BusinessAndLegal.ie » Intellectual Property

Copyright,Trade Marks and Patents

terry — Wed, 10 Mar 2010 22:19:09 +0000

Copyright Law Ireland

terry — Mon, 28 Sep 2009 05:55:50 +0000

Copyright is the legal term, which describes the rights given to authors/creators of certain categories of work.

1.original literary, dramatic, musical or artistic works sound recordings, films,broadcasts, cable programmes
2.the typographical arrangement of published editions,computer programmes,
3.original databases.

The owner of copyright is the author, meaning the person who creates the work. For example a photographer is the owner in the case of a photograph.

However, as copyright is a form of property, the right may be transferred to someone else, for example, to a publisher. Where an employee in the course of employment creates the work, the employer is the owner of the copyright in the work, unless an agreement to the contrary exists.

Copyright is a property right and the owner of the work can control the use of the work, subject to certain exceptions. The owner has the exclusive right to prohibit or authorise others to undertake the following:

1. copy the work
2. perform the work
3. make the work available to the public through broadcasting or recordings
4. make an adaptation of the work.

Copyright takes effect as soon as the work is put on paper, film, or other fixed medium such as CD-ROM, DVD, Internet, etc.

No protection is provided for ideas while the ideas are in a persons mind; copyright law protects the form of expression of ideas, not the ideas themselves.

Rights related to Copyright

Rights are not restricted just to the creators of the works themselves but certain other rights may apply.

For example, the record company has certain rights in a sound recording of the performance of a song, in addition the author(s) of the lyrics and the music will also have certain copyrights. Similarly performing artists have certain rights in their performances. The legislation also provides for moral rights, such as the right to be acknowledged as the author of a particular work and also the right to object to derogatory treatment of that work.

The primary legislation governing copyright in Ireland is the Copyright and Related Rights Act, 2000 (No. 28 of 2000)

Copyright Protection

In Ireland, there is no registration procedure for owners of a copyright work.

Basically the act of creating a work also creates the copyright, which then subsists in the physical expression of the work.

Copyrights are protected by law and illegal use of these rights can be contested in the Courts, the technical term for this misuse is infringement.

The legislation provides for criminal offences and consequently infringers could face both civil liability and criminal convictions.

Professional advice should be sought by copyright owners with regard to the options and the remedies available where infringement of their work occurs.

It is most important that the originator of a work can show subsequently when the work and the consequential copyright were created as it may be necessary to commence or defend infringement proceedings, at some later stage.

One way of doing this is to deposit a copy of the work with an acknowledged representative who may be a bank or solicitor in such a way as to allow the date and time of the deposit to be recorded or notarised.

Alternatively, one may send a copy of the work to oneself by registered post (ensuring a clear date stamp on the envelope), retaining the original receipt of posting and leaving the envelope containing the copyright work unopened thus establishing that the work existed at that date and time.

The Copyright Notice and Symbol ©

It is important to show that copyright is claimed in a work. Works should be clearly marked to show who the copyright owner is and the date from which copyright is claimed.

The internationally recognised symbol © is normally used to indicate that a work is protected by copyright.

Example:

Examples of more detailed copyright notices may be found in published versions of literary works. The inclusion of a copyright notice does not legally constitute proof of ownership, but does indicate a claim to copyright, which may prove useful if it is necessary to defend that claim or to deter possible infringement.

It is usually necessary to obtain permission to use copyright material. Persons with a copy of a work can look for an indication on the work regarding copyright. This can assist making contact with the author/ original creator of the work in order to obtain their permission to use the work for any act, which is prohibited by copyright legislation.

Length of Copyright Protection

The duration of copyright protection varies according to the format of the work. In respect of the following works the term of protection is:

Literary, dramatic, musical and artistic works

Films

Copyright protection expires 70 years after the last of the following dies, the director, the author of the screenplay, the author of the dialogue of the film, or the author of the music composed for use in the film.

Sound recordings

Copyright protection expires 50 years after the sound recording is made or if it is made available to the public then 50 years from the date it was made available to the public.

Broadcasts

The typographical arrangement of a published edition

Computer-generated works

Chapter 3 of the Copyright and Related Rights Act, 2000 (No. 28 of 2000) deals in greater detail with the duration of copyright in Ireland.

Benefits of Copyright Protection

Copyright protection provides a vital incentive for the creation of many intellectual works. Without copyright protection, it would be easy for others to exploit these works without paying any royalties or remuneration to the owner of the work. Copyright therefore encourages enterprise and creates a favourable climate to stimulate economic activity.

