Your Brands Products and Services - Part 1 - What is Intellectual Property?

The term Intellectual Property covers a range of legal rights which protect creative effort and skill. In essence, what you are concerned with is safeguarding creations of the human mind and the goodwill and reputation of your business. Over time, five principal areas of Intellectual Property have evolved into which most rights can be boxed, although in certain circumstances a particular work may fall into more than one of these areas.

The areas are patents, copyright, trademarks and passing-off and confidential information. From a very early date the first three of these areas began to be regulated by statute law. The first proprietary protection of products was in respect of the assaying of silver and gold plate and then in relation to designs on linens, cottons, calicos and muslins during the 1780s. The introduction of printing resulted in copyright protection in literary works as far back as 1483 and even before that. Some of you may remember from primary school eduction the first Irish judgment in relation to copyright which I think related to one of St. Columbanus' books "To Every Cow its Calf, to every book its copy". So the law has evolved. Great progress was made during Victorian times with the industrial revolution and the statutes are again in the process of being renewed in the 1990s.

1. The Patents Act, 1992

A Patent protects new inventions. So, such things as the Zip fastener, the Tetrapak, all sort of pharmaceuticals, chemicals and agri-chemicals and their method of production can be protected by a Patent provided the invention is new, that is, that it does not form part of the state of the art (which is all information made available to the public whether in Ireland or elsewhere) in any way before the date of filing of the application.

The application for a Patent which is made either to the European Patent Office in Munich or to the Irish Patent Office in Merrion Square is as you can imagine almost always very technical in nature. As 9 times out of 10 the invention will either be scientific in nature or will involve some sort of engineering and thus it is essential that applications which include a detailed description of the invention are drafted by specialised Patent Agents.

There are two periods of protection for Patents, a short term Patent of 10 years and the longer term of 20 years. Generally for Irish Patents, application will be made for a 10 year Patent because that is cheaper and quicker, and then depending on how successful the product is, application will be made to turn the short term Patent into a 20 year one.

In addition, in relation to pharmaceuticals it is possible to extend the 20 year life of a Patent by a period which gives protection for 15 years from the date upon which it first received marketing approval for sale to the public. This extension is called a Supplementary Protection Certificate. It was introduced by the lobbying of the Pharmaceutical Industry because they claimed they were not properly remunerated as the period of protection was eaten away by the delays in obtaining a product authorisation.

While a Patent is in force the owner of it may prevent all third parties from using the invention without his consent. So he has a monopoly in the product which he manufactures using the invention.

2. Trade Marks

A trade mark is a mark used in relation to goods which identifies the goods as being connected with the business of the owner or user of the mark and this can be either by means of the name of the person or company using the goods or by means of a logo or indeed, both.

The Irish position is governed at present by the Trade Marks Act, 1963. We have just received before Christmas publication of a new Trade Marks Bill which will, we understand, permit registration of marks in respect of services. Thus in the future names of such businesses as Travel agencies, Banks and Building Societies, Accountants and Solicitors will be registerable. Registration of service marks has been available for nearly 10 years in the UK but I am afraid, in Ireland we lag behind somewhat. Having said that, applications for Service Marks are being accepted by the Trade Mark Office in anticipation of the new Act.

In addition we expect that the new Bill provides the facility to make application to the European Union Trade Marks Office which is in Alicante so that rather than having to make application in every European country in which you want protection you will, in a similar manner as with Patents, nominate the countries in which you want protection for your Trade Mark and make one application alone.

At present, in order to be registered a Trade Mark must be (a) distinctive, (b) not deceptive and (c) not descriptive.

The most perfect Trade Marks are invented words, for example ASPRO, BOVRIL, KODAK, LEGO. Initially all of these words meant nothing, but when used in relation to the goods they identify over the years have built such a reputation that they are synonymous with the goods they identify.

Those marks in themselves can be dangerous, as if their owners do not guard them carefully and prevent third parties from using them, the invented word can come to mean the item itself for example, BIRO, HOOVER.

Application to register a Trade Mark is made to the Trade Marks Office in Merrion Square, again generally by a Trade Mark Agent and at present it is taking approximately 10/12 months to obtain registration which lasts initially for a period of seven years and can be renewed indefinitely for subsequent periods of 14 years. Thus registration of a Trade Mark can continue forever and grants the owner of the mark the exclusive right to use it. It is therefore an extremely useful marketing tool.

