Registered rights v Unregistered rights

Many businesses are aware of intellectual property and its importance, but may not know that they actually have unregistered rights as well as those that come with registration.

Two specific types of IP that have both unregistered and registered aspects are trademarks and design rights.

Trademarks

For the best protection, a registered trade mark is the way to go. The requirements are outlined in the Trade Marks Act 1994, especially in sections 3 and 5. Section 3 contains the absolute grounds of refusal which focuses on the structure of the mark itself. Distinctiveness is key in this section and any mark that is too descriptive will not succeed. Section 5 outlines the relative grounds for refusal that is in relation with existing registered trademarks. If your proposed mark with infringe a mark that is already registered by being too similar or causing confusion, it will be refused under section 5.

A registered trademark can last indefinitely, as long as it is renewed every 10 years.

In addition to this, there is protection for unregistered trade marks through the common law action of passing off.

Passing off seeks to protect a mark if it has gained a reputation with consumers. This allows you to stop others using your mark on goods or services without permission even if you have not registered it.

To be successful, you must prove that:

1.            The mark is yours

2.            The mark has built up a reputation, known as goodwill

3.            That goodwill/reputation has been harmed in some way by the other party’s use of it

This course of action, however, can be expensive as it is difficult to prove the three requirement without a substantial amount of evidence. This converts into time which as everyone knows is money.

Design rights

As with trade marks there is two types of rights you can get in relations to your designs. You can apply to obtain registered design rights which will give you the best protection or there is unregistered design rights that automatically apply if needed.

Subject to a successful application, a registered design right can stop the imitation or stealing by a third party of the look of a product you have designed. The look can include the appearance, the shape, the way in which parts of the design are arranged and any decoration of the product.

To attach registered design rights to your work, your application needs to show that the design satisfies a number of requirements. A key provision is that the design has to be original to you and does not exist in any form already. Originality and uniqueness is key here. In addition the design cannot be offensive or make use of any special emblems or flags.

Certain shapes of objects may already be protected under unregistered design rights. However to rely on this is risky. You are only protected if another has directly copied your shape, similarity does not amount to enough. In addition, an unregistered design right will only protect your shape for 15 years from the end of the calendar year it was first recorded.

To conclude, it is always best to register your intellectual property to gain the best protection. Even though unregistered design rights are there to fall back on, it is not in your best interest to rely on them. 

Contact The Trademarkroom for advice!

By Ellis Sweetenham