Copyright protection provides benefits in the form of economic rights which entitle the creators to control use of their literary and artistic material in a number of ways such as making copies, performing in public, broadcasting, use on-line, etc. and to obtain an appropriate economic reward. Creators can therefore be rewarded for their creativity and investment.

Copyright also gives moral rights to be identified as the creator or author of certain kinds of material (known as the paternity right), and object to the distortion and mutilation of it. An author’s right to object to the modification or derogatory action in relation to his or her work is known as an integrity right. Chapter 7 of the Copyright and Related Rights Act, 2000 (No. 28 of 2000) deals in greater detail with moral rights applicable in Ireland.

Domain Name Disputes and Law

terry — Sun, 27 Sep 2009 09:07:09 +0000

And infringements occur regularly in the shape of trade mark disputes, cybersquatting and related issues.

It is crucial for any business to have a smart commercial strategy regarding their trade marks and domain names.

Domain names can usually be registered quickly and inexpensively. Top Level Domain(TLD) is the suffix such as ie or uk or fr-it denotes the country.

Within TLDs there are 2 sub-categories

1. Generic TLDs such as .com,.net,.org,.biz. These domain names do not have to be distinctive and do not indicate geographic origin.

2. Country Code TLDs which are administered by the domain registry of the relevant country; in Ireland this is IE Domain Registry ltd (www.iedr.ir).

In Ireland you must display a real and substantive connection with Ireland when applying for a domain name before iedr will approve your application. You may also need to show a connection with the business that you are referring to in your domain name application.

Domain name disputes

Domain name disputes have been resolved generally in one of 2 ways-either in court or by reference to the alternative dispute resolution procedure provided by ICANN.

This body has adopted the UDRP (Uniform Domain Name Dispute Resolution Policy) which apples to generic TLD name disputes.

Some country code administrators have incorporated this procedure into their registration agreements.

This UDRP procedure has been very successful and has resolved many domain name disputes; however it does not provide for damages and so a company that needs immediate injunctive relief and damages will be advised to head for court rather than the UDRP procedure.

Generally the relief provided is simply to have the domain name transferred to the plaintiff.

To win relief at the UDRP you will need to show 3 things

1. the complainant must show that the name is confusingly similar to the name in which the complainant has rights
2. the existing holder has no legitimate interest or rights in the domain name
3. the complainant must show bad faith on the part of the holder of the domain name.

The holder of the domain name can reject the complainant’s case if he could show bona fide use of the name, non commercial use with no intention to profit, evidence that the respondent is known by the domain name.

UDRP also recognise the phenomenon of ‘Reverse Domain Name Hijacking’ which is the occasion when the plaintiff uses the policy in bad faith in an attempt to deprive a registered holder of a domain name of that name.

In ccTLD disputes the domain name registry require further proofs before they cancel or transfer a domain name.

They would need to see some aspect of passing off or trade mark infringement also.

These disputes can be litigated before the appropriate courts as occurred in Jan. 2009 when Sean Dunne, Property Developer went to court in a dispute to obtain D4Hotels.com from John Brennan who had registered the domain name in his own name whilst running D4 hotels group in Ballsbridge.

Conclusion

It is clearly impossible to register all domain names and trade marks which they may feel they need to protect their intellectual property.

Sometimes it is more cost effective to purchase the name from the ‘offender’ rather than go to court or UDRP.

It is important to recognise the difference between trade marks and domain names and it is prudent for a company to register each of their domain names as a trade mark.

Because otherwise their domain name could be registered as a trade mark by a 3rd party.

Intellectual Property-What is it?

terry — Sat, 26 Sep 2009 07:13:55 +0000

The growth of the value of intellectual property such as trade marks,copyright and domain names has led to small business looking at the law in this area.

Intellectual property can, on occasion, be the greatest single asset that a company owns.

Intellectual property, like any other form of property, can be bought and sold in a similar fashion.

What is intellectual property?

Intellectual property includes trade marks, copyright, passing off, counterfeit goods, confidential information and domain names.

There have been many high profile legal battles concerning intellectual property. A recent such battle in Ireland involved Sean Dunne, the property developer and the ownership of the D4Hotels domain name. This involved a legal dispute between Dunne and a former manager as to who was entitled to ownership of the domain name.

It is understood that a significant sum of money was involved in the resolution and settlement of this dispute.

The fashion designer, Karen Millen, also brought legal proceedings against Dunnes Stores in relation to the unregistered design of garments that Dunnes were selling in their stores. This was interesting from an intellectual property viewpoint as Karen Millen did not register a trade mark for the design in question. However the court recognised her rights in the unregistered trade mark.

