For businesses of all sizes, one question often emerges during business strategy planning: what are the types of Intellectual Property rights we need to protect?
Intellectual property is a category of property that includes intangible creations of the human intellect, and primarily encompasses copyrights, patents, and trademarks. It also includes other types of rights, such as trade secrets, publicity rights, moral rights, and rights against unfair competition.
The main purpose of intellectual property law is to encourage the creation of a large variety of intellectual goods. To achieve this, intellectual Property law gives you a personal right to exclude others from stealing or using the intangible assets of your business, usually for a limited period of time. By obtaining an Intellectual Property right, you can also exclude others from selling, copying, or using the protected property without permission. This gives economic incentive for you to create new things, because it allows you to profit from the information and intellectual goods you create.
There are 4 types of Intellectual Property rights that cover different types of assets - trademark, copyright, patent and trade secret:
(A) Trademark protects the image and reputation of the trademark owner. This is most common for a business that contains a logo or signature characteristic on their product.
(B) Copyright protects authorial work (e.g. artwork) and derivative work (e.g. broadcast). This is commonly obtained by business that creates documents (e.g. DocPro), artworks, or movies.
(C) Patent (including Design Patent) protects inventions and industrial property. This is mostly obtained by technology-driven and R&D focused companies.
(D) Trade Secret also protects industrial property, but it offers more secrecy in comparison to patent. A trade secret is often referred to as confidential information in some jurisdictions.
|Trademark||Patent / Design||Copyright||Trade Secret|
|Subject Matter Normally Protected||Signs that distinguish goods or services of one trader from those of others||Invention, industrial product, designs, fabric designs||Books, software, plays, music, paintings, sculpture, photographs, films, sound recordings, broadcasts, cable programmes, performances||Formula, practice, process, design, instrument, pattern, commercial method, or compilation of information not generally known or reasonably ascertainable.|
|Whether Registration is required for effective protection||Yes||Yes||No||No|
This guide on Intellectual Property law is for startups and SMEs to address questions that often arise when considering Intellectual Property law protection. With that in mind, this entry is divided into four sections: (A) Trademark, (B) Copyright, (C) Patent, and (D) Trade secret. Each section provides a brief description of the meaning of the Intellectual Property rights and answers common issues that arise for both SMEs and start-ups relating to Intellectual Property issues.
A trademark is a recognisable sign, design, or expression which identifies products or services of a particular source from those of others. It can be words, indications, decisions, letters, characters, numbers, colours, sounds, smells or shapes, located on a package, a label, a voucher, or on the product itself. A trademark is often used by a company to distinguish itself from competitors and is often displayed on company building.
By trademarking a feature, one can then stop competitors from using a similar logo or design. Trademarks may be registered or unregistered. The owner of a registered trademark has the exclusive right to use the mark on the goods and/or the services for which the mark was registered. Unregistered trademarks may be protected by the common law action of passing off. Passing off claim requires proof of misrepresentation made and is usually a more difficult action to bring than an action for infringement of a registered trademark.
In general, one can trademark a name as long as the name is used for commercial purposes. Famous personalities such as Benedict Cumberbatch or Amy Winehouse tend to register their name as a trademark because their name is treated as part of the business.
However, a name cannot be registered if it is likely to be confused with other registered trademarks. For instance, one might not trademark the name ‘Benedict Cucumber’ because consumers might confuse this name with ‘Benedict Cumberbatch’.
Registered trademarks are protected by law, and unregistered trademarks are protected by common law. Given that statutory law offers greater protection over your Intellectual Property rights, it is in general better to register one’s trademark. Nonetheless, whether it is necessary to register one’s logo depends on the nature of your name, and the stage of your business. Trademark registration can be expensive and time consuming if you are filing in multiple countries (in particular if there is an objection and you are required to file an appeal). That is why you would want to ensure that it is a trademark that you would like to go with in the long run before you start the trademark registration process.
For personal names used for commercial purposes, it might not be registrable because personal names could be ‘descriptive’. It is best to register your name as a trademark once it has developed a ‘secondary meaning’. Secondary meaning means the name is so prominent that when people hear it they automatically associate the name with the goods or services you provide. For instance, Christian Dior or Louis Vuitton are personal names that have developed secondary meaning.
Moreover, you own the trademark as soon a name or a logo is used for business purposes. But to protect the trademark, one requires trademark registrations. By registering the trademark you can then enforce your exclusive right and excludes others from using a similar name or logo.
Trademark registration is essential for a company that is planning to expand its business in new markets, as it is strategically better to register the trademark to avoid the company using a similar name or logo to confuse consumers. Even for a small business with no intention of expanding into new markets, it is better to have its trademark registered as a form of protection against potential future claims by other companies of trademark infringements.
