Logos and No Gos: How to Understand and Get the Most from Your Brand IP

Preface xv

About the author xvii

1 Creating and Identifying Your IP 1

Trade marks 2

What can you register as a trade mark? 2

What can’t you register as a trade mark? 4

Always conduct pre-emptive searches 6

Unregistered trade marks 9

Use of the ® and symbols 10

Copyright 12

What is copyright all about? 12

What attracts copyright protection? 13

What does not attract copyright protection? 14

Protecting your ideas 15

Make sure that you own the copyright 15

Period of copyright protection 18

Moral rights 19

Database right 20

What is database right? 20

What protection does database right give you? 21

In what respect do you need to bother with database right for the purposes of your brand strategy? 22

Designs 23

UK registered designs 24

UK unregistered designs 27

European Community designs (registered and unregistered) 28

Overlap between trade marks and designs 31

Benefi ts of registering device marks/logos as designs 32

2 Registering Your IP 35

Trade marks 36

The Nice classification system 36

UK registrations 37

Community registrations 44

International registrations 49

The standard Nice classification of goods and services for trade mark registrations (from January 2007) 52

Copyright 71

No UK registration system 71

The international protection available for copyright works 71

Use the symbol 73

Designs 74

UK registration procedure 74

Community registration procedure 77

3 Housekeeping Your Trade Mark Portfolio 81

Housekeeping tips for preserving and protecting your trade mark portfolio 82

Register your trade marks in the name of the same proprietor 82

Be consistent when using your trade marks 83

Do not allow your trade marks to become generic 86

Conduct regular trade mark audits 87

Certificates 89

Keep accurate and accessible records 89

Renewal dates 91

4 IP and Your Employees 93

IP and employees 94

What to include in your employment contracts and why 94

Confidentiality clauses 95

Moral rights and waiver 96

Commissioned works/Contractors 97

Communicating to all employees the importance of IP 98

Chain of command 99

5 Exploitation of Your IP 101

Exploitation of your IP 102

What is the difference between a licence and an assignment? 102

Exclusive/Non-exclusive 104

Registration implications 105

Registrations by rogue licensees 106

Standard protective licensing provisions 107

Franchising 110

Mortgaging/Selling off unused IP 111

6 Policing Your IP 113

Policing your IP 114

Why is it important to monitor your IP for potential third party infringements? 114

How can you find out if somebody is infringing your intellectual property rights? 114

Which governmental or public agencies can help you? 115

How can private service providers help you monitor your intellectual property for infringements? 119

7 How Are Your IP Rights Infringed? 127

Registered trade marks 128

Advantages of registering 128

Acts of civil infringement 128

Criminal trade mark offences 131

The grey market goods problem 132

Copyright 136

Acts of civil infringement 136

Defences to civil copyright infringement 139

Criminal copyright offences 140

Designs 142

UK registered designs 142

UK unregistered designs 144

Compulsory licensing of your unregistered design 147

Community designs (registered and unregistered) 147

Criminal offences 148

8 Enforcing Your IP and The Remedies Available To You 149

How to react to an infringement of your rights 150

Do you have a clear reporting procedure and chain of command? 150

The need for speed 151

The importance of a confusion log 151

Cease and desist letters 153

A word of warning about making unjustified threats 154

Website infringements and service providers 155

What next? 157

Remedies 161

Injunctions 162

Delivery up, recall, seizure and destruction 169

Damages/Account of profits 171

Disclosure of the identity and whereabouts of other wrongdoers and information on infringing products 174

Publication of judicial decisions 175

9 How To Avoid Infringing Other People’s IP 177

How to avoid infringing other people’s IP 178

10 Registering and Protecting Your Domain Names 183

Domain names 184

What is a domain name? 184

What is the value of a domain name? 184

Registering a domain name? 184

Problems with the registration system 185

Disputes 187

Trade mark infringement/passing off 188

Alternative dispute resolution 189

11 The Take-Home Message 195

The dos and don’ts of brand strategy 196

Trade mark registrations 196

Trade mark portfolios 198

Trade mark infringements 202

Design registrations 205

Copyright 207

Database right 210

Domain names 211

Index 213