such commission should be accompanied by an assignment of ownership in the copyright. There are particular requirements for a valid assignment and as such legal advice should be sought to ensure the assignment is effective.

Copyright protection generally runs from the date of creation, or recording, of the copyrighted work, and lasts until the expiry date. The expiry date will vary depending upon the category the work falls into. For literary, dramatic, musical or artistic works and films, the copyright lasts for 70 years from the end of the year of death of the author. For sound recordings and broadcasts, the relevant period is 50 years from the end of the year in which the audio recording was made or published. For typographical arrangements (e.g. the arrangement of a book) it is 25 years from the end of the year in which the edition was first published. From a practical point of view, in order to demonstrate to the outside world that copyright ownership is asserted in a particular work, it is advisable to mark the original work with the © symbol, the name of the copyright owner and the year in which the work was created. However, the absence of any such mark does not diminish your rights of enforcement in the event of an infringement.

Copyright allows you to protect your original material and stops others from using your work without your permission. Copyright owners generally have the right to authorise or prohibit unauthorised persons copying the work in any way, issuing copies of the work to the public, renting or lending copies of the work to the public, performing showing or playing a copyright work in public, communicating the work to the public, or making an adaptation of the work. Copyright will be infringed when any of these acts are done without your permission, and in the event that it is, you have the right to take legal action to stop further exploitation and claim damages. In addition, a copyrighted work created may be automatically protected in a large number of other countries through the's membership of a number of international associations, such as the Berne Convention, which is specifically concerned with the protection of literary and artistic works. 

Trademarks and 'Passing off'

A trademark is a sign which can distinguish your goods and services from those of your competitors and is capable of registration at the Intellectual Property Office. Through registration, you have exclusive rights to use the trademark. You can take legal action against any persons who use, in the course of their business (and without your consent), a sign which is identical or similar to your trademark. However, if you do not register your trademark and someone uses your mark without your permission, you may still be able to claim relief through the common law action of "passing off". 

One of the most significant cases in this area was the infamous 'Jif lemon' case which was decided in 1990. In this case, which established the test to satisfy the common law action of 'passing off, it was held that the reproduction of a lemon-shaped container for lemon flavouring, amounted to passing-off because of the reputation and goodwill which the shape of the Jif lemon container had attracted.

To bring a passing off action, you must be able to show that:

  1. you are trading in the goods and services which the mark applies to, as only traders who have generated goodwill can bring a passing off action; 
  2. the public associate your mark with the goods you produce, or the services you provide; 
  3. you have built up a reputation in the goods and services, and goodwill is attached to the mark; 
  4. a third party has made misrepresentations to the public, whether intentionally or not, leading, or likely to lead the public, to believe that the goods or services offered to them are your goods or services; and 5.this has caused damage to the goodwill in your business. 

While it can be difficult and expensive to prove a passing-off action due to the evidential burden of proof placed upon the owner of the trademark, it nevertheless remains a course of action open to owners of unregistered trademarks. 

Unregistered Design Rights in the UK and EU

Design rights protect the appearance of the whole or part of a product resulting from its features; in particular, lines, contours, colours, shape, texture and material. Not all designs qualify for design right; the design must be the shape or configuration of a product. While it is advisable to register these with the IPO, in the UK the owner of an unregistered design right does retain the right to take action if an unauthorised person copies the design to produce a design that is the same, or substantially similar. This right arises automatically once the design is recorded in a design drawing and lasts for either ten years from the first marketing of products that use the design, or 15 years from the creation of the design, whichever occurs first. The owner has the right within the first five years to prevent anyone from copying his design. However, for the remainder of the period, third parties may apply for a licence of right in respect of the design. This means that they are entitled to a licence to make and sell products copying the design. Again, from a practical perspective, it is advisable to retain any working documents prepared in creating the design and sign and date any design documents.

There are limits to the scope of protection offered by unregistered design rights, so if a third-party independently creates a design that does not involve copying your design, this will not be an infringement of an unregistered design right. In contrast, where the design right is registered, if the effect of any new design is to create an impression that the new design is the same as your design, this would be classed as an infringement of a registered design right. This is an important distinction between unregistered and registered design rights. 

In conclusion

What this article seeks to show is that there is a certain level of protection afforded by intellectual property rights which arise without the need for registration. However, it is important to remember that investing time and possibly money too in registering relevant intellectual property can afford additional rights and / or courses of action in the event of an infringement. 

About the author

Luke Moulton

Associate

Luke is an experienced intellectual property lawyer advising clients on disputes relating to their intellectual property rights.

Luke Moulton

Luke is an experienced intellectual property lawyer advising clients on disputes relating to their intellectual property rights.

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