eSignature Lawfulness for Assignment of Intellectual Property in United Kingdom

How to eSign a document: eSignature lawfulness for Assignment of intellectual property in United Kingdom

hello ah good day everyone my name is Russ Glasgow from international trade counts though so um we are just waiting for other participants to log in it's 1:00 p.m. UK time so let's just wait for others to laughing so we will start probably out there five minutes thank you [Music] [Music] [Music] [Music] hello ok yes hi um we can so there's some attendees right now but just to inform you all we have 36 attendees for this webinar we can start now and we will just wait for others for other attendees to log in and then just to inform you this webinar is recorded so those 36 where you start are registrants we can just send the recording to them and the presentation as well but right now we can start the webinar and then we will while you are speaking we will just let other people to log in so so we can start now we have mr. Thomas Moore right now who will go in to discuss about property to like intellectual property in United Kingdom so I will give them I will give him the mic right now and he will start the presentation go ahead tom thanks hi so yes I'm here to talk about intellectual property in the United Kingdom for your entertainment and information there's a photograph of my face some of my qualifications my contact details if this leads to questions which you don't ask during the presentation I can see it later and so that's that's the end of that slide really ups the the fun of that one so what is intellectual property this is the first question that you have to ask and the dictionary definition is creations of the mind so that's inventions literary artistic works design symbols names and images used in commerce typically in our country we see that as copyright design right trademarks and patents when you're not covering patents today because they are a separate area all of their own because of the size and breadth of that but ip-ah goes further so it includes confidential information and know how things evolve on websites domain names database rights and there is a tie-in with both the general data protection regulation and the transfer of personal data internationally their business names goodwill and unfair competition and of course in England we have a multiple system insofar as we have a common larger and we also have statutory legislation so some of those cross over so trademarks have a unregistered rights as do designs but copyright is probably the most simple of Rights they will take that one first so the first right is copyright there's automatic protection for copyright and it covers pretty much everything you do or use on a daily basis there isn't much that isn't protected by copyright and the definition would be anything that you do to express your ideas in a tangible fine creates copyright and that right is automatic and it exists upon creation of it that's really good news because it's free you know to do anything or pay anyone for the copyright to come into existence but that then also leads to its downside so because protection is automatic and they arise with the Creator the Creator will often remain the owner of the right so for example if I ask somebody to go and take a photograph for me that photographer is the owner of the rights in that image unless and until they send them over to me so even the delivery of the photographs by email or on a disk or in the printed format will not mean that I am the owner of the rights I might have an implied license but I'd have to prove that I had that implied license by a chain of Correspondence that goes back in time so proof of ownership or if you're the creator proof of creation is absolutely essential for copyright if you try to enforce your right against another party this is the first question which is are you truly the right owner contract is the simplest way and in that respect treating copyright like any other right or indeed any property intellectual or otherwise ownership of that by virtue of the deed which is a legal transfer of title means that you can then enforce those rights you have to bear in mind however that because copyright comes into existence automatically and therefore there's no cost to it it's enforcement is difficult not only because you have to prove that you are the owner of the rights and you have to prove that your right your rights were created as of a set date and time you will also be limited by your enforcement because copyright opening protects against copying of your work so if you've designed a logo and the work is copied and it's wholesale copied it looks identical then that's a copyright infringement claim traditionally if there were variations in the work then the other party would say well I've taken inspiration from what you've done rather than infringed it having said that more recently we've seen case law like white bicycles and has sponsorship company have been involved in complicated messes which we evolved both trademark and copyright law and we've seen that the affair and copyright is that you can have something which looks similar rather than the same and that could be infringement ultimately however that will always turn on the facts so copyright in summary very easy to come across because it's being created all the time you have to be able to prove you're the owner of it and how you do that is very difficult traditionally people have recorded the delivery of documents by post or they stored them with a third party and had a receipt for the storage of those items but essentially anything you can do if you were in court to show that you created those materials as of that date and time or if you weren't the creator of those materials that the Creator has assigned the rights over to you that's absolutely essential otherwise you've got nothing to enforce often confused with copyright is design rights and there are two forms of design right there is a register design and and automatically occurring design rights and this goes back to our jurisdictional