Trade Marks, Copyright and Intellectual Property – an interview with Trade Mark Attorney Alison Cole

Many companies spend time and money developing brands and creating intellectual works without giving thought to the value they add to their balance sheet and more importantly how to protect them.

Did you know for example that beyond words and names, forms that have secured protection include sounds, colours, shapes, packaging, design, and décor? Were you aware that copyright applies to a physical work, it cannot apply to something as intangible as an idea?

In our second interview we hear from Trade Mark Attorney, Alison Cole, who sheds light on this complex area of law. Alison is a partner at Graham Watt & Co. LLP and has over 17 years experience in practice. She is a Batchelor of Law, Fellow of the Institute of Trade Mark Attorneys, where she was an examiner for 10 years and is a European Trade Mark Attorney.  She began her career in the legal department of a large multi-national conglomerate in Paris as part of her degree in European Law with French and German. She was previously a partner at a large London firm.

Alison’s areas of experience include cosmetics, publishing, motor vehicles, sports and pharmaceuticals. Alison handles all areas of UK, CTM and Madrid Protocol trade mark work, from searching and availability advice to infringement opinions and settlement agreements. In addition, she regularly advises clients regarding the protection of their domain names and domain name disputes and resolutions.

Interview Transcript:

What are intellectual property rights and does a business automatically have these?

There are 4 main types of intellectual property rights: patents, trade marks, design and copyright. Copyright and unregistered design right are automatically available provided the item of property is original. The others need to be registered in order to obtain protection. Very briefly, a patent is your invention, trade mark is the brand, the design is the appearance and the copyright is the content.

What is a trade mark and why does a business need one?

A trade mark is a brand. So most businesses have a brand. It’s what puts a value to the goodwill that they might generate in the business. Nowadays, with online businesses, the trade mark might be the only asset that a business has. In fact, a high percentage of FTSE100 companies now have intangible assets listed quite highly on their balance sheets. There is no reason why that shouldn’t also be the case for small businesses.

What are the business benefits of getting a trade mark and is it expensive?

There are two main reasons for getting a trademark protected. You can trade without getting it protected but if you do so, you don’t have registered protection for your asset and you run the risk of running into conflict with third parties. So, in terms of an asset, if you protect it as a registered trademark, it is a piece of property belonging to your business that can go on the balance sheet. It can then also be sold or licensed, or franchised to anybody else you that you chose to and you have control over that and your rights are recognised.

In terms of not conflicting with anybody else, there is no point in investing in a brand new company if when you launch, you are in conflict with somebody else. All your good, hard work is undone.

As a result, the expense is variable: it depends on the number of classes, ie the number of goods and services that you provide, that determines the cost. As a very rough idea, £1,000 will cover you for a fairly straightforward application in a number of classes. Although that isn’t an insignificant sum for a small business, compared to having to rebrand with stationery, a new website etc, it’s not a massive amount of money.

Why should businesses protect their website domain names?

A business should protect the website and the domain name. If your most obvious domain name isn’t available, that’s a fairly clear sign that someone is already out there competing with you so you need to refocus and find something else otherwise you will spend a lot of money fighting that other company before you even start. I would, however, recommend that you don’t register more than a couple of domain names because they don’t grant you any rights. What you need to do is to get the trademark that is covered by the domain name – so the brand you are registering – as a domain name. Once you get that protected, that stops anyone else copying what you are doing.

If I have created a new brand/logo do I need to protect it and if so, how do I do this?

If you create a new brand or logo, or anything that has required creative input, you should protect it. It gives you protection for your input in terms of time and effort. It also makes sure that you can prevent anyone else copying you after you launch and to make sure you are not infringing somebody else. In order to obtain protection, the best way to do it is to contact a firm of patent or trade mark attorneys.

What is copyright protection and how can I enforce it?

Copyright protection is available for the content of something that you create. It might be a literary or musical or artistic work and it can be many other things. It is available provided that the work that you have created is original. In order to prove your ownership, you need to docket when you created the piece of work. That can be done simply, often by people sending it in a sealed envelope to themselves. That’s really just making sure it has a date on it but it can be done electronically by various other means.

Copyright can be very expensive to enforce because it is not a registerable right so you have to prove your ownership before you can enforce it and all proceedings are done through the court. However, if you find out about copyright infringement going on, often a letter from a firm of patent or trade mark attorneys warning that infringement has occurred can be sufficient to stop the infringement occurring any longer.

What is the most common misconception about trademarks, IP and copyright?

Trade marks, IP and copyright and patents and designs are a tricky subject. Most companies don’t come across them unfortunately until they encounter problems. This could be because they are parting ways with someone they have been in partnership with and don’t know who owns what assets. It could be because unwittingly they have infringed somebody else’s rights. Also it’s a common misconception that domain names and company name registrations will give you protection – and they won’t! They only way to get protection for your branding is through your trademark, for your invention is your patent and for your content and appearance is through copyright and design.


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