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Like most areas of law, Intellectual Property can appear daunting and complex. There are a great many practice areas, subjects and procedures. The SH&P “A-Z” Intellectual Property glossary is a free and easy to use glossary of legal terms commonly used and associated with IP. We hope that it will help you better understand this topic. All of the entries include contact details for SH&P expert advisers. Alternatively, you can request a free, no obligation, IP Consultation and Review here if you require more information or have a particular issue you would like us to help you with.
When a new trade mark (brand) is adopted it is usually necessary to conduct a review of existing marks owned by others (registered or not) on the national register of interest. Ordinarily, if a product with a new brand name is to be launched in the UK it would be advisable to search the UK register.
The purpose of the search is to determine two factors: 1. is the new mark safe to use, and, 2. can the new mark achieve registration?
Is the new mark safe to use?
Whether the adoption and use of the new mark might infringe the rights of another individual or business. For example, if the search results show that the prospective mark is the same as or is similar to an earlier right on the national register (and covers the same or similar goods and services as the earlier right too) then it is possible that the use of the new mark might infringe the earlier right. Under those circumstances it would not be safe to use the new mark without further analysis and investigation of the earlier right. A trade mark attorney is qualified in assessing the risk that will be posed to a new mark when there are one or more potentially-conflicting earlier rights on the register. In extreme cases the risk might be considered too great and the adoption of a different mark would in that case be advised.
Can the new mark achieve registration?
Also, if an earlier, conflicting right is located by the search then this might block the path to registration for the new mark. This may be as a consequence of it being cited as potentially-conflicting mark during the application’s official examination, or perhaps as a result of the application being opposed by the earlier right owner later on.
Companies House is the official government organisation for incorporating and dissolving limited companies, as well as providing a registers of company information which is made publically available. Any business that wants to register its company name can do so at Companies House.
A common misconception is that the registration of a company name gives trade mark rights to that name. It does not. Provided that a business’s chosen name does not include any offensive or precluded words Companies House will register any name for a company so long as the identical name has not already taken. Therefore it would be perfectly feasible for a party to register the company name “Acme International Limited” even though names such as “Acme Limited” and “Acme UK Limited” may have already been taken by other parties. By registering and using a company name this does not accrue trade mark rights to the name. To do that, the name (e.g. “Acme”) would need to be used as part of the company’s product or service branding.
The registration of a company name in the UK is quite separate from the registration of a trade mark. It is very important to distinguish between the two as the rights derived from each one is very different.
The incorporation of a company is the legal requirement to operate as an organisation, separate from the individuals who own the company, and choosing a name for that entity is part of the company registration process. Company name registration should prevent the same or very similar name being registered as a company name only and does not provide any rights to use of that name as a trade mark in relation to goods and services or to prevent third party use of that name as a trade mark in relation to goods and/or services.
Such rights are derived from trade marks (registered and unregistered) only and so it is important to ensure that a search of the UK/EU Register (and marketplace) is carried out to establish the availability to use a new name as a trade mark (see Clearance Search) and to obtain a trade mark registration that can be relied upon to prevent others using the same or similar mark in relation to the same or similar goods/services.
There is no detailed examination conducted at Companies House before the acceptance of the name of a new company other than to ensure that there is correct usage of terms such as “limited”, “plc” etc and that it does not include any excluded words. In addition, Companies House checks that the proposed company name is not identical or the “same as” an existing company name on the Company Name Register. A name is considered “same as” if they are so similar as to confuse the public as regards which company is which. A list of generic corporate terms (such as “UK”, “company”) are identified and disregarded when comparing the proposed company name with existing company names.
It is possible for a trade mark owner to object to the registration of a company name within 12 months of registration by submitting a complaint including evidence of its earlier trade mark rights (registered or unregistered) and arguments that the company name will mislead the public by suggesting a connection between the two. The Secretary of State will consider the similarity of a company name and trade mark in isolation of any corresponding claim to trade mark infringement or passing off.
A contract is a legally binding written or spoken agreement between two or more parties which obliges those parties to do (or to not do) a certain act or acts. It is enforceable by law. If the contract is written then it will protect all named parties to it.
There are three essential elements to a contract:
A typical everyday example of a contract is when one party sells a car to another party in exchange for an agreed sum of money. In intellectual property matters a common form of contract is an assignment. For example, a party that is the named owner of a patent may choose to sell that patent to another party if the parties can agree on a price to be paid for it. The assignment document drawn up will name both parties and will specify the consideration that the buying party will give to the selling party in exchange for the patent.
If a European Union trade mark application is rejected or successfully opposed or similarly if a registration is cancelled, it may be possible, under certain circumstances, to convert the mark into one or more (but not all) national applications within the EU. This allows the original filing date to be maintained.
Due to the unitary nature of the EUTM system, any valid ground of rejection/cancellation must have effect on the entire EUTM, geographically, even if the grounds of rejection only apply in respect of a particular part of the EU. In such cases, conversion to national applications may only be requested in the EU territories where the rejection does not apply. For example, a mark may be considered descriptive/non-distinctive in French speaking territories only, in which case the whole EUTM must be rejected but conversion is possible to the non-French speaking national offices in the EU. Likewise, if an opposition is successful on the basis of two or three earlier national registrations in, say, France, Germany and Italy, conversion may take place in all territories except France, Germany and Italy. But if an opposition against an EUTM is successfully based on an earlier EUTM, no conversation is possible at all as the earlier right applies across the entire EU.
Once conversion is granted, the national procedures (and costs) differ from one EU state to another and may also depend on the status of the original application/registration. This can mean a full re-examination and publication for opposition purposes or a simple re-registration. In all scenarios, the successfully converted national application/registration maintains the original filing date (including Paris Convention priority date) and thus priority over any intervening rights.
It is possible to divide and partially convert an EUTM if the EUIPO has rejected the application for only some goods or services.
Copyright is a legal right that applies to any original work which is in some way recorded, either on paper, in physical form, or in analogue or digital formats. Recognition of copyright works were first introduced in the latter part of the 19th century by means of The 1886 Berne Convention. This later developed and became statute around the world. In the UK copyright works are governed by the provisions of the Patents, Designs and Copyright Act 1988.
In order to qualify as “original” a work must be new. However it does not need to be completely new, since the concept of originality in copyright lies in the expression of an idea, rather than the idea itself. Old ideas expressed differently – to a sufficient extent – can become new copyright works in their own right.
Copyright is an automatic right once a new piece of work is created by the author. At that time, it is always advisable for the author to assert his or her copyright by stating the year of creation and the individual or business name of the author against it, in conjunction with the copyright symbol “©“. For example, “© 2017 Stevens Hewlett & Perkins”.
Although copyright laws are jurisdictional in that territories around the world have their own laws governing it, many reciprocal arrangements are in place by virtue of various international agreements. This means that the rights of copyright holders in one country are likely to be recognised in another country, despite the two countries having their own very separate laws.