system having both statutory and common law so the statutory system is better there is no two ways about it you can file an application with the United Kingdom intellectual property office for 50 pounds your examination is not substantially examined so an examiner probably won't even bother to look at it so if you find it it will be registered you have 12 months from the date you first make your design public anywhere in the world to file an application you have to show that you have a tangible record of the design but it would be very difficult I think to file a design where you don't have a tangible because you have to have a recording of it somewhere already and indeed to file the design application you would be making a recording of it and then they last for 25 years so they're due for a new one every five years the key here is that the accept the examination is not substantive so you can file anything as a design in the United Kingdom and it will be granted most likely to sign registration that process takes less than a month however it is then down to you to police the design register and to enforce your design against others now because of the non substantive examination that does mean that quite often and indeed if you look at the register to date there are lots of designs on there which are technically unenforceable designs and they are only filed on the basis that they could try and enforce them many companies file lots of design registrations simply so that they can use them in letters of correspondence and in reference to point out that they have lots of intellectual property rights and you can successfully enforce an unenforceable registration because the party that receives the notice may simply be in fear of your registration in your design it is not the safest system and it is not a recommended system but it does take place in addition design registration is probably the cheapest intellectual property right to obtain which is a registered right because the filing fee of 50 pounds is a sliding discount meaning the more designs you file simultaneously the less you pay per filing and the designs do not have to be connected so you can file a design for a chair and a table and wallpaper all at the same time also worth a note is the UK registered design system allows you to protect things which are surface pattern or layout and pattern of a particular item say for example I gave wallpaper as one such example before example you can have all paper as a design registration and you can even have the layout of the LEDs in a screen as a microscopic level as a registered UK design on the other hand you do have an automatic right in the UK which is called the UK design right the benefit is automatic protection but it has all of the considerations of copyright so you have to worry about who created it when it was created whether or not you have ownership now unlike copyright where ownership stays with the creator and lesson until there is a transfer to the contrary design rights which arise automatically after October 2014 transfer automatically so long as it is a commissioned piece so if you ask a party to design a product for you the design rights in that product will transfer to you so long as the commissioned piece took place after October 2014 you have to remain to consider all of the other issues around copyright so proof of ownership proof of data of creation the limited scope is also very very narrow so if you were to have surface pattern for example that doesn't apply if you were to look at minor variations in a product that won't apply if you're looking at something which is the internal workings of an item that won't apply so your new key design rate is a very limited right it is the way the handy backstop but registration is definitely preferable so for latter reference I provided a comparative table of some of the key issues between UK design rights and UK registered designs I would always recommend my clients see credited design especially given that the costs are so low and the enforcement is relatively easy once you have a registration of a design and you can prove you're the owner of it the enforcement is down to you and most of the time sufficient enforcement bearing in mind you're not enforcing one right but you're probably enforcing many involves just not one registered design number but many registered design numbers at which point you're showing a portfolio of your your rights and you're more likely to have a successful outcome one of the things to consider when finding a UK registered design is the appearance of the design in itself if your product is in prototype you will need to consider whether you're going to file another design registration once the prototyping is complete if the product is confidential because its appearance is going to be new to the marketplace then filing your design is a good idea if your designer has variations then you may need to farm multiple designs and if there are elements of your design which you do not think influence the overall appearance of the product then you may not want to include those at all Apple very cleverly shall we say fold rectangular images for their iPad when they first launched those and although the designs were ultimately not relevant to the case and outcome it's been shown that there is an appetite in the design finding marketplace to follow design applications which remove non necessary on non identifying items from designs having said but I think it's probably given the cost and opportunity to file multiple designs rather than try and cut the cloth ingly moving on we have trademarks so trademarks are probably the most useful of intellectual property rights when it comes to reputation brand management they shouldn't be viewed in isolation I'll come on to the to the intellectual property of human in isolation shortly betrayed marks as a concept protecting me thing which identifies your brand and your brand is your brand because it's not another brand so what I can say well that is that you can have obviously words logos colors sounds even smells are all capable