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IP FAQ
What are all the different types of intellectual property and intellectual property protection systems?

What is intellectual property? What is the difference between patents, trade marks, designs and copyright? What are patents? What are trade marks?

What are registered designs? What is copyright? What are "common law rights" (in trade marks)? What is the Paris Convention ("claiming priority")? What is the Patent Cooperation Treaty (the "PCT")? What is the Madrid Agreement/Protocol (international trade marks)? What is the European Patent Convention? What are Community Trade Marks? What are Registered Community Designs? What is the Hague Agreement Concerning the International Deposit of Designs ("International Designs")? What is the Budapest Treaty? What do "TM", "SM" "patent pending" "regd. patent no." "regd. design no.", "design patent no.", "" and "" mean? What is "passing off"? What are Plant Variety Rights? What are Supplementary Protection Certificates?

What is intellectual property?

Intellectual property (or "industrial property") is an expression that covers "intangible assets". That is, something owned by a company or individual that does not necessarily have any fixed physical manifestation (other than a description or picture of it on paper). Intellectual property includes inventions, industrial designs, trade marks and brand names, logos, art works, music, written materials, software, confidential information and trade secrets. Some intellectual property rights can be registered. Registrable intellectual property rights include patents for inventions, design registrations andtrade mark registrations. Some intellectual property rights exist inherently without registration and these includecopyright in creative works and software and common law rights in trade marks. Back to top

What is the difference between patents, trade marks, designs and copyright?
It is not uncommon to hear reference to the "patenting of a brand name" or "trade marking of an invention", neither of which are in fact possible. Patents cover the concepts behind new inventions (usually industrial products and processes). Trade mark registrations cover the brand names and logos used on products and services, but not any concept behind them. Design registrations cover the outward appearance of products but not the way products work.Copyright covers the actual expression of a creative or artistic concept (but not the concept itself), that is, the specific words on a page, the specific arrangement of paint on a canvass or the specific source code in a computer program. Back to top

What are patents?

Definition Patents cover newly developed or improved industrial, chemical and biotechnological products or processes (new inventions) and can also cover computer software. The expression "patents" can also include several sub-types of patent such as "utility models", "short term patents", and "petty patents". Patent Rights A patent entitles you to stop others from making and using your invention for a fixed period of time or "term", usually 20 years, after which the patent rights expire and others may make or use your invention. Without a patent, you cannot in general prevent others from making and using your invention. In exchange, you must describe your invention in a patent document that is published and thus becomes public knowledge. Patentability Not all inventions are patentable (eligible for patent protection by registration). For an invention to be patentable, it must be new and it must be inventive. If the invention is not new or inventive, it will not be possible to get a valid patent. An invention is generally only considered to be "new" if it has not been shown or described to the public (whether in a publication, by exhibition or verbally) world-wide prior to filing a patent application. Selling, getting orders or trying to get orders can also make a patent invalid. You must therefore keep all new inventions secret if you want to obtain valid patents for them in the future. If you want to discuss your concepts with anyone, make sure it is in the strictest confidence. A confidential disclosure agreement is advisable. It would be best to contact us and discuss your plans before telling anyone about your invention. For an invention to be inventive, it must in general be more than just an obvious or simple variation on what is already known. Patent Searches How do you know whether your invention is new and/or inventive? The best way is to have us conduct a search through the relevant local and international databases (some of which can be accessed by subscription or attendance only), to see whether there are any publications which describe your invention. Searching requires not only finding relevant documents but also the analysis of those documents to determine whether or not they might pose any difficulties for your invention. Some documents may appear from the drawings to cover a product different to yours, but in fact are broadly worded and could still cause you difficulties. Similarly, documents that look very close to your invention might be possible to work around. You can conduct your own preliminary searching on the internet to get an idea as to whether or not your invention might be patentable (new and inventive). If you find documents that look close to, but are not the same as your invention, contact us and we will advise on the possibility of them preventing you from obtaining valid patent rights. If you find no relevant documents, it would be wise to ask us to conduct a confirmatory search for you as we have

access to databases to which you probably don't have access and we are also very experienced in patent searching, which is not a particularly easy task. Infringement If relevant publications are uncovered in a search, we also need to consider the risk, if you make or use your invention, of you infringing another's patent rights. That is, making or using a product which is covered by someone else's registered patent. If you infringe someone else's rights this could be very costly. It is therefore important to conduct what is called an "infringement clearance search" (a search to determine your chances of infringing someone else's rights) prior to launching any new product onto the market.

