Intellectual property basis for SME's

IP-Academy

Intellectual Property Basis for SME's

Author: Danielle Carvey

Intellectual property is vital to business growth and brand recognition, but it can be difficult to know where to begin, especially for small and medium sized enterprises (SME's). A 2019 study by the EUIPO and EPO demonstrated that SME's which filed for at least one IP right were 21% more likely to experience subsequent growth and up to 33% if bundles of IP rights were filed, i.e. a combination of patents, trademarks and designs. So how does an SME approach this?

One of the most important elements in separating a new business from its competitors is the branding. Creating a brand with a slogan or logo that draws people in and is trusted is a lot of the fight toward becoming a reputable SME which will be chosen over its competitors. It is also crucial for SME's to obtain trademark registration to protect them against unfair competition, preventing others from utilising a similar or identical mark for their own gain, misleading or confusing consumers by mimicking another brand’s trademark, or wrongfully benefiting from another company's good reputation.

With a large number of SME's constituting tech businesses, patents and utility models can be essential in protecting advancing technology which can catapult their success. Approximately 18% of all patent filings from Europe submitted to the EPO in 2020 were made by SME's or individuals, showing that although the majority are from business giants, smaller companies are joining the trend. However, due to globalization, patent protection in multiple jurisdictions is becoming more and more commercially necessary, which can amount to hefty filing and enforcement fees that smaller businesses may not be able to pay. On the flip side, a niche innovation could be worth spending a substantial amount in the beginning, in order to reap the benefits of ownership, lucrative licensing and the propensity to garner a substantive patent portfolio in the future. Therefore, evaluating which innovations to prioritise for protection may be a middle ground for SME's which won't incur as heavy a cost as patenting all of the business’s inventions, and might pay off in the long run.

A unique design can set a brand apart from its competitors in a bold way if done correctly. If, for example, a chair is designed in a more ergonomic way than its competitors, consumers are undoubtedly more likely to opt for the better design. To protect a design like this from being imitated by other companies, an industrial design right can prove effective for SME's, as they can present as a consumer-facing piece of IP which can substantially contribute to the reputation of the business and their products.

If you are interested in knowing more about IP for SME's, feel free to contact us.

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Intellectual property is a pinnacle of modern society, with a multitude of popular cultures being governed by undercurrents of IP without many realising. From chart music to toy brands and beyond, there is much to explore when it comes to some of the most well-known and non-traditional intellectual property, and we have explored some of the finest examples.

Trademarks are one of the most valuable types of IP used by some of the biggest powerhouses in all industries, and whilst many marks are more traditional, some businesses have chosen to go down a more atypical route, resulting in some of the most well-known and recognisable IP.

These include the toy company Hasbro, which took a chance on, and successfully registered, the iconic and widely recognised Play-Doh scent on May 15, 2018 with the United States Patent and Trademark Office (USPTO).

Whilst not unheard of, scent marks are among one of the lesser obtained trademark types, due to the more stringent requirements which need to be met in order to obtain scent mark protection. In the US for example, it is outlined that the "amount of evidence required to establish that a scent or fragrance functions as a mark is substantial".

Such evidence is required to demonstrate that the scent itself has acquired distinctiveness. Further, the scent of the item should not be an important practical function, rather, it should merely assist as an identifying element used to distinguish the brand to which it relates.

Play-Doh managed to achieve this feat, with the scent described on the trademark register as a "sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough." Although a vast majority may not pick up on the particulars of the fragrance by simply smelling it, the nostalgic scent is distinctive enough on the whole to be recognisable to many as the smell which belongs to Play-Doh. The scent has also been released as a perfume, which would no doubt be a niche and memorable gift to anyone with fond memories of using Play-Doh.

Unlike trademark protection, copyright can prove more nuanced when it comes to lesser traditional forms of creative work. Commonly, people would consider paintings or literary works as typical copyright works, but tattoo artist S. Victor Whitmill made headlines with regards to his iconic tattoo design made especially for the boxing legend Mike Tyson. The tattoo, which was initially created in 2003 by Mr. Whitmill, created a stir when seen in the hit film "The Hangover II". The film depicted a character played by Ed Helms sporting the tattoo on his face, duplicating the design created for Tyson.