McDonalds are another high profile company who guard their intellectual property rights jealously. And it is important for small business in Ireland to do likewise as for some companies, the only significant asset that they own is their intellectual property rights…..
whether that is in a trade name, a domain name or copyright.

Important point re Domain names

It is important to note that whilst the registration of a domain name is a simple enough process, it is prudent for the owner of a domain name to also register it as a trade mark,

Because you can own a domain name but not own the trade mark for that same formation of words.

Intellectual property covers a wide spectrum of commercial activity. A good working knowledge of this area, and how it impacts upon your small business is a must for any serious small business owner.

Passing Off | Misrepresentation

terry — Fri, 25 Sep 2009 19:01:24 +0000

Passing off generally involves the making of a misrepresentation and the meaning or definition of passing off is as follows-

Meaning of passing off

There are 5 characteristics of passing off—-
A misrepresentation

Made by a trader in the course of trade

To prospective customers

Which is calculated to injure the business or goodwill of another trader

Which causes actual damage to a business or goodwill of the trader

Misrepresentation

There must be a false representation by the defendant so that an association with the plaintiff is made in the minds of the public.

Made by a trader in the course of trade

The misrepresentation must be made in the course of trade.
What is considered to be a trader as far as the law of passing off is concerned is very wide-it has been held to include the BBC for example.
Anyone who makes an income from the provision of goods/services is a trader.

To Prospective customers

For passing off to occur, the misrepresentation must be made to prospective customers and then…

……..the courts have held that they will decide whether the general public is likely to be deceived.

Business/Goodwill

It has been accepted that goodwill can be created in different ways and is not confined to simply trading within a jurisdiction.

Damage

The plaintiff must prove that the action of the defendant has or is likely to cause damage to the plaintiff in order to prove passing off.

Passing off is closely connected with counterfeit goods.

Counterfeit goods

A trade mark owner can register his trade mark with the Revenue Commissioners and customs officials can destroy goods, which have been abandoned without or before determining whether an intellectual property right has been infringed.

Each consignment of goods from outside the EU will be inspected to see whether the goods are genuine. If they are found to be counterfeit, the customs authorities will destroy the consignment.

Infringement

Exceptions

A trade mark is not infringed by the use of a person of his own name or address, provided it is done honestly.

A trade mark will not be infringed by its use on goods which have been put on the market in the EU by the owner of the trade mark or with his consent. This is known as Exhaustion of Rights of a registered trade mark and stems from EU law.

Remedies

Courts have the power to grant an injunction and/or the destruction of goods and damages. The District court has the power to request the Garda Siochana to seize goods and ultimately to have them destroyed once satisfied that an infringement has taken place.

Domain Names

A domain name will not necessarily become a trade mark and it is advisable for the owner of a domain name to also register it as a trade mark.

Confidential Information

Information such as know how, secret formulae, processes, customer lists are clearly of huge importance to businesses.

The protection of this information can be best protected by a confidentiality agreement with an employee from an employer’s perspective. This can be more effective than registering patents as this involves putting information into the public domain.

Once it is established that an obligation of confidentiality then the person to whom it is given has the duty to act in good faith and only use the information for the purpose for which it was intended.

Generally the law imposes a duty of confidentiality in 2 situations

The protection of trade secrets/confidential information in non-employment cases

The protection of trade secrets in the course of employment

Once a contract of employment has ended and the employee has left his position he is still under a duty of confidentiality.

It has traditionally been held that in an employment situation will lead to 3 types of information

Public information-not protected

Skill and experience which is not protected although it could be the subject of a restriction of trade clause in the employment
Trade secrets-protected and can only be used for the benefit of that employer

Remedies

Breach of confidential information will lead to an injunction or damages or an account of profits or all 3.

Trade Marks in Ireland

terry — Thu, 24 Sep 2009 06:18:59 +0000

A trade mark is the means by which a business identifies its goods or services and distinguishes them from the goods and services supplied by other businesses and the registration of a trade mark is an important task for any small business owner.

The Trade Marks Act, 1996 defines a trade mark as “any sign capable of being represented graphically which is capable of distinguishing the goods or services of one undertaking from those of other undertakings”

A trade mark may consist of words, (including personal names), designs, logos, letters, numerals or the shape of goods or of their packaging, or of other signs or indications that are capable of distinguishing the goods or services of one undertaking from those of others.

