Domain Names
A domain is the address for your website and its resulting pages, each requires a unique identifying url and this is provided by a unique domain name and the subsequent page titles. Top level domains (TLDs) such as .com, .gov or .org are highly sought after so the sooner you can secure your domain the better. However it should be carefully considered as your URL can become part of your overall brand and trademark of your organisation. With so much being done online now and more in the future this fork-in-the-road decision should be well researched, widely consulted and carefully executed then subsequently protected.
When conducting searches to establish a trademark the availability of the domain name with a desired or commanding TLD should be highly considered and even be thought of as essential before committing to a company name – to prevent conflict later when the website is to be established. This also extends to social media handles. The whole focus should be to future proof your trademark and online operations by starting with the potential end in mind. A graphic designer such as myself can consult with you and help organisations to navigate this tentative time when starting or pivoting a business.
For trademarking your domain you should decide if you are going to display the TLD such as .com in the name, if not then register the name without the TLD – but a decision should be made. Please note that just because you own a specific domain with a given TLD, this doesn’t permit you from stopping all the other TLDs or similar name types. The nature of trademark registration it is usually specific for a designated sector. It is a good practice to apply to the Trade Mark Clearing House to apply for a domain name before it is generally available.
Domains are generally registered for a year or two years in the first year, then is renewed annually. A persons details are required for domain registration and if the domain isn’t renewed then it offered back to the marketplace – and you can lose the control and the use of the domain; however domains can be bought for up to 10 years and set to renew automatically as long as payment paths are robust. You can transfer domain names to another person indicating them as the registrar.
Should a domain be lost, cyber squatters are being reduced and Nominet and WIPO do review historical use should a complaint be made if a domain is stolen or lost – but all precautions should be taken so this doesn’t easily occur. Using the services of the previously mentioned trade mark clearing house has additional benefits to protecting your domain as a trademark against competing parties and even similar businesses.
Get in touch with me to benefit from my domain management system and enjoy the peace of mind I offer to clients to make the process of having and managing a website simple and robust.
Copyright
Copyright, Designs and Patent Act 1988 is the UK law for original: literary, musical, sound recording, artistic works, broadcasts and arrangement of letters as editorial works. There is no copyright protection for ideas, only the expression of those ideas. Copyright is generated when the author creates the work, as recognised in UK law, and it is good practice to keep records of when original works are brought into being, that could be required in the future. This matters as it might be required to prove the originality and date of creation of the work. There are various legal cases that help to classify original works, but generally they are considered to require a reasonable level of skill, judgement and individual effort – use of a single word or a sentence isn’t enough, but a clever newspaper headline maybe considered suitable for copyright protection. This matters when it comes to defending copyright and originality from infringements.
The “author” of the work typically owns the work, but this is mudded when the work is commissioned, and this should be controlled by a contract and a final sign-off sheet that is called an “all rights buyout”. The duration of copyright depends greatly on the nature of the work. For example sound recordings copyright lasts for 50 years from the end of the year in that the recording was completed. For film, copyright lasts for 70 years from the end of the calendar year in which the “author” dies. Copyright for editorial works is 25 years from the end of the year in which it was first published.
The author has the copyright ownership and can issue rights to it. This exclusive right helps to strongly defend any infringements that could be direct copying, substantial copying of the work, renting or lending the work. The defendant doesn’t need knowledge or intention to be liable for infringement. There is also secondary infringement where the defendant has certain specific knowledge, which sees the importing or possessing the work, thus causing the infringement. This could become increasingly relevant in the future as AI mines the internet to provides its answers.
The four types of infringement defences are:
Temporary copies, which are the incurred infringements when work is copied for allowing transmission to happen in a lawful process with no economic implications.
Fair dealing is permitted in the following circumstances: research or non-commercial use plus private study, criticism or review, the reporting of current events (except for photographs), quotations are valid as long as the work was already made public and final for use in parody, caricatures and pastiches.
However the legal definition of “fair dealing” isn’t defined but commercial competition, the work already being in the public domain and its importance are all considered relevant. Defences according to Marks&Clerk require acknowledgment to be given indicating the copyright or if the work has been published anonymously.
Incidental inclusion, is pretty clear it covers accidental use.
Databases for a licensed user is allowed within the rights given by the rules of the system.
Remedies for Infringement can see civil action by the owner of the copyright and this depends on the legal status of the copyright and who and how it can be used – it would be best to seek legal advice on this matter.
Criminal Proceedings can arise from copyrighted work being used with obvious commercial and financial gains and can result in fines or imprisonment.
Moral rights are important as they go with copyright and apply to literary, film, musical and art works; these are personal and can be waived by not being assigned to the listed works. The four types of of moral rights are: the right to be identified as the author, the to object to derogatory treatment of the work, the right not to suffer false attribution of the work and for, films and photography, the right to privacy. These last for the life of the author plus 70 years. However it should be mentioned that moral rights don’t apply to work created within employment.
Designs
Design is the appearance of a product instead of how the product was actually made, this covers the whole appearance, a part of it or a component of the appearance. The term design can be used to cover icons, typefaces and logos plus lots more aspects of intellectual property. Protecting a “design” in the UK and EU depends in whether it is a registered design or an unregistered design as each enjoys a different scope of protection. With registered designs the rights are held for a period of up to 25 years with the right to exclude others from using the design for commercial purposes. Unregistered designs enjoy an innate protection, not requiring government application(s) and rights can only be exerted when an infringement has occurred; should this occur who owns the design, it not being expired and proving the design has actually been copied all need to be determined, compared to a registered design that enjoys more wider protections.
