In the first episode of the latest series of BBC's
Dragons' Den, only one pitch specifically mentioned
intellectual property (IP) protection. That pitch attracted
investment from three of the five Dragons and serves as a reminder
of how crucial IP is for businesses looking to secure investment.
Having an IP portfolio provides a straightforward signal to
potential investors that a company is more likely to have a
sustainable competitive advantage that will allow it to succeed in
Simply put, IP relates to the ownership and protection of ideas
and typically includes trade marks, patents, designs and copyright.
Businesses often say they want to "patent their logo" or
"copyright their company name". However, the terms trade
mark, patent and copyright are not interchangeable and it is
important to know the distinction between these various forms of
On a basic level, patents protect how things work, trade marks
protect what things are called and where things come from
(identifiers of origin), designs protect what things look like and
copyright protects original works of authorship, such as poetry,
novels, movies and songs.
Trade Mark and Patent Attorneys are specialist
lawyers, specifically qualified to advise on IP law in the UK and
further afield. They will offer strategic advice on the clearance,
registration, enforcement and exploitation of IP. In contrast, IP
Solicitors will usually be English or Scots
law-qualified, and will deal with validity and infringement
matters, litigation and alternative dispute resolution. They will
also advise on a range of commercial matters including the
licensing, transfer and securitisation of IP.
Trade marks are a key component of a brand. For many start-ups
and SMEs, a strong brand identity is essential in establishing a
market position and differentiating from competitors. Customers
recognise the names, logos, slogans, colours, shapes and even
sounds, and in turn choose to purchase your products or services
rather than those of your competitors. These powerful assets can be
protected by way of trade mark registrations – and preventing
other businesses from trading on your good name helps protect you
against unfair competition.
There exists a common misconception that you cannot protect a
word in common usage as a trade mark. We regularly hear this
discussed in the media when a celebrity applies to register song
lyrics or even their own name. The fact that English words, when
applied arbitrarily or suggestively, can function as trade marks
sometimes comes as a surprise. People question the free speech
impact and ask how someone can obtain exclusive rights to use an
everyday word or name. So long as the words are not too
descriptive, and are distinctive enough to differentiate one
business from another, common words can function as an identifier
of commercial origin. Registering those words as trade marks
confers a monopoly right on the owner to use those words in
relation to certain goods or services. APPLE is and will remain a
common name for fruit, so is unlikely to be registrable as a trade
mark for a greengrocer. However, the right to sell computers and
electronic devices with that name is restricted to Apple due to its
trade mark registrations. The word BREXIT has been used thousands
of times in the past few months in relation to politics, but since
October 2015 it has been registered as a trade mark in the UK in
relation to various goods and services including mobile phone
cases, mugs, shoes and advertising. For celebrities, trade mark
registrations are one of the means by which they can seek to
leverage catchphrases and names to diversify their revenue through
perfume, clothing and other goods.
Additionally, owning a trade mark registration in the UK does
not mean that a mark is protected worldwide. If overseas expansion
is part of your strategy, you should clarify that you are free to
use and register your trade mark in each market of interest. Trade
Mark Attorneys can carry out clearance searching to help determine
the risk of entering new markets and to advise on potential issues
in certain countries, eg possible connotations of a trade mark in
Finally, one of the most common misconceptions is that IP
protection is expensive. While there are costs involved, it is
certainly cheaper to get the right advice from the outset rather
than risk having to fight infringement action, and possibly incur
the costs of rebranding or recalling products later on. An Attorney
can help to tailor a filing strategy to your business so that your
budget is allocated effectively – and ensure you are in the
best shape for any dealings with dragons.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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