Intellectual Property Disputes and Infringements

Trademarks

Trademarks can be words, slogans, logos, shapes, colours or sounds that distinguish the goods or services of one business from another.

Trademarks can be registered or unregistered. This note focuses on registered trademarks.

You can oppose the registration of a trademark or apply for it to be invalidated or cancelled.

Once a trademark is registered, you cannot use a mark that is:

• identical or similar in relation to the same or similar goods where there is a likelihood of confusion; or
• identical or similar in relation to any goods where the mark has a reputation and use takes unfair advantage of or is detrimental to the distinctive character of the mark.

Example of how you can infringe a trademark include:

• Applying a mark to goods or packaging
• Offering goods or services for sale under the mark
• Importing goods under the mark
• Using the mark on business papers or in advertising

There are defences to trademark infringement, such as:

• An own name defence.
• Where the first mark does not have sufficient reputation when defendant applied for the later mark
• Acquiescence in the use for a period of 5 years
• The trademark has not been used for 5 years.
• The trademark was not registered at the time of the infringement complained of.

Unregistered design rights

Design right relates to the appearance of a product. For example, its shape, pattern or configuration. There are exceptions to this such as surface pattern and where the product is made to “fit” or “match” with another product (known as the “spare part” exception). The design must be original and must be documented or a product made to the design. The designer is the first owner unless the design has been produced by an employee in the course of their employment.

Design right lasts for:

• 15 years from the end of the calendar year when the design was first recorded in a design document or from when the first product was made to the design.
• 10 years from the end of the calendar year when products made to the design were first offered for sale or hire.

The design right owner has the right to manufacture the products to the design or document a design to which products can be manufactured.

A person or business infringes design right where their actions are inconsistent with the rights of the owner without a licence for commercial purposes. Where a product is purely functional a right to a licence arises in the last 5 years of protection.

There are defences to infringement including copying:

• that is not for commercial purposes.
• for experimental purposes.
• for teaching purposes providing certain conditions are met.

Care must be taken not to make groundless threats of infringement.

Copyright

Copyright is an automatic right whenever an individual or company creates a piece of original work, as long as it has required a degree of labour, skill or judgement. Contrary to popular belief, there is no requirement for the copyright holder to label the work as copyrighted.

Types of work protected by copyright include literary, dramatic, musical, artistic, typographical arrangement, sound recordings and film.

Copyright covers the work that expresses an idea rather than the idea itself. For example, the ideafor a book is not covered, but once it has been written or put into print, it is.

Usually, copyright is owned by the person who first created the work, the author, or the employer if the work has been created as part of an individual's employment.

Copyright lasts for different durations depending on the medium, for example 70 years after the death of the author for literary work, or 70 years from the release date for sound recordings.

Passing off

Passing off is a form of misrepresentation. Where goods and services have a reputation, and they are offered to the public in such a way as to mislead the public to believe that the products or services are their own. There must be damage to the Claimant caused by the Defendant’s misrepresentation.

Anyone who can prove the elements of reputation, misrepresentation and loss can bring a claim for passing off.

We can help you seek an interim production to protect your position up to and including trial as well as bring a claim for damages and where appropriate delivery up and destruction.

In addition, we can help you make an application to require a company to change its registered name where a company name has been registered with a view to obtaining money from you or to prevent you using the company name where you have established a reputation in the name.