of registration with the United Kingdom intellectual property office however you will struggle to get B C and D registered with the UK IPO that is mainly because case law is showing the colors are very difficult to have a an essential badge of origin function sounds like wise although in some circumstances can do so the direct line jingle and the the Intel jingle my both being capable of enforcement as trademarks as smells while a chemical formula is recorded could be protected by trademark and we have had that in the past difficulty around smells comes with enforcement because a different chemical combination can create the same or similar smell and if you're in the marketplace for creating a particular odor you're probably going to be looking to differentiate yourself by creating something which is distinctly different and if you create something which is the same you're more likely Taylor passing off claim depending on the approach of the packaging so a and just very quickly to divide those two things up a is the absolute yes for trademark registrations B C and D are all capable the registration however when it comes to passing off a and B are usually key by passing off what I'm talking about there is reliance on a trademark which is not a registered trademark so again just like design you have trademark rights which come into existence automatically is you can use your brand in the UK and you build up your goodwill in your business the rights will rise automatically however the enforcement of those rights will have to be done based on what's called a passing off claim which is a common law tortious claim is and not an easy claim to run unless you have a huge reputation in the marketplace and you have budgets that sort of suit that so in terms of running a passing off claim the average cost to a passing off claimant is around two hundred thousand pounds whereas as we'll see in a minute the trademark filing fees of the UK IPO are one hundred and seventy and enforcement fees can be much much less because you can enforce through the UK IPO or through the enterprise intellectual property laws but the key thing to remember is in the UK predominantly words and logos are capable of registration you can obtain protection of colour sounds and smells though they are of limited use this is the the three guiding rules for trademark registration so they must be distinctive not be descriptive and not be misleading now distinctive is always a tricky one because often that is going to be a subjective point what is distinctive to one may not be distinctive to another and there is available for public inspection an examination guideline provided by the UK IPA which you can read through which talks about what is what is to be considered distinctive and what is not the usefulness of that is limited there is an amount of figley thing that goes on in the UK where you might take a mark which fails on point B and C and that you include a color or a stylization or an to the logo so that it acquires some distinctiveness however descriptiveness and being misleading are the two biggest foibles for trademark applications so descriptiveness seems to be something which is increasingly common in the trademark market as more and more people file their own applications and descriptiveness is I think the most obvious example would be to have if you were if you are making a soap and you call that soap cleaner well that cleaner the word cleaner is describing one of the outcomes of using the same product and given that the trademark is essentially a government endorsement awfully over a particular brand for a particular goods or service you shouldn't be allowed to prevent others from using a descriptive term in relation to their products that's why it descriptive is such an issue and we see it more and more because the trademarks market is frankly becoming crowded the away to avoid descriptiveness is like I say that as fig leaf in although the UK IPO becoming aware of that and they're becoming closer to the law in terms of interpretation of whether or not it should be allowed but also including elements outside of the fig leaf so if you were to stylize your mark wholeheartedly or use your mark solely as a logo then those two roots might be a best route to go around being descriptive and adding distinctiveness there are the point on scene not misleading it comes and goes the misleading point to be honest the biggest issue here is whether you kpo take a public morality point of view and they think that the mark is either rude or prima facie in cap and registration because it breaches some other raw life article for TR the Paris Convention which protects the registration of crown and crown like symbols so there are other things which you cannot ever register as a trademark so the Red Cross for example the Olympic symbols and the aforementioned crowns so one thing to note is if you're including anything like that so if you've got some sort of royal insignia and a mark you are going to struggle to achieve registration of the UK level and they will ask you to defer to the micarta to the realm that's very expensive so you would need permission from the owner of the shield or crest or crown which you're filing for and of course slogans because they fall into being descriptive most of the time or their non distinctive or they're simply not a badge of origin in the true sense they're not prima facie cap and registration what I mean by that is you would have to show that you have educated the marketplace and you have acquired distinctiveness for a slogan to be capable of registration that is the reserve of entities which will spend hundreds if not billions of pounds on marketing budgets and there are few and far between examples of true slogans where which are registered as trademarks so there is a push in marketing world for the inclusion of a trademark inside the slogan which we see in the last seven five seven years so that's what's capable of protection by way of registration trademark level and this is that this is the detail at that so 170 pounds is your filing fee that includes