Managing the Protection of Company's Intellectual Property
JUDr. Jakub Vozáb, PhD. 05.01.2023
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Having trouble with copying a brand or products? Are you thinking about protecting a brand, a slogan, a product design or even about a systematic protection of company's intellectual property?
Intellectual property is key to the creation of corporate identity and protection of market position, therefore it is also often the target of attacks by competitors who try to imitate, imitate , confuse, deceive customers or consumers and thus gain an unjustified advantage. Managers in leading positions often intuitively feel the need to actively prevent these threats and protect individual partial intangible values, or sometimes even take systematic measures strengthening the company's position in terms of intellectual property protection. However, this can be problematic as it involves setting up internal processes depending on key aspects of trademarks, industrial designs, utility models or patents and other intellectual property protection subjects.
So what is essential and what to focus on?
A trademark is any designation of goods or services that consists mainly of words, color, drawing, letters, numbers or the shape of the product or its packaging or sounds. Perceptibility by consumers in connection with products or services is decisive.
The basic key factors for obtaining protection are distinctiveness and registrability of trademarks.
Distinctiveness is the ability to distinguish the products or services of one person from the products or services of another person, which is the main function of a trademark, i.e. to differentiate the goods and services of competitors in the market. The ability to be registered in the Trademark Register is the ability to clearly identify through the visual perception of the registration in the register so that the subject of protection is clear.
Other key factors are time and territory. A trademark must not be interchangeable with another, i.e. each new trademark must be „new enough“ to be non-interchangeable with an older existing trademark. The decisive moment is the moment of submission of the application, or the moment from which the right of priority is derived.
Formal entry in the register of trademarks basically replaces to a large extent the complex proof of the creation and duration of the trademark, capturing its presence on the market, as well as the extent of its use. However, situations may arise when these facts will be completely decisive and it will be necessary to prove them as in the case of unregistered trade marks, see below.
There is currently an EU subsidy up to EUR 1000 for trademark applications.
Unregistered trademarks of goods and services
The essence is the same as for registered trademarks, only it is not possible to benefit from formal registration, i.e. the existence of an unregistered sign must be proven in each individual case, which involves proving the moment of creation, duration, scope and intensity of use in connection with specific goods or services on market in a specific territory.
The key factors for obtaining protection are therefore time, territory, extent and intensity of use of the protected sign and connection with specific goods or services.
Above all, it is about capturing the beginning of the creation of a trade mark. In this context, it is a good idea to archive documents related to the work of creatives who designed the wording or graphic or visual appearance of the label. Sketches and other materials showing the design of the sign should contain at least a date and also the name of the client/owner of the sign, so that it is possible to determine the date of creation of the documents and thus of the sign itself. Also related to this are the dated accounting documents for the creation of the draft label, which must contain the wording of the protected label so that there is a direct connection between the document and the protected label. Dated internal communication mentioning the protected designation can also prove the origin of the designation. It is important to bear in mind that, for example, accounting documents generally have a relatively short mandatory archiving period, however, from the point of view of intellectual property protection management, it is necessary to ensure the ability to prove the creation of a protected trade mark even after 20 years.
It is also about capturing the presence of the label on the market, or in the awareness of consumers/users. At the same time, it depends on the extent and intensity of use of the designation, how widespread it is in terms of time, territory and quantity. If we want to document the use of the mark in terms of time, territory and quantity, documents related to the sale and distribution of goods or services marked with the given trademark to end consumers/users are ideal (invoices, delivery notes, transport confirmations, delivery notes, postal delivery notes, delivery notes, etc.), of course, if they directly mention the protected designation, so that there is a direct connection between the document and the protected designation. They contain everything necessary, i.e. the date, quantity information and, as a rule, the address of the end consumer/user or the delivery address, i.e. information about the territory in which the goods or service was distributed. The scope of use of the mark demonstrated in this way can be further supported by documents proving the spread of advertising for products or services marked with the given trademark in the given territory (agreements for the broadcasting of advertising including time schedules, invoices with attachments for airtime, etc.). Also in this case, the minimum mandatory period of archiving accounting documents may not be sufficient if it will be necessary to prove the scope of use of the protected designation.
Industrial Patterns or Designs
In simple terms, an industrial design is the external treatment (appearance) of the product, the decisive factor is the shape, colors, structure, etc.
The basic key factors for obtaining protection, respectively for the registration in the Designs Register are novelty and individual nature.
An industrial design is new if no identical industrial design was made available to the public before the date of filing the application or before the date of priority right. Industrial designs are identical if they differ only insignificantly.
Furthermore, an industrial design has an individual nature if the overall impression it creates on an informed user differs from the overall impression created by an older already existing industrial design. This rule is softened in such a way that making it available to the public is not considered to be made available by the originator of the industrial design or his legal successor within 12 months before the date of filing the application. The basic moment is therefore to keep the new industrial design a secret and not to use it on products or at exhibitions etc. for a longer period than 12 months before the application is submitted.
With regard to the requirement of novelty, time is again a very important factor. That is, the ability to demonstrate the moment of public access. At the same time, care must be taken to ensure that the industrial design is not made available to the public in the time period preceding 12 months prior to the filing of the application.
There is currently an EU subsidy up to EUR 1000 for industrial design applications.
Unregistered Industrial Designs
The essence is the same as for a registered industrial design, however, due to the absence of a formal registration, it is necessary to prove the existence of all its essential features in each individual case, especially when it comes to the external arrangement (appearance) of the products themselves and its novelty and individual nature at the time of its creation and also the continuity of its use, as an unregistered industrial design arises and ceases with actual use or non-use.
Here, the recommendations given above for unregistered trade marks of goods and services apply analogously. Therefore, it is necessary to archive documents proving the capture of the beginning of the creation of the industrial design and also the capture of the presence of the industrial design on the market on specific products and its continuous actual use on products.
A utility model, or small patent, is a simpler form of protection for a technical solution to a certain problem that goes beyond mere professional skill.
The basic key factors for obtaining protection, respectively for the registration in the Utility Models Register are novelty and industrial applicability.
A technical solution is new if it is not part of the state of the art on the date decisive from the point of view of the right of priority. However, there is a softening here that the state of the art is not such publication of the results of the work of the applicant or his legal predecessor, which occurred in the last six months before the application of the utility model. A technical solution is industrially usable if it can be used repeatedly in economic activity, i.e. it enables industrial production.
The basic moment is to keep the new technical solution a secret and not to publish its essence, not to exhibit it, etc. in the time period preceding 6 months before submitting the application.
If you are dealing with the systematic protection of company intellectual property, we will be happy to help you set up processes and explain what is important to state in company documents.