A mere few weeks prior to the release of the film, which ended up becoming the highest grossing comedy film to date, Whitmill instigated copyright infringement proceedings against Warner Brothers over the use of the tattoo design. Whilst the initially sought after preliminary injunction was denied, the Judge noted there was merit to the case and the lawsuit ensued. The case was settled with the terms kept under lock and key, however, Warner Brothers acknowledged a few weeks before a conclusion was reached that they may have considered digitally altering the tattoo so as to eliminate potential infringement.

The unusual case not only sheds light on the complexities of intellectual property protection in a fast evolving digital landscape, but on the intricacies of copyright as a whole. Whilst other works such as art pieces or literary novels have a plethora of legal precedent surrounding their protection, tattoos are more unique in terms of copyright protection.

Copyright law in the UK allows the designer of the tattoo to enjoy the IP rights to the piece, entitling them to any royalties should an image of the tattoo be reproduced. This means that even though the tattoo may be unique to you, but a tattoo artist designed it, the copyright will lay with the artist. On the other hand, if a person creates a tattoo design themselves, the copyright will belong to them. These lines of copyright ownership can become blurred in cases where an artist is commissioned, for example, to create a custom design using your ideas, at which point joint ownership may be considered.

Whilst protecting more obscure or unusual intellectual property possesses its risks and requires much thought, trademarks such as Play-Doh and copyright battles such as Whitmill's tattoo design demonstrate that risks can pave the way to great reward when it comes to IP. If you would like advice on the protection of your intellectual property, please contact us.

Geographical Indications (GIs) are distinctive names or signs used on products that originate from a specific geographical location and possess qualities, a reputation, or characteristics essentially linked to that place of origin. These protections apply to a wide range of products, including agricultural goods, foodstuffs, wines, and spirits.

Why GIs Matter

The main purpose of GI protection is to prevent the misuse or imitation of registered names and to ensure consumers receive authentic products. Only producers within the designated region who follow established production standards are permitted to use the protected GI name. A classic example is Champagne—only sparkling wine produced in France’s Champagne region using approved methods can be sold under this name.

Forms of Protection

Geographical Indications can be protected through various legal mechanisms, including:

· Sui generis (special) systems, where GIs are protected independently from other IP rights. These typically do not have a fixed validity period.

· Collective or certification trademarks, commonly used in countries where there is no separate GI law. These are usually valid for renewable 10-year periods.

· Unfair competition laws, which can prevent misleading use of regional names.

· EU quality schemes, which offer robust protection across EU member states.

Appellations of Origin (AO)

An Appellation of Origin is a special category of GI that requires a stronger link between the product and its place of origin. The product’s quality or characteristics must stem essentially or exclusively from the geographical environment, including natural and human factors. For instance, Champagne has also been registered as an AO under the Lisbon Agreement since 1967.

How to Register a GI

The process for registering a GI varies depending on the country and the desired scope of protection. However, here are the general steps:

1. National Registration (Recommended First Step)

· Identify the competent authority: In most countries, a government IP office or agricultural body handles GI registrations.

· Prepare a GI specification: This includes the product name, production method, geographical boundaries, and the characteristics that link the product to its region.

· Provide evidence of reputation or origin: This might include historical records, quality control procedures, or testimonials.

· Submit the application: National systems may vary, and some jurisdictions require formal examination or opposition periods.

2. International Registration via the Lisbon System

Once a GI is protected in its country of origin, producers can apply for international protection under the Lisbon System, administered by the World Intellectual Property Organization (WIPO).

· One application can secure recognition in all Lisbon System member states, which can simplify cross-border protection.

· The Lisbon System now covers both Appellations of Origin and broader Geographical Indications under the Geneva Act.

Geographical Indications offer powerful protection for products that are tightly linked to their origins. From legal protection to commercial branding and consumer trust, GIs play a key role in preserving local heritage and promoting economic value.

If you are a producer, association, or legal representative interested in protecting a product with unique geographical characteristics, understanding the proper registration route—national or international—is crucial.

Intellectual property, from trademarked brand logos to patented inventions, is often the result of a collaborative effort between individuals, businesses, academic institutions and the like. With multiple contributors comes the potential need of filing for protection for more than one applicant, but whilst co-ownership of IP can yield its rewards, it is accompanied by risks requiring several points of consideration.