your first class and it's 50 pound for every additional class the UK used the nice classification guideline system so it's 1 to 34 for goods 35 to 45 for services there is no limitation on the number of terms inside each class while building out a specification although quite often you'll find the official file at sorry people filing for you so you trademark attorneys and lawyers may charge you a term by term charge there is a substantive examination and there is a notification that will be sent to some of the right holders however the UK IPO currently only notify UK and EU sorry only notify UK trademark rights owners when they cite an earlier mark when you fired application that means if you file an application in the UK and an earlier right is identified on the register of either the EU IPO or the worldwide intellectual property office excluding where the worldwide internet will be office sites the UK right the UK IPO do not write to the right holder they only write to domestic right holders once they've written to them there is no refusal on the basis of the identical or similar mark so unlike other jurisdictions like Australia where you might struggle to get your application through the UK will allow the application to proceed to publication but they will have put that party that they've identified on notice unless of course they're in a you only party at that point you have your two-month publication period and the application can take around six to eight months registration because the examination period and there's a general administrative period at the receipt of the mark and also post notice of publication so you'll be told that the mark is to be published and they'll probably be a maybe a months wait before it actually is but the key thing to remember in the UK is that it is a first-come first-serve system earlier rights win and that is why there is a review of the existing database so you need to get your marks filed as soon as practically possible if there's a mark which is already on the register before yours and the owner of that mark takes umbrage of your application then the ordinary course is for them to issue some notice to you of their umbrage and they would then probably far ATM 7a which gives them an extra month and extends your publication period by an extra month for them and potentially you to come to some sort of understanding over what might happen in relation to the application though the one-month extension only applies to you as the person is file the application and they as the people who taken umbrage at your application also worth noting is that around 85% of the UK trademark applications proceed through to registration without issue other than those are those absolutely grounds which I covered in the previous slide so what I'm saying is 85% are unopposed of those which are opposed we see around 7 to 12% achieve registration in some form or another which shows that there is a conciliatory or coexistence like approach in the UK which is good because it gives you the opportunity to obtain some form of register protection for your trademark so those are all the forms of Rights which you can find applications for excluding patents which we're not covering and we need to then come on to how we're going to go about enforcing these rights so there are broadly speaking two routes and enforcement if you have a registration and there is a right which is being filed in that same register which is monitored by the United Kingdom intellectual property office or there a moment the European intellectual property office then you may take action via that office using your registered right each action will depend on the nature of the right that you have the issue and and the and the type of action you wish to take so for example if a right pre exists on the UK register and you're filing an application for your brand and your brand is already registered on the UK trademark register by some third party who you have had previous dealings with then it may be that you need to take bad faith action against that original application to have its trick from the register so that your application can fire be filed and proceed through to registration the UK IPO have some very good online guidance about the basic actions that they can take them most of those are focused around actions that you can take in relation to marks which are being newly filed because as I just said it's a first-come first-served system but there are rights which you can rely on and the UK period do have a bona fide intent requirement when you file an application so if it's a bad faith application they will entertain applications for those marks to be struck from the register other than that all other enforcement will take place through the standard UK court system and we have an intellectual property court called the enterprise intellectual property court it does have a claim limit of half a million pounds and the Civil Procedure rules therefore apply and Civil Procedure rule one one is the party should attempt to resolve or disappear without the involvement of the court in the first instance so you should as par for the course write a letter to or find a way of putting those parties who may have infringed your rights on notice the only exception is where you are minded to seek injunctive relief even then it shows from case law that is likely better for you to achieve injunctive relief if you have put that party on notice of your rights and your intention intention to take injunctive relief against that party before you take the relief it is quite a bizarre but relatively old-fashioned system of notification is always required first and then taking action after that point so it's not for example like the the legislative system in Germany which allows very quick action to be taken and preemptive filing to be made at court this is very much other way around you should try and keep out of court for as long as possible you should show that you're trying to to get your own loss for as much as possible and if you're going to even seek injunctive relief like the removal