More detailed information about patents

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What are trade marks?

Definition A trade mark is a brand name or logo (or in some countries, the shape of a product, a colour, a sound or a smell) used to associate a product or service with a particular company or person. Brand names and logos used to associate a service with a particular company are sometimes called "service marks", but they are still a type of trade mark. The term "trade mark" as used here covers both service marks and marks used on products. Trade Mark Rights Obtaining the rights in a trade mark means obtaining the right to prevent others from using the same or a similar mark on the same or similar products or services. Unlike for patents and designs, the duration of a trade mark right can be as long as you wish. In many countries, rights in a trade mark can be obtained by being the first company or person to use the mark. The rights obtained by using a mark are called common law rights. Countries providing common law rights in trade marks are usually referred to as "first to use" countries. In some other countries, however, rights can only be obtained by registering marks. These countries are referred to as "first to file" countries. To find out whether the countries you are interested in are "first to use" or "first to file" countries, contact us. Even if you have common law rights in your trade mark through your use of it, these rights can be difficult to enforce. It is much easier (and usually a lot cheaper) to stop others using your mark unlawfully if the mark has been registered. Registrability Not all trade marks are registrable. For a trade mark to be registrable, it must be new and it must be distinctive. If the trade mark is not new or distinctive, it will not be possible to get a valid trade mark registration. A trade mark is only considered to be "new" if no-one else has used or registered it (or a similar mark) for use on products or services the same or similar to yours. For a trade mark to be distinctive, it must be more than just an obvious word or picture and it must not describe the nature or any features of the product or service concerned (for more details, click here). Trade Mark Searches

How do you know whether or not your mark is new? The best way is to have us conduct and/or arrange for searches of the relevant local and international databases (some of which can be accessed by subscription or by attendance only), to see whether there are any marks similar to yours already registered or for which an application for registration has been filed. Other searches can also be conducted to assist in determining whether there are similar marks in use, but which have not yet been registered or for which an application for registration has not yet been filed. Searching requires not only finding relevant marks but also the analysis of those marks and their registration documents to determine whether or not they might pose any difficulties for your mark. You can conduct your own preliminary searching on the internet by searching the few online databases, to get an idea as to whether your mark might be new. Also you can type your mark into several search engines to see what comes up. Unlike patents, however, international searching of registered trade mark databases on the internet tends to be a charged service only, although some patent offices (such as the US Patent Office and the Australian Intellectual Property Office) do provide limited free searching services online. If you find marks that look close to, but are not the same as your mark, contact us and we will advise you as to whether or not they could prevent you from obtaining a valid trade mark registration. Infringement If relevant marks are uncovered in a search, we need also to consider the risk, if you use your mark, of you infringing another's trade mark rights. That is, using a mark that is covered by someone else's trade mark registration or common law rights. If you infringe someone else's rights this could be very costly. It is therefore important to conduct what is called an "infringement clearance search" (a search to determine whether you could infringe someone else's rights) prior to launching any new mark onto the market.

More detailed information about trade marks

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What are registered designs?

Definition Designs or, more correctly, design registrations or design patent registrations, cover the external appearance of newly developed industrial products or patterns as applied to new or existing products. Registered Design Rights A design registration entitles you to stop others from making and using your design for a fixed period of time or "term", in some countries 25 years, in some only 10 years. Without a registration, you cannot in general prevent others from making and using your design. Registrability Not all designs are registrable (eligible for design protection by registration). For a design to be registrable, it must be new. If the design is not new, it will not be possible to get a valid design registration. A design is generally only considered to be "new" if it has not been shown or described to the public (whether in a publication, by exhibition or verbally) worldwide

