31 October 2022

Tales of IP terror: Common frights and fears when protecting intellectual property

In honour of the spooky season, we are exploring tales of IP terror for patent and trade mark attorneys. Now is the time to check your closet and cover your eyes, as we take you on a walk through the graveyard of IP despair, and discover what horrors wait for you on the other side of IP law.

Weak trade marks – a scary sight for trade mark attorneys

A trade mark’s essential function is to designate brand origin. This means that it must be capable of distinguishing the goods/services of one undertaking from those offered by other undertakings. Often it is tempting to choose a brand name that ‘sends a message’ about the business; from a marketing perspective, this may even be desirable. However, many brand owners risk falling into the descriptiveness/non-distinctiveness spooky trap. That is, adopting a trade mark that is not capable of protection, and not enforceable.

As trade mark attorneys, we see it time and again. Brand owners will be refused protection for their marks and will struggle to stop third parties from using identical and/or similar names. Who are the main culprits? Usually, it’s purely descriptive words (such as ‘plus’, ‘extra’, ‘ultra’), words describing the business or the goods/services offered, buzzwords characteristic to each industry, and/or combinations thereof.

For example, with the recent sustainability movement, terms such as ‘BIO’, ‘ECO’, ‘GREEN’ and ‘ENVIRO’ have become increasingly popular. Sadly, they are also unenforceable. Accordingly, trade marks such as ‘Bio Cup’, ‘Bio Organics’ and ‘Clean & Green’ have been refused protection. Avoid the pitfalls of descriptive/non-distinctive marks and check with a trade mark attorney whether or not your chosen name is capable of protection.

Patent ownership – keeping skeletons out of your closet

As a patent attorney, I would much rather see someone tricked with silly string on their front lawn than be faced with an ownership scenario gone wrong! Although inventions are devised by inventors, the actual legal owner of a patent application is the ‘applicant’ (later ‘patentee’ once grant is reached) which is typically a business entity employing the inventor(s). In many territories, including the UK, transfer of relevant IP rights from employee to employer is covered under statutory provisions. However, this does not mean that disputes can’t arise, or other situations in which case-specific demonstration of chain-of-title is required.

To be in a position to address future queries or confusion regarding ownership that may arise, it is always sensible to formalise the relevant chain-of-title via assignment documentation, and it is best to do this as early as possible in the process, in case the inventors move on, disbursing like ghouls in the night.

Further complications can arise where (e.g. third party) collaborators are involved, such as: other companies, subsidiaries of a company, a commissioned party, or ‘non-employee’ inventors such as PhD students. Any one the above may have a claim to (partial) ownership and thus, such scenarios should always be investigated and dealt with.

Not policing a trade mark – the nightmare that keeps on giving

Obtaining trade mark registration for your brand and proudly displaying the ® symbol next to it is great. Not policing your trade mark and allowing identical or similar marks on the register – not so great. Business owners will successfully protect their branding by registering the important elements of it as trade marks but will take a passive approach to enforcing them. This can have its own dangers, as seen below:

Competitors creating confusion on the market, loss of trade and damage to reputation

If a brand owner A started a business and registered the brand name and then brand owner B also enters the market with an identical/similar name, consumers may buy from B erroneously believing the products originate from A. This will divert trade from A and result in a loss of profit. Zoinks!

Things can turn even uglier if brand owner B offers products or services of a lower quality than A, as this could adversely impact A’s reputation. Indeed, consumers may be dissatisfied with the service provided by B and attribute the bad experience to A, not being able to clearly distinguish between the two brands. A howling shortcoming, if you ask us!

Lessening of one’s trade mark rights

Furthermore, allowing trade marks on the market and/on the register that are similar to brand owner A’s mark will result in its weakening. Oh-oh! Brand owner B would then be able to argue that A’s mark has low distinctive character (and is more difficult to enforce) since several similar trade marks co-exist without confusion among consumers. Conversely, we note that there is only one ‘Apple’ in the information technology sector, which is unlikely coincidental. If several businesses were allowed to adopt ‘Apple’-derivative names for the same goods and services, the brand would have lost its significance.

Defence to infringement available to third parties

Finally, if brand owner A decides to stop brand owner B from damaging its business and tries to issue infringement proceedings, but brand owner B registered the similar mark in the meantime, B will now have a defence to infringement. This will create an additional hurdle for A, which could have been easily avoided by proper policing. The simplest way to protect against similar marks creeping on one’s business is monitoring the market and setting up a watching service – a literal guardian watching the registers and informing brand owners of any potential dangers.

Prior disclosure – a fright for any patent attorney

There are not many scenarios patent attorneys dread, but one of the most horrifying ones involve invention disclosures prior to patent filing. Picture the chilling scene where a client finds out their invention they have worked on so hard is not patentable anymore because they previously exposed its intricacies to the public. A true nightmare for any attorney – with no application officially filed and the invention now publicly disclosed, the chances of gaining successful IP protection may well have just vanished like a ghost in the night.

Disclosing details of an invention prior to filing a patent application in such a way that the notional skilled person can now recreate it, would prejudice the novelty of an associated patent claim, a key requirement to be patentable. Although so-called ‘grace periods’ exist in certain territories – providing a period of typically 6-12 months prior to filing in which an inventor can disclose without destroying patent novelty – such generic grace periods do not apply at the UK or European Patent Offices.

But fear not, there is a means to hold steadfast against a complete loss of IP protection, as the registered design system does enjoy such grace period. Registered designs offer an alternative to protect certain features of your product, even after disclosure, as long as the disclosure did not occur more than 12 months prior to filing. Although the prior disclosure may render pursuing patent protection untenable, design features (e.g. the appearance) of a product can still be protected. This means any IP vampires wanting to leach off your hard work will struggle to recreate the look of your exact design without facing the wrath of a vengeful design attorney.

Luckily, we have encountered these terrors so you do not have to worry! Follow our advice and you will be safe from the IP ghouls and ghosts aiming to halt and hinder your progress. If in doubt, always reach out to an experienced attorney for advice.

Lionel Newton
Adela Dinca