3. Passing Off

Not all Trade Marks are registered. Over the years the Courts have granted rights to people in business preventing third parties from cashing in on the goodwill and reputation of the business and during the 19th century the term passing-off came to be used to describe this area of protection. It prohibits a person from selling goods or carrying on business under a name, mark, description or otherwise in such a manner as is likely to mislead the public or deceive or confuse them into believing that the merchandise or business is that belonging to another person. The leading Irish case which is a good example of the extent of passing-off is C & A Modes -v- C & A Waterford Limited (1976). The Waterford company was a furniture removal company and they used the C & A logo on their trucks. The Court granted C & A Modes an injunction stopping the Waterford company from using the logo because it agreed that they were using it to the detriment of the Plaintiff's goodwill in Ireland. This was so even though C & A Modes had no stores in this country. However the Court was shown that by advertising on British television which was shown here and in British newspapers and magazines which were circulating here and that Irish people well knew C & A in England it had acquired a reputation and a goodwill which it was entitled to protect and which would be adversely affected by the Waterford company.

4. Copyright and Industrial Designs

Copyright is all about preventing the copying of physical material. It is not concerned with the idea but rather with the reproduction of the form in which the idea is expressed.

So, there is copyright in every original literary (books, instruction leaflets etc), dramatic plays etc, musical (symphonies and advertising singles) or artistic work (painting and labels and covers of annual reports), in computer software, in sound recordings, in films and broadcasts, in works of architecture and in engineering drawings, to name just a few.

Since last July copyright with the exception of sound recordings and broadcasts, lasts for the life of the author of the work and 70 years after his death.

The 70 year period came into Irish law on the 1st July of this year. Up till then the period had been 50 years. The 70 year period was adopted by the European Union because after a great deal of discussion it was decided to adopt the maximum period for which copyright was protected in any European country. It was 70 years in Germany, Spain and Portugal although 50 years in most other countries.

The lengthening of this period has resulted in an odd situation arising in respect of works whose authors had died more than 50 years ago but less than 70 years ago on the 1st July 1995. Their copyright although it would have expired in Ireland has been revived and their heirs and assigns have overnight become entitled to further royalties for up to 20 years from the date of their death. Thus, for example James Joyce's copyright has been revived as has Beatrix Potter's in the literary world and the Irish artist Mainie Jellett.

The law of copyright is governed by the Copyright Acts, 1963 and 1987. The 1963 Act is a copy of an older UK Act and has, as far as Acts are concerned, been called "a classic example of how not to proceed". It is an absolute labyrinth of complication.

However the saving grace in relation to copyright is that there is no need for registration and not even any necessity to claim copyright although you will see lots of books and compact discs and computer software which have the copyright legend of a small (c) and a name identifying the owner.

If the author of the copyright is not a European Union national and the period of copyright protection in his county is shorter than the 70 year period then his protection in Ireland will be that shorter period. This is likely to cause some difficulty, certainly in relation to literary and artistic works as the period of copyright protection is still 50 years and the lifetime of the author in the USA.

Copyright is infringed by anyone who reproduces the work in any material form without the consent of the owner. There are certain exceptions in relation to this called the fair dealing provisions and it is not an infringement if someone uses your work for the purposes of research or private study or criticism or review.

Industrial Design is an area allied to copyright whereby the proprietor of any new or original design may apply for registration of that design. A design means "only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined which in the finished article, appeal to and are judged solely by the eye, but does not include any mode or principal of construction or anything which is in substance a mere mechanical device".

All of that really means that a design is something which makes the item appealing and pretty but has nothing to do with the function of the item.

There is a line of thinking which says that copyright will not subsist in designs which are registerable but which have not been registered and those of you who are in the manufacturing business and who apply designs to any of your products should take care to ensure that application is made to register them before you publish the design, otherwise it may be open to attack. Registration periods are an initial 5 years and then two further periods of 5 years making a total of 15 in all.

The Copyright Act, 1987 amends the Fair Dealing Section of the 1963 Act to in effect permit "reverse engineering" where the shape, configuration and pattern that appear on the work and are applied to the object are wholly and substantially functional and the object is one of a number in excess of fifty manufactured and made commercially available by the owner of the copyright in the artistic work in two dimensions, for example, a drawing. The section was brought in around the time that Hyster were being persuaded to set up in this country and is designed to prevent what was a monopoly in engineering drawings.

5. Trade Secrets and Confidential Information

The law in this area has grown largely over the last 20 years and being principally of an equitable nature has been quite difficult to pin down. In effect the Court is being asked to enforce a moral obligation. However where there exists in a relationship an obligation of confidence regarding the information which has been imparted to, for example, an employee and the information which was communicated was confidential then the person to whom it is given is under a duty to act in good faith. This means he must use the information for the purpose for which it was imparted to him and he cannot use it to the detriment of his employer. It is always prudent to have employees sign confidentiality clauses to help avoid arguments when they leave. Some Judges take a dim view of an employer's failure to obtain a confidentiality undertaking as they regard a commercial entity such as a company as being in a position to protect themselves.

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.