of a product from sale or trade then you would need to put those parties on notice first if you are taking injunctive relief you'll need to give cross undertakings to the court which means that you may be liable for a loss that's incurred by the other side if post injunction the case doesn't go your way and a similar thing exists in our trademarks Act 1994 which says that there's a thing called fret provisions you could be liable for a counterclaim if your letter before action or your cease and desist notice is so aggressive that it's say it's causes the party to stop trading and then it later transpires that the CSIs cessation of trade shouldn't have happened because there was no infringement then you may be lucky you may be liable to a claim which is a counterclaim based on the threat provisions section of the 1994 app so the headline news there is if you think you'll being infringed by a third party seek legal advice it is it is not a straightforward route to go down right moving on we then have the the elephant in the in the room brexit and I have to say that a lot remains to be unknown but we do know these two things so any EU application for to register for designs or trademarks which do not make maturity before brexit will fail to achieve registration in the UK so if you have filed a trademark application of the European intellectual property office today on the 15th of july 2019 that application is examined and then it goes into publication that publication period is three months your application may not finish its publication period until the 1st of november 2019 at the moment the United Kingdom is due to leave the European Union on the 31st of October 2019 and consequently your rights in the UK will not exist by virtue of your EU application that is to say that 27 member states all the Member States at the moment excluding the UK will achieve registration for the trademark in the European Union and your UK mark which would exist under the European Union right will not exist that means at the moment we are advising all our clients to file simultaneously in the United Kingdom as well as the European Union intellectual property offices because there is no certainty of achieving registration in the UK for any application filed in the EU at this time we are also recommending any applications which pre exist in the EU register and then not in the UK registered alien isolation should be considered for a separate filing in the UK right now the reason for that is post brexit European Union rights will be cloned into the UK register and the cloning into the UK register will likely cause some issues as I mentioned earlier the UK trademark system works on a first-come first-served basis and if you have a UK writer than EU right which have different dates of filing but are the same right and have coexisted for this period of time you will find yourself in an issue where the cloud rights will all carry the same date of carry over and you'll then have a question over which right came first if your rights which exist in the European Union are absolutely paramount of importance if you file a UK trademark application now you are unlikely to achieve registration of that mark by the time that the clone mark is carried over from the EU rights by virtue of brexit but your filing date for that UK application will predate the cloning date so any key marks which exist solely on the EU register for any businesses doing trade in the UK should consider filing those applications as UK isolation applications right now the sooner the better because it is a first-come first-serve system you will also weed out any issues that could arise from your clone into the UK register on the 31st of October or whenever brexit happens it's also worth noting that any ongoing oppositional proceedings involving EU rights well sorry involving UK rights in the EU will likely fail because those UK rights will become unenforceable in the European Union that includes designs as well as trademarks and at the moment there is no sort of mitigating circumstance or plan to resolve that issue and we have seen in a number of cases where we have ongoing oppositional proceeding matters with the European Union that the the attorneys in other countries are asking for an extension of time or a cessation of proceedings so that there is a period of time during which nothing happens and then at the end of it we've left the European Union and the entire matter will be deemed resolved so there is a risk if any applications have been filed and you wish to oppose them and they're based solely on a UK right you may struggle to enforce that right so likewise the outcome of that is if you have a UK trademark at the moment and you want to file in the European Union and file now because you are never going to have an opportunity to file in so many countries at such a low price ever again if you don't get the clone of the mark into your UK register that's fine then you will also need an overseas attorney so anybody in the UK looking to fund European Union will need a representative in the European Union file that application for them and obviously that there's there's a plethora of choices because you're looking at 20 of them 27 member states in which you could use one of those attorneys and don't forget the official filing languages of German French Spanish and English continue but also consider the ability to use the UK right as a springboard into the European Union to get those protective rights in place so that should you wish to take action in relation to an opposition or proceeding in the EU you won't be solely relying on your UK rights which won't be useful post brexit all of this of course is tentative on the basis that we have a scheduled brexit date of the 31st of October and the political landscape in the UK is currently in flux and we do not know for certain who will become the leader of the Conservative Party in therefore Prime Minister and after that date once we do know who will be Prime Minister we don't know if that individual necessarily be pro or anti deal brexit or no Dilma brexit so all