KEY POINTS:
What is the best way to protect your intellectual property assets?
In business, you will want to maximise your ability to exploit your intellectual property assets and deter competitors from accessing or using them. The best available method of protection will depend on the nature of the intellectual property, but may include one or more of the following:
* Patents: A monopoly granted in respect of an invention.
* Trade marks: Protection for a sign that identifies the goods or services of a business and distinguishes them from those of others.
* Copyright: Protection which arises automatically for original literary, artistic or musical works.
* Registered designs: A monopoly granted in the novel design of an article.
* Confidential information: Protection of valuable information which is unknown to competitors and the general public.
What's the difference between those various options, and which one is best?
Here are some options for registering your rights in inventions (via patents) and brands (via trade mark registration). A patent is a monopoly right granted by the state that provides the owner with the exclusive use of his or her invention for up to 20 years (provided renewal fees are paid). It is a valuable business asset that can be bought, sold, transferred or licensed like any other property.
While there is no legal requirement to patent an invention before it is used, patent protection does provide valuable benefits:
* The owner has exclusive rights to make, use, exercise, license and sell the invention;
* The owner can take legal action against anyone who uses the invention without consent;
* Competitors will be deterred or discouraged from infringing the patent;
* Patent protection can be a key factor in attracting investment into your business.
* To qualify for a patent, an invention must:
* Be industrially applicable;
* Contain an inventive element or be "non-obvious";
* Be new or novel.
The invention must never have been made public in New Zealand. It is therefore crucial to keep your invention confidential until you have applied for patent protection. So, presenting your new product on The Dragons' Den may well stifle your ability to patent your invention.
So what exactly is a trademark then? And in what circumstances would you use it?
A trade mark is a sign or symbol that distinguishes the goods or services of one person from those of another.
Although trade marks can be registered or unregistered, registration provides certain benefits to the owner. A trade mark registration:
* Is evidence that you own the trade mark;
* Can be enforced against third parties without needing to prove goodwill or reputation in the mark;
* Allows you to use the symbol exclusively;Gives you the exclusive right to use the mark in New Zealand for the goods and services for which the mark is registered;
* Can last indefinitely, provided that renewal fees are paid (every 10 years, in New Zealand).
* Is an asset that can be licensed or sold.
Some trade marks are considered non-distinctive and cannot be registered. As a general indication, the following types of trade marks are usually considered unregistrable:
* Marks that are the same as or confusingly similar to a pre-existing trade mark which covers the same or similar goods or services;
* Marks that mislead, confuse or are offensive;
* Generic names, for example, Paper for paper products;
* Laudatory words, for example, "great" or "the best";
* Words that describe a characteristic or function of the goods or services, for example, Swift for delivery services;
]* Geographic locations that are associated with the goods or services, for example, Martinborough or Marlborough for wine.
Invented or arbitrary words can become strong distinctive marks with a well defined monopoly. Xerox for photocopiers and Kodak for photographic equipment are examples of invented words which have become well-known trade marks. Strong arbitrary marks (where the mark is unrelated to the relevant goods or services) include Apple, which is synonymous with computers and Tiger for beer.
Before using or applying to register your new mark, it is sensible to check that other businesses do not have prior conflicting rights in the same (or a closely similar) mark which could impede your proposed use and registration.
An intellectual property lawyer will be able to provide you with guidance on the different searching options available to you.