prior to filing a design application. Selling, getting orders or trying to get orders can also make a design registration invalid. You must therefore keep all new designs secret if you want to obtain valid registrations for them in the future. If you want to discuss your designs with anyone, make sure it is in the strictest confidence. A confidential disclosure agreement is advisable. It would be best to contact us and discuss your plans before telling anyone about your design. Design Searching How do you know whether or not your design is new? The best way is to have us conduct a search of the relevant local and/or international design records (most of which require manual searching), to see whether there are any publications which show your design. Searching requires not only finding relevant documents but also the analysis of those documents to determine whether or not they might pose any difficulties for your design. Infringement If relevant publications are uncovered in a search, we also need to consider whether, if you make or use your design, you will be infringing another's design rights. That is, making or using a product which is covered by someone else's design registration. If you infringe someone else's rights this could be very costly. It is therefore advisable to conduct what is called an "infringement clearance search" (a search to determine whether or not you could infringe someone else's rights) prior to launching any new product onto the market. Functional Designs and Parts of Products In addition to the requirement that a design must be new, in most countries, designs must also have aesthetic features (features which appeal to the eye and not just features which are dictated solely by the product's function). Also, many countries restrict designs to whole products so that a design registration cannot cover only part of a product.

More detailed information about trade marks

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What is copyright?
Copyright Copyright is the right to prevent others from copying original "works". "Works" that are covered by copyright in most countries include computer software, many logos (but not brand names), written text, music, photographs, artworks, sculpture and design drawings. Copyright exists automatically from the moment you complete a work and it is wise to clearly date and file copies of any new works, or even better, send dated copies by registered post to yourself. That way, you will have firm evidence of the date on which a work was created. Copyright only covers the outward manifestation of a work and not any concepts behind it. Patents cover concepts. Copyright also only protects you from almost identical copies, or copies which include a "major part" of the original work. Copyright, for example, may not prevent others from using a logo confusingly similar to yours, whereas a trade mark registration would. Further, if you wish to take action against copiers, you must prove ownership of your work and the date on which it was created (not always straightforward)

whereas if you have a patent, design or trade mark registration, the registration certificate is proof enough. In general, you should only rely on copyright protection if patent, design or trade mark protection is not appropriate. For example, works of fine art or books can only be protected by copyright. Software Software also is best protected by patent registrations if possible. That computer programs are best protected by copyright is a common misconception. Patents may be an investment, but they are usually much easier to enforce, and a much better deterrent to infringement, than copyright protection. In addition, those seeking venture capital for software related inventions would perhaps have more success if an application for patent protection had been filed (and published) before approaching potential investors. A patent application tends to create the impression, rightly or otherwise, that inventors are serious about their invention, that the software is unique, and that the investor will have good, strong protection for the invention should they choose to purchase it or to invest. Further, patents are assets and particularly startup software or Internet companies can be lacking in identifiable assets to present to investors. Back to top

What are "common law rights" (in trade marks)?

Definition In some countries, rights in a trade mark belong to the company or individual who first used the mark, even if the mark has not been registered. These unregistered rights in a mark are called "common law rights" since they are rights given by virtue of court decisions in "common law" countries (countries using a UK-style legal system). Some countries having other types of legal systems sometimes protect rights in unregistered marks in a way similar to the common law right, but most do not. In many Asian countries, the first person to file a trade mark application will have rights in that mark regardless of any earlier use by another person. Common Law vs. Registered Rights So, if rights in a mark exist in some countries from the day the mark is first used, what is the point in registering marks in those countries? The point is that a trade mark registration is clear prima facie ("on the face of it") evidence that you own the rights in a mark. It is an official document on which the mark and the goods/services it covers are shown. Without a trade mark registration, you are left with the job of proving that you were the first to use a mark, which can be a very time consuming, sometimes quite difficult (if insufficient records have been kept), and expensive process - usually much more expensive than the cost of a trade mark registration. Quite often, those who have copied your mark can be convinced to cease their activities merely by showing them your trade mark registration, whereas you will usually need to go to court to enforce common law rights. Somehow "I can prove I own the rights in this mark" is not quite as effective as "here's my official trade mark registration certificate"!

