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With companies being encouraged to explore overseas markets, LUCY WALKER and NICHOLAS BRADDON explain how to protect your business’s intellectual property in key international markets
T
he world is changing fast. Thanks to the Internet, we are no longer geographically restricted when making a purchase or when seeking new customers. The Internet is available globally, 24 hours a day, seven days a week. Hence, consumers have a huge choice when
making purchases and your business could conceivably have a billions-strong customer base. The fact that so many people can easily see your products and services can lead to problems with counterfeiting and copycats attempting to piggy-back on your hard work and innovation. You should take steps to protect your investment in products and services by obtaining registered intellectual property (IP) rights in your key markets. Fortunately, with the help of growing international IP systems, increasing harmonisation of laws and ever-improving communications, it is less complex and more cost- effective than ever for businesses to obtain registered IP rights in foreign markets.
The three main IP rights are: trade marks; patents; and designs.
TRADE MARKS – BRANDS Consumers look to your trade marks to make sure they are purchasing your goods or services as opposed to your competitors’ goods or services. A registered trade mark provides you with a monopoly right, enforceable to prevent others from using your mark or something similar. Trade mark rights are generally obtained on a country-by-country basis. Deciding where to seek trade mark protection typically involves weighing up the commercial importance of being able to prevent others from using your trade mark in a particular country, against the cost of obtaining protection there.
Two commonly-used systems can enable you to obtain cost- effective protection in more than one country:
1. A Community Trade Mark (CTM) can be obtained, providing protection across all 28 member states of the European Union (EU), as well as extending to include any countries which may join the EU in future.
2.The Madrid Protocol system enables you to file one application and choose where to protect the mark from a list of over 90 countries.
Enforceable trade mark rights can also be acquired on an unregistered basis, through use of the mark in a particular country. However, such rights are expensive to enforce and some countries do not even recognise them.
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Therefore, our advice is to protect your mark by way of a registration, especially as most countries operate on a first-come, first-served basis in terms of acquiring such rights.
PATENTS – INVENTIONS With patent box, there are specific tax implications for a business holding patents or not doing so. A business can pay a lower rate of corporation tax on profits derived from patented inventions. For a patent to be granted for an invention – which may be a product or
process – the invention must meet several requirements, including that it must be new. Generally, the invention must not have been disclosed to the public by any means, anywhere in the world before the filing of the patent application. This applies to your own disclosures – e.g. papers, articles, presentations at conferences, marketing materials and sales – as well as disclosures by others. Patents are territorial; each country has its own patent system. Nevertheless,
the Patent Co-operation Treaty (PCT) can facilitate obtaining patent protection in several countries. Under the PCT an international patent application is filed currently designating 148 countries. The primary advantage of the PCT is that it delays the decision and costs of separate national applications for up to two- and-a-half years from the initial filing or priority date.
DESIGNS – APPEARANCE OF PRODUCTS The appearance of a new product can be protected using registered designs, which can be enforced against infringers. Registered designs are somewhat under-used by UK businesses, despite the significant value of design-led businesses to the economy and despite being relatively affordable. When considered per-country, per-year over its 25-year lifetime, the cost of a European registered Community design (RCD) is very low. Internationally, the Hague System can sometimes reduce the cost of obtaining registered designs in several territories. Relatively few countries are signed up to the Hague System, although the USA may soon join, potentially greatly increasing the system’s usefulness. The appearance of a product may also be protected by unregistered (EU and UK) design rights, but these rights, while useful and not to be discounted, only provide protection against direct copying and their duration is limited.
Lucy Walker is a trade mark attorney and partner at Barker Brettell. Nicholas Braddon is a patent attorney and associate at Barker Brettell. For more information visit
www.barkerbrettell.co.uk
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