There are four key steps: (i) identify the countries / jurisdictions for registration, (ii) ensuring the trademark is registrable, (iii) ensuring there is no previously similar trademark, (iv) actual registration:
It is strongly recommended you register your trademark in the jurisdictions of use. Worldwide registration is an expensive process so you should identify such jurisdictions and only register where necessary. Each jurisdiction's trademark registration system is separate from the other trademark systems elsewhere in the world. In order to obtain protection as registered trademarks in a jurisdiction, trademarks must be registered in each jurisdiction of use.
Under the Paris Convention, applicants for trademarks in a Convention jurisdiction can enjoy a right of priority in respect of their corresponding applications in a Paris Convention country or WTO member. If the owner is in a jurisdiction that is a party to the Madrid protocol, one can go through the Madrid system to obtain a bundle of trademark registrations in separate jurisdictions. Registration through the Madrid system does not create a unified registration; rather, it creates a bundle of national rights through an international registration able to be administered centrally.
To register a trademark, one needs to first assure the trademark is distinctive and graphically representable.
The trademark cannot be generic or descriptive, i.e. describing its intended purpose function. For instance, one cannot trademark ‘SOAP’ or ‘cleaning soap’ for a soap product. To be distinctive, there also needs to be an element of suggestiveness along with fanciful and arbitrary terms to be registrable. The graphical representation also needs to be clear and precise.
An example of a successful trademark is playdough. Hasbro has trademarked the smell of playdough with the description being ‘sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough.’
In certain jurisdictions, you will have to provide proof of use in that jurisdiction (e.g. the U.S.). In other countries, it is just on a first-come, first-serve basis, regardless of whether you are actually using it in the jurisdiction (e.g. China).
To avoid potential trademark infringement lawsuit, it is important to check if other previous registered trademark is similar/identical to your design and is currently used in similar/identical businesses. There are 45 trademark classes under the International Classification of Goods and Services for the Purposes of the Registration of Marks established by the Nice Agreement (the "Nice Classification”) and you should check that there is no similar mark within the same class you would like to register for. To see the classes under the Nice Classification, please refer to:
You can conduct an initial search in one of the most important and comprehensive databases via WIPO: https://www.wipo.int/trademarks/en/
Alternatively, please consult your local Intellectual Property Department for a trademark registration record. Below is a directory of Trademark Registry in some of the most popular common law jurisdictions:
The precise registration procedure varies between countries, but it is common to register one’s trademark in the Trademark Registry under the Intellectual Property Department of their respective country.
For large scale business, it might be useful to register their trademark internationally. The international trademark system is known as the Madrid Protocol. Administered by the World Intellectual Property Organization (WIPO), the Madrid system allows you to protect your trademark in several countries by applying directly under a member country. For instance, HK is a member of the WIPO, and therefore you can register your trademark in Hong Kong then file registration in other designated countries via the Madrid system.
For a detailed trademark registration guide, please look at our other entry on trademark registration for more information.
Trademark generally lasts for 10 years and can be renewed every 10 years. There is no limitation as to how many times a trademark can be renewed and as such a trademark right can potentially last indefinitely.
A copyright subsists in a work that is original and is recorded in writing, literary, or artistically (e.g. drawing or audio recording). The person with copyright will have the exclusive right to copy and exploit their work, and to prevent others from copying their work without permission.
All rights reserved (normally accompanied by the logo ©) is an indication of the creator reserving all IP rights provided by the law. By serving legal notice it can prevent the infringer from claiming to be innocent (I.e. do not know the work is copyrighted) and therefore avoid liability. One should only use another’s work with the permission of the copyright owner.
However, there are four exemptions for copyright: fair dealing, incidental inclusion, persons with a disability, and education. If your action falls into one of the exemptions, then it is possible for one to use the copyrighted work without any permission.
Fair dealing means copying work for the permitted purpose. The usage of the work should be fair and must not prejudice the interest of the copyright owner. If the dealing involves copying an excessive part of a work, it is not likely to be regarded as fair dealing.
Whether a dealing can be regarded as 'fair dealings' depends on various factors including the nature of the work, the proportion of the work used, and the effect of the usage of such work on the potential market.
‘Works in the public domain’ includes works with expired copyright period (Copyright expires 50 years after the death of the creator) or works that failed to meet the requirement for copyright protection. These works can be freely used without the worry of copyright infringement.
However, a freely available work (e.g. artwork available on the internet) is not necessarily 'work in the public domain'. A freely available work only means that the public is given free access to the work, but not the right to copy or issue copies of the freely available work.