Also, your rights obtained by use of a mark will be of assistance only in those countries in which you have used it. If you have not yet used your mark in a particular country, but you wish to retain the right to use your mark in that country in the future, the only way to do so is to register your mark in that country. Back to top

What is the Paris Convention ("claiming priority")?

Definition The Paris Convention is an agreement signed by almost all the countries of the world and it concerns a number of aspects of intellectual property practice in the signatory countries. The most important provision of the Convention is that which provides for the "claiming of priority". Background - Registrability A valid patent or design registration can only be obtained when the invention or design concerned has not been made public prior to the filing of an application for registration. A valid trade mark registration can only be obtained where no one else has already registered or applied to register the same or a similar mark. This means, technically, that applicants cannot start marketing their inventions or designs until applications have been filed in all countries of interest. For trade marks it means that there is a risk of others filing similar applications if an application is not filed in all countries of interest simultaneously. The Problem It was noted some time ago that this placed an unreasonable burden on applicants as it is often not until an invention or design is marketed or a trade mark launched that applicants are in a position to decide whether or not to proceed with further protection and in which countries. The Solution A system was therefore set up under the "Paris Convention" allowing for the filing of a first application in a country signatory to the Convention (by a national, resident or entity having a real and effective presence in that country) and the filing of subsequent applications in other signatory countries within one year (for patents) or six months (for designs and trade marks) of the date of filing the first application, the filing date of the subsequent applications being effectively back-dated to the filing date of the first application. The subsequent applications are said to "claim priority" from the earlier first filed application and are often referred to as "convention applications" (filed under the terms of the Paris Convention). The first filed application is referred to as the "priority application" and its filing date is called the "priority date". It is important to remember that priority may only be claimed if the invention, design or trade mark shown or described in the subsequent applications is the same as that shown or described in the priority application. "Priority Deadline" The "priority deadline" is therefore one year for patents, including utility models, short term patents, and petty patents, or six months for designs and trade marks, from the date of filing

of the first application. The priority deadline is not extendible. If the priority deadline is missed, and if the invention or design has been made public (in a publication or by way of use) in the time since the first application was filed, or another person has filed an application for registration of a similar mark in the time since the first application was filed, it will not be possible to obtain a valid registration. Signatories to the Convention The vast majority of countries are now signatory to the Paris Convention, Taiwan being the only remaining major industrial country not to have signed, for political reasons. Other countries which are also not signatories to the Paris Convention include Kuwait. However, as Taiwan and Kuwait are members of the WTO and signatories to the TRIPS agreement, they are bound to comply with the articles of the Paris Convention which provide for the claiming of convention priority. If patent protection is desired in Kuwait, a patent application will usually have to be filed in Kuwait before there is any public disclosure of the invention. (Although it should be noted that Kuwait is a party to the Gulf Cooperation Council (GCC) Treaty and priority can be claimed by filing a GCC patent application instead) Further, some important island states are not members of the Paris Convention, notably Jersey and Guernsey. The Isle of Man is a member under the UK membership. Back to top

What is the Patent Cooperation Treaty (the "PCT")?

Definition The Patent Cooperation Treaty (the "PCT") established what is known as the "PCT System" of filing patent applications and there are now over 100 signatory countries. The PCT system is a very popular method of filing patent applications throughout the world. The PCT system allows applicants to file a single patent application in one country and for up to 30 months retain the option of filing a corresponding application in a large number of other countries. The PCT system can therefore be thought of as an (expensive!) extension of time for filing patent applications world wide, though it can provide more benefits than a mere extension of time. Filing a PCT Application PCT applications may be filed either in a local approved Receiving Office or directly at the International Bureau in Geneva which is administered by the World Intellectual Property Organisation (WIPO). PCT applications usually claim priority from a local ordinary patent application, but they may also be filed direct. "International Phase" and "National Phase" PCT applications have two phases, an "international phase" when they are international applications in the International Bureau, and a "national phase" when they are converted to local patent applications in all the countries of interest. During the international phase, the designated International Searching Authority (a Patent Office which has been authorised by WIPO to conduct international patent searches) conducts a patent search for any relevant existing technology and an International Search Report is