of these things are currently variables the only certainty is the cloning of the database into the UK as of the date and time of the brexit arising and that anything that post that post dates brexit which relies on a UK right will likely fail so that is a very quick run-through of the key intellectual property rights which you have in your businesses which you should be seeking to protect by way of recap the copyright is automatic registration of copyright is impossible at UK and therefore you need to find a way of showing that you are the creator or that you took ownership of the rights as of a date and time design rights are both registered and automatically arising if you register and design then the automatic years arising rights will no longer be valid or enforceable and there is a table I provided in the slides which say the difference between those two rights by and large we recommend our clients file design registrations given their reduced cost and increased ability on enforcement because an unregistered design right has all the same caveats of copyright when it comes to enforcement and proof of ownership and proof of control and then you have trademarks and trademarks are anything which you can deem to be a batterer origin for your business and just like designs there is an onion there is an unregistered right which we rely on the the tortious game of passing off that is a difficult right to enforce and you have to have significant reputation in the marketplace and be able to demonstrate their reputation in able to enforce it and then we have registered trademarks registered trademarks have a number of caveats as to what can and cannot be registered and once they are registered they are yours to enforce they by the way continue forever so once you've filed your trademark in the UK as long as you renew it every ten years it will continue ad infinitum and then you come to enforcement of any and all of those rights and the key thing here is not to look at any of those rights in isolation but to look at them together as one piece one portfolio so every business will have copyright every business will have a trademark of most businesses will have some form of designs it is worth considering what all of those are I would always recommend their business does an audit of its intellectual property and then identifies what should be included in its portfolio and after that portfolio you should be able to identify what rights should be registered the registered rights are the rights to lead on in any enforcement action because they are easier to prove in the UK than any of the rights where you have to rely on the common law system of either passing off right infringement or registered design inference sorry right design right infringement in those circumstances you can couple those rights up and there is of course the ability to take action in relation to all of them but you have to be aware that way you for example have registered a design then any copyright that exists in that design may be informal to a limited degree and the design right will probably be unenforceable likewise with the trademark you're unlikely to rely on passing off as well as registered trademark infringement at the same time but you might have a cherry-picking aspect where within your portfolio of intellectual property rights you decide that you're going to file one of the trademarks rather than for example all three at which point an enforcement action may include both registered and unregistered rights most of the time enforcement which includes both of these rights is more successful because it shows that you have four considered portfolio and enforcement letter before action cost shouldn't be more than around a thousand pounds and that's a significant saving on taking action through the court system in terms of brexit it's an unknown at the moment but the key thing to remember is if you don't have a UK trademark registration then you should consider filing one as soon as possible and vice versa if you have a UK Tremmel registration but not an EE registration then it's worth considering finding any new registration right now whilst we can still have all 28 member states concluded or probably 27 for the price of one that is the end of the presentation of webinar I have been obliged to provide you with a disclaimer obviously if you do wish to learn the advice then it is limited by the fact that it's not distinctive legal advice for any individual but if you have any questions I'll be happy to have them thank you thank you so much for that for that very informative presentation so if you have any questions right now you can just type into the chat box so that our presenter can answer the question [Music] [Music] all right we're just waiting for their questions by the way on this slides will be sent all the registrants for today and this presentation is also recorded so we will also send that information to them you're welcome thank you so much for attending the webinar Khalid so let's wait for Adam if here's some question okay yes I think that's all for Alexis wait someone is typing [Music] okay so Adam we will be sending the presentation through your email we have all the email address of the people who registered today so we will send a presentation in 24 to 48 48 hours together with the recording so you will receive 24 to 48 hours okay um I don't think that it will be uploaded to YouTube but we will just send you the recording for this webinar so I guess okay someone is typing again alright good so I think that's all for today again thanks so much for that very informative presentation and I will also would like to thank you for attending the webinar again my name is grant from International Trade Council you have something to say so our attendees Tom I know thank you very much for all of your time and like I say if there's questions that arise and they're obviously you're watching recording of this that by all means use the contact details on the first slide to get in touch with me okay perfect so you all have a wonderful day thanks bye-bye you're welcome bye bye