The particular legal nuances of joint ownership of IP vary from country to country, and it is helpful for prospective co-owners to consider the jurisdictional laws prior to obtaining IP protection collaboratively.

In relation to UK patents, for example, patentees are entitled to equal, undivided shares in the patent, regardless of the individual contribution overall. Furthermore, permission by all co-owners of a patent must be provided in order for one to license the patent to a third party, however, this may not be the case in other territories.

Another interesting point for consideration is observed in the European Patent Office (EPO) rules. As per the rules, it is possible to appoint a single "common representative" for dealing with all matters that may arise during the application prosecution, who represents all co-applicants referenced in a patent application before the EPO. The first named applicant in the filing request will be considered as the common representative, unless any other representative has otherwise been indicated in the application materials. As the EPO does not need to seek approval from the other co-applicants in relation to the majority of requests from the common representative, an agreement between all applicants is likely to be beneficial in mitigating the risk of conflict between co-applicants throughout the prosecution and maintenance of a patent.

Regarding trademarks, in some countries, the national legislation does not officially provide for joint ownership of a trademark, with the exception of collective marks, a contentious point which has been the subject of court proceedings in recent years in Russia for example. As such, due consideration should be given to the legislation regarding joint ownership of a mark in the respective territories applicants wish to register.

Similarly to the laws governing other types of IP, the legislation in relation to European Community Designs specifies that if a design was developed by an employee in the execution of their duties or under the instruction of the employer, the design shall be owned by the employer in full unless otherwise specified. In such instances, the employee will be unable to be considered as a co-owner, or to jointly own the design.

Co-ownership, like many other aspects of obtaining IP protection, requires much thought and consideration of possible issues which may pay off in the long run, but pose as contentious points of risk.

The aforementioned risks may be mitigated by the drawing up and adherence to agreements set forth by all co-owners of an IP right. These agreements can allow for a foundation on which decisions as to the right will be made, for example, pre agreed decisions on the prosecution of a patent, licensing, disputes etc. Applicants may also consider alternative options, such as licensing agreements in relation to patents for example.

A copyright is a legal right protecting an original work created by an individual and fixed in a tangible medium. Similarly to other types of IP rights, copyrights prevent others from using original work without prior permission from the owner. This can include the prevention of other people copying or adapting your work, distributing, renting, or putting copies of your work online, or performing your work in public. However, one of the most significant differences of copyrights from other types of IP is that they are granted automatically, as opposed to needing to be applied for and examined prior to the granting of protective rights by a specific patent office. A copyright is therefore assumed to be in place from the moment one produces original literary, dramatic, musical and artistic work, including photography, as well as non-literary written work such as software, web content or databases. The layout of published versions of written, dramatic or musical works, recordings of film, television, sound, music, or broadcasts are also subject to copyright protection.

The validity period of copyrights can vary for each type of work in different jurisdictions, and can be governed in other countries by national laws based on minimal standards provided in international agreements such as the Berne Convention.

In the UK, written, dramatic, musical and artistic works, including photography, are typically protected by copyright for 70 years following the year of the author's death, films for 70 years from the death of the director, screenplay, author and composer, whichever occurs last, and sound and music recordings for 70 years from the first date of publication. Broadcasts are protected for a lesser term of 50 years from the first broadcast, whilst a layout of published versions of written, dramatic or musical works is valid for 25 years from the first publication date.

Whilst a copyright is automatically available for the aforementioned works, the onus is on the owner of the right to protect it against infringement. In this regard, although some use of a copyright is allowed under certain circumstances, such as fair use, the majority of third parties who wish to use a work for a commercial purpose must first obtain a permission or license, a contractual agreement between the owner and the user of the right. A licence can be used to control the ways in which the work is used, as well as the length of time it can be used for. Other contractual agreements also come into play when it comes to things like negotiations of the sale or transfer of rights via assignment, or the organisation of economic rights, for example.

Certain parties such as schools, archives, public administration or libraries may be able to use the work without permission from the copyright owner, and therefore it is important to verify if the use you wish to halt qualifies as infringement before taking action.

The above covers the basics of copyright in the UK, however, the law on copyright in other countries may differ. For more information on copyright in your jurisdiction, please contact us.

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Intellectual Property Basis for SME's

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