provided within around six months of filing to assist the applicant in deciding whether or not to proceed with patent protection. The Search Report also includes a written opinion giving a preliminary reasoned view of the patentability of the invention. The patent specification is also published by the International Bureau. Chapters I and II of the Treaty The PCT Treaty is divided into two Chapters, Chapter I and Chapter II. Chapter I includes the Search Report and written opinion and requires that within either 20 or 30 months of the earliest priority date, (depending on whether or not the country concerned has adopted the most recent amendments to the PCT Treaty), the applicant must "enter the national phase" that is, file patent applications in any one or more of the countries initially designated. Chapter II allows 30 months from the earliest priority date for entering the national phase and also requires a designated International Preliminary Examining Authority (a Patent Office which has been authorised by WIPO to conduct international examinations) to conduct a nonbinding substantive examination of the patent specification to determine whether or not it meets the usual requirements for patentability now generally similar in most countries. The applicant may respond to the written opinion issued with the search report, with reasoned arguments and/or amendments to the specification, but is not obliged to do so. The examiner considers the applicant's response and establishes an International Preliminary Examination Report, which is forwarded to the patent offices of each of the designated countries. Entry into the "National Phase" The national phase applications are filed in each country of choice just as a usual application would be filed. As there is extra paper work, PCT national phase applications often cost a little more than a normal direct filing. However, the fact that difficulties with the specification can often be sorted out before the national phase applications are filed, can mean substantially reduced prosecution costs. Local Patent Office examiners often agree with the opinions of the international examiners and therefore may not need to raise additional objections unless the international examiner's objections have not been adequately dealt with by the applicant. Advantages of the PCT System The advantages of a PCT application are significant. A patent attorney can usually tell from the International Search Report and Written Opinion what the chances are of obtaining patent protection in the countries of interest. If there appears to be no prospect of obtaining a patent in any country, the international application can be abandoned and the applicant loses only the cost of filing a PCT application instead of the much greater cost of filing applications in every country of interest. In addition, the applicant gets 18 months more than if ordinary convention applications were filed to test the market and/or the product to determine whether or not to proceed with patent applications and in which countries; and/or indeed to raise capital to fund the filing of national phase applications. Back to top

What is the Madrid Agreement/Protocol (international trade marks)?

Definition

The Madrid Agreement and the Madrid Protocol are international treaties administered by the World Intellectual Property Organisation (WIPO). They provide a system by which trade mark owners may seek protection for their trade marks in a number of countries by means of a single application. Applications filed under the Madrid Agreement or Madrid Protocol are called "International Trade Mark Applications" and have the same effect as a bundle of trade mark applications filed in the countries designated. International trade mark registrations are issued by WIPO within a few months of filing, but each country may still conduct an examination of the registrations and raise objections in accordance with their local trademark law. Objections must be made within specific time periods. Why Two Treaties? The Madrid Agreement and the Madrid Protocol differ slightly in procedure, but have the same overall effect. There are two treaties because it was not possible to obtain sufficient consensus in the international community for a single treaty to suffice. Countries may decide to be a member of either or both treaty. Filing an International Application Applications under the Madrid Agreement and Madrid Protocol are available only to applicants which are citizens of, are resident in or have a "real and effective presence in" a member country. To file a Madrid Protocol application, you must have an application for registration of your mark in your home country, but your mark need not have been registered yet. For a Madrid Agreement application, your mark must already have been registered in your home country. The cost of obtaining a Madrid Agreement/Protocol registration is approximately equal to the cost of filing applications in 3-4 individual countries. Remember, however, that each country has the right to object and further costs can be incurred after registration if objections are raised. Back to top

What is the European Patent Convention?

Definition The European Patent Convention (EPC) established a system of filing patent applications which cover, if desired, most European countries. The EPC system is a very popular method of filing patent applications in Europe as the cost is about the same as filing three national applications. Click here for an up-to-date list of signatories to the European Patent Convention. Filing a European Patent Application The EPC system allows applicants to file a single patent application in the European Patent Office. A European application may claim priority from a local ordinary patent application. On filing a European application, the applicant must designate the European countries it is proposed that the eventual registration will cover. Most applicants designate all countries in order to keep their options open. The European Patent Office then conducts a search and examination of the application. Providing any difficulties with the application are overcome, a

European Patent will be granted. Once granted, the patent will come into effect in each designated country providing any requirements for translation of the patent are satisfied in good time. Back to top

What are Community Trade Marks?