A registered design would define the scope of the protection and be recorded with the UK Intellectual Property Office or at the European Union Intellectual Property Office, with the latter being effective in all member states. The design to be protected doesn’t need to be extreme or overly designed to be covered as street lamps, simple user interface and icons can all be registered and protected. A single new, unique and aspect of individual character aspect of a product can be protected in several ways and the sample design feature can be protected across difference products. The nature of an individual character can be clear or nuanced, but the more the design stands out from the related others, then the easier the design trait is easier to recognise, defend and protect – then the better legally. Design registrations are bound by territorial locations so it should be remembered that UK registration isn’t global, and a thorough registration plan should be implemented in all desire locations. However a good start for global protection is the World Intellectual Property Organization, and care should be taken to make sure the design complies to all covered jurisdictions. This central registration also helps with renewals, change of addresses etc. With Brexit, UK registered designs, it is not clear whether the UK leaving the UK will affect protection. The best practice would be to have specific EU protection along with your desired global territories.
Patents
A patent is the right to prevent others from exploiting an invention in a specific jurisdiction providing a form of protection or monopoly. A patentable invention needs to be new and can be a process or product that isn’t a clear development of a current or known item or process. The patent gives the owner the ability to stop others making, using, importing or disposing of the patented item or process. A patent can be sold, licensed or borrowed against. It should be remembered that a single patent doesn’t give the owner to immediately use their patented item, as it may relay on other patents that are not owned but need to be legally recognised before moving forward. And related to the designs section the patent is required to be registered and legal defended in the desired or relevant jurisdiction.
You should only register a patent if it is commercially advantageous to do so also there should be consideration to competitor use before, during and after a filing, should the patent application be unsuccessful but still public. It is essential to file for a desired patent before any non-confidential release of it or related information, as disclosure will make it no longer new and thus not patentable. With confidentiality intact a patent can be obtained by filling an application with a patent office, in the UK this is the UK Intellectual Property office, as with the previous “designs” section. The application should provide a full description and provide visuals of the invention plus claims that are used to define the invention absolutely and are used by the patent office for detailed reviews. Please don’t overlook this aspect of a patent as the wording may well become critical should the patent be contested. Jurisdictions require a fee to be paid to perform a patent search, helping to inform you should you proceed with the application by indicating if there is another competing invention already recognised, this can also allow any description to be amended. Should the application be granted the content will be published giving some rights against infringement, with complete enforcement only able with a full award. This process is call prosecution, and can take several months to several years – granted patents last for twenty years if the fees are all paid.
Applying for intellectual protection in different jurisdictions is aided by countries belonging to international conventions for patent protection. Care should be taken that a patent granted in one country is respected in another that may have different or higher standards for the application of the invention. For European patents the European Patent Office (EPO) is the place too to obtain protection across around forty countries and protected by national courts. The EPO doesn’t offer a one-stop-shop for patent application for all EU jurisdictions, but a central point of contact is the plan. This can work to keep examinations and fees lower. However current EPO patent applications require around 18 months all going well also requires translation in to French and German with the fees paid. Validated patents in desired EPO countries, some countries may require the full text to be published while being translated into the local language with fees paid locally and often with a patent lawyer involved.
Trade Marks & Brexit
The UK gave notice to the EU of its intention to leave on the 29th March 2017 which will and has obvious impact on the legal framework relating to legal protections of intellectual property. The Paris Convention and TRIPS Agreement are outside of the EU so are not changed by Brexit – as would the the relation between the European Patent Office that is also outside the remit of the EU. The four UK trademark protections are: UK national trade marks, EU trade marks, International registrations designating the UK and International registration designating the EU – these will be reviewed in turn.
UK national trade marks
These should be the same as before, but domestic law is influenced by EU law, and EU may well be incorporated. UK will still be a Paris Convention member which is a worldwide body recognising intellectual property. As a result UK applications should remain to be recognised by this. Interestingly UK courts will no longer be bound by EU Court of Justice rulings so this could be or not be an area of change, but the EU law may still to be considered.
EU trade marks (EUTMs)
EUTMs are registered within the EU Intellectual Property Office and recognised by all member states. With Brexit it is considered that holders of EUTMs in the UK, who enjoy this commercial aspect shouldn’t lose its protection – but the politics are to be established. Up-to-date investigation should be sought on the status of the legal matter.
International registrations (IRs)
IRs are managed by the Madrid Protocol a large treaty covering 98 contracting parties and government organisations also the UK and EU. These should unaffected by Brexit, except for UK based home marks (an application or registration in their designated country of key application or use) that enjoy EU protection, but again specific and current legal advice should be sought.
EU trade marks – non-use
EUTM needs to have use requirements five years subsequent to its registration – genuine use needs to be demonstrated in the form it was registered, for the goods or services for which it was intended and in the EU. Brexit matters if owners had been making use of their EUTM(s) in the UK and it lapses, the future would then be uncertain. The two ways forward would be to review their commercial strategy in the EU and move their operations to suit the requirements of local application and renewal in the EU or the UK for its protection and avoiding competing interests.
Disclaimer: This article is a guide to how to protect original thinking and unique work, professional legal advice and related services should be sought to make sure you are on the right side of the law and the most up-to-date regulations for your specific item of business. Stuart Docherty takes no responsibility of the action or non-action arising from any part of this article, it is for your information only.