Yes, you can copyright a logo.
In general, copyright exists when a logo is created. However, the question lies in why do you want to seek protection over your logo. For instance, If you want to obtain an IP right protection over your logo because you do not want other competitors to use a similar design and cause consumer confusion, then it would be more appropriate to trademark the logo rather than copyright it (see above Trademark session).
However, if you want to protect your logo because it is an original artwork, then you might wish to copyright your logo.
In most common law jurisdictions there is no need to register a copyright. For instance, in Hong Kong and Singapore, as long as the work is original and recorded in a material form, copyright automatically arises without requirements for registration or other formalities. However, in countries such as the US or Canada, copyright requires registrations.
Patents protect inventions. By obtaining a patent, one will obtain an exclusionary right to exclude others from using or copying their invention. In addition to patents for invention, you can also obtain design patents for legal protection granted to the ornamental design of a functional item.
To obtain a patent, your invention must be susceptible of industrial application, new (i.e. never disclosed to the public), and involve an inventive step to be successfully registered. A patent requires the applicant to disclose the description and process of its invention. By obtaining a patent right, you can also gain profit by leveraging your patent portfolio and licensing your patent. The downside is that you will have to disclose details of your invention to the public.
Filing for a patent is no simple task and people would generally hire expensive patent attorneys to do so. If you are filing on your own, you should ensure that your invention is novel, non-obvious and useful, otherwise it might get thrown out by the patent office immediately. In addition, you should keep a record of your design and any modifications, as well as any prototypes produced. If you are able to back up your claim by documenting every step of the invention process with dates and witnesses, this would greatly assist your patent application.
Patent generally lasts for 20 years after the filing date.
Patent troll means a company that gains profit through patent litigation. These companies often enforce their patent rights against inventions through legal tactics such as frivolous litigation, a strategic lawsuit against public participation (SLAPP), or chilling effects.
To avoid a patent troll situation, you might want to ensure your patent is not similar to previously registered patents and is innovative enough.
Tade secrets inventions or creations protected without the need for any registration or formality. A trade secret can last for an unlimited period. The condition of trade secrets varies from countries, but according to Trade-Related Aspects of Intellectual Property Rights Agreements (TRIPS Agreement), the general standard is: (1) the info must be secret, (2) the secrecy must give commercial value, (3) and the trade secret must subject to reasonable steps by the holder to keep it secret (e.g. tried to secure the secret through confidentiality agreements).
A trade secret does not require one to expose the formula or manufacturing process of your invention and can, therefore, offer confidentiality.
Unlike a patent where you can sue an infringer, you cannot sue someone for using your trade secret. However, you can sue someone for inappropriately acquiring or leaking your trade secret. For instance, if Bill has a trade secreted neck massage method, he cannot sue Charles for using a similar massage method. Bill can only sue Charles if Charles improperly acquired the neck massage method (e.g. spying on Bill's massage process).
The best way is to protect your trade secrets is to keep your trade secrets in a secured location where it is not easily accessible by others. Coca Cola is renowned for keeping its secret formula in a vault at the World of Coca Cola in Atlanta. If you are keeping your trade secrets online, you should ensure that your server is secured to prevent hackers from stealing your information.
If you are disclosing your trade secrets to third parties, you should ensure that they sign a confidentiality agreement or a non-disclosure agreement ("NDA") before doing so. As to how long such confidentiality obligations would last is really a matter of contract. In theory, there is no time limit for trade secrets and it can last forever. As long as you can prove that the secret continues to have commercial value and bring you some economic benefits, and you have tried to keep this secret, it will always be kept as a trade secret.
DocPro has various forms of NDAs to choose from, the most common ones are as follow:
1. One-way Non Disclosure Agreement for Discussion of Business Relationship - this imposes a unilateral obligation of confidentiality on the party who receives the information:
2. Two-way Non Disclosure agreement for Discussion of Business Relationship - this imposes a mutual obligation of confidentiality on the parties who provide and receive information at the same time:
3. Three-way Non Disclosure agreement for discussion of Business Relationship - this imposes a mutual obligation of confidentiality on the parties who provide and receive information at the same time:
Having read this entry, you must have developed some basic idea on what IP rights you want to obtain for your business. With that in mind, DocPro also provides handy guidance for you to prepare documents for IP rights registration:
Whilst the information above would apply to most common law jurisdictions, you may wish to check with your local solicitor to see if any jurisdiction-specific rules would apply in your locality.
Please note that this is just a general summary of the position under common law and does not constitute legal advice. As the laws of each jurisdiction may be different, you may want to speak to your local lawyer.
Share this Post