Trade Mark Registration

Not all trade marks are capable of registration. Registration will be refused for a trade mark which:

* is not capable of being represented graphically or not capable of distinguishing good or services of one business from those of other businesses,

* does not have any distinctive character,

* consists exclusively of signs or indications that designate essential characteristics of goods or services (e.g. their quality, intended purpose, geographical origin etc.),

* consists exclusively of signs or indications which are customary in the language in the trade,

* consists exclusively of the shape, arising from the goods themselves, or which is necessary to obtain a technical result, or gives substantial value to the goods,

* is contrary to public policy or principles of morality,

* is likely to deceive the public, e.g. as to the nature, quality, or geographical origin of the goods or services,

* is applied for in bad faith,

* is identical with or similar to a trade mark that is already on the Register in respect of identical or similar goods.

Trade mark registration creates an official record of your rights as owner of a particular trade mark and makes it easier to prevent others from using it.

Trade mark registration grants a statutory right, subject to certain conditions, to prevent others from using the trade mark without the registered proprietor’s permission – i.e. to prevent infringement.

Trade mark registration confers an exclusive right to authorise others by means of licensing to use the trade mark for the goods and /or services for which the trade mark is registered.

You should consider registering your trade mark if it is important to you that your customers are able to identify your products and services from those of your competition.

Unauthorised use of a trade mark means the rightful owner may lose business and goodwill.

Although trade mark registration is not obligatory, registration makes it easier to prevent others from benefiting from the reputation established by the use of a trade mark by allowing the proprietor of the registered trade mark to take infringement proceedings before the court.

The fraudulent application or use of a trade mark in relation to goods without the authorisation of the proprietor and/or the possession of goods or material bearing a mark identical to or nearly resembling a registered trade mark, may in certain circumstances, be a criminal offence, and criminal proceedings may be initiated under the Trade Marks Act, 1996.

Types of Trade Mark

Ordinary or standard trade mark

The majority of all trade marks fall into this category. They consist of words, slogans, logos, etc. whose purpose is to distinguish the goods and services of their proprietors from those of other undertakings.

Collective mark

A Collective trade Mark is a mark that distinguishes the goods or services of the members of an association from those of others.

Certification mark

A Certification trade Mark is a mark that “certifies” goods or services as being of a certain standard or possessing certain qualities or other characteristics.

A certification mark can only be registered in the name of the proprietors if they themselves do not produce or provide the goods or services to which the mark is applied.

Series of trade marks

A series of trade marks is a number of marks, which resemble each other in their important features and differ only in respect of non-distinctive elements that do not substantially affect their identity.

Three-dimensional mark

A three-dimensional trade mark is a trade mark that consists of the shape of a product or its packaging.

Application for a Trade Mark(trade mark registration)

Any person or company etc who uses or proposes to use a trade Mark can apply to register that trade mark.

An application may be made either before the trade mark is put in use or afterwards. Generally speaking an application should be made to register a trade mark as soon as possible to ensure priority over anyone else who applies to register the same or similar mark.

To apply, complete the application form 1 on Patents Office website. The fee for filing an application may be paid at this time or within one month of that date.

An applicant may pursue his or her application personally or choose to employ the services of a registered Trade Mark Agent. If an application meets the criteria for registration, it is registered with effect from the date of application.

The Application Process

When an application (which contains the minimum information required) is received, a filing date and application number is assigned and a filing receipt is issued.

The Minimum requirements for a filing date are -

A request to register the Mark (completion of the prescribed application form meets this requirement),

* The name and address of the person requesting the registration,

* A representation of the trade mark,

* A statement or list of the goods and/or services for which registration of the trade mark is sought.

The application is then examined as to its registrability. The examination process includes a search of relevant databases to ascertain whether the trade mark or a similar mark has previously been registered. If this is found to be the case, then the Office may refuse to register the trade mark.

The examination also addresses other obstacles to trade mark registration such as, for example, whether the mark is simply a laudatory statement of a product’s quality (e.g. “Best Quality”) or a sign that has become generic within a particular field of commercial activity. These are among a number of grounds on which an application for registration may be refused.

If it is proposed to refuse registration in a given case, the Applicant will be informed of the reasons why and will be afforded an opportunity to make arguments in support of the application. Before any decision to refuse becomes final, the Applicant will have a right to attend an oral hearing before a senior official of the Patents Office.

If the application is accepted for registration, details of the mark will be published in the Official Journal. Within 3 months of the advertisement of a trade mark, any person who objects to its registration may send a notice of opposition to the Office accompanied by the prescribed fee and the Office will copy this to the Applicant. Each side (the Applicant and the Opponent) is then given an opportunity to file evidence in support of its case and the question of whether the mark should be registered is ultimately decided by a senior official of the Office.

Length of time

A trade mark registration can last indefinitely provided the registration is renewed. Registration is initially for a period of ten years (from the date of filing of the application) and it can subsequently be renewed every ten years on payment of the renewal fee.