Definition Community Trade Marks (CTMs) are a single trade mark right effective in all member countries of the European Union (EU). This is different from International Trade Marks registered under the Madrid Agreement/Protocol which results in a bundle of trade mark registrations and also covers countries outside the EU. As a CTM registration automatically covers all EU countries, specific countries cannot be selected. Cancellation for Non-Use - Benefit of the CTM System In all countries, if a mark is not used for a set period of time, usually 3-5 years from the registration date, on any of the products or services for which it is registered, it can be cancelled on application by a third party. The advantage of a CTM registration is that it is not necessary to have used a mark in all of the member states of the EU separately. Use in just one state is generally thought to be sufficient to maintain a CTM registration. Filing a CTM Application It is not necessary to be a citizen of, resident in or to have a "real and effective presence in" an EU country to apply for a CTM registration although the applicant must be a citizen of, resident in or have a "real and effective commercial establishment" in a WTO or Paris Convention country. Applications are handled by the Office for the Harmonisation of the Internal Market (OHIM) in Alicante, Spain. The cost of obtaining a CTM registration is approximately equal to the cost of obtaining registration in 2-3 individual countries. Back to top

What are Registered Community Designs?

Definition Registered Community Designs (RCDs) are a single registered design right effective in all member countries of the European Community (EC). This is different from International Designs registered under the Hague Agreement Concerning the International Deposit of Designs which results in a bundle of trade mark registrations and also covers countries outside the EU. As a Registered Community Design automatically covers all EU countries, specific countries cannot be selected. Broader Range of Designs Protectable More designs can be registered as Registered Community Designs than were previously registrable in each European country individually. Registrable designs can include textile designs, packaging, get-up (the overall look of a product including a combination of, for example, bottle shape, decoration and logos), graphic symbols (including logos) and typographic typefaces. Also, parts of products may be registered providing the part is visible during normal use and the design of the part is not purely so that it will fit with another part.

Registered Community Designs provide protection for the design itself rather than the design as applied to a particular product. This may broaden protection to cover the design as used on any product, depending on the design. Whilst designs that are dictated purely by the function of the product are not permitted, it is not necessary for the design to have any aesthetic quality. Only "individual character" is required. This opens up protection to industrial products where the design is new and different but not necessarily aesthetic. Filing an RCD Application It is not necessary to be a citizen of, resident in or to have a "real and effective presence in" an EC country to apply for an RCD although the applicant must be a citizen of, resident in or have a "real and effective commercial establishment" in a WTO or Paris Convention country. Applications are handled by the Office for the Harmonisation of the Internal Market (OHIM) in Alicante, Spain. The cost of obtaining an RCD is approximately equal to the cost of obtaining registration in 2-3 individual countries. Back to top

What is the Hague Agreement Concerning the International Deposit of Designs ("International Designs")?
Definition The Hague Agreement Concerning the International Deposit of Designs is an international treaty administered by theWorld Intellectual Property Organisation (WIPO). The Agreement provides a system by which design owners may seek protection for their designs in a limited number of countries by means of a single application. Applications filed under the Hague Agreement are called "International Design Applications" and have the same effect as a bundle of applications filed in the countries designated. International design registrations are issued by WIPO within a few months of filing, but each country may still conduct an examination of the registration and raise objections in accordance with their local design law. Objections must be raised within specific time periods. Filing an International Design Application Applications under the Hague Agreement are available only to applicants that are citizens of, are resident in or have a "real and effective industrial or commercial establishment in" a member country. Any international design application must be filed within 6 months of filing in your home country, if you want the International application to claim the date of filing in your home country (see "What is the Paris Convention (claiming priority)?", above. It is not necessary to have registered your design in your own country before filing an application for an international design registration. The cost of obtaining an International Design Registration is approximately equal to the cost of filing applications in 3-4 individual countries. Remember, however, that each country has the right to object and further costs can be incurred after registration if objections are raised. Back to top

What is the Budapest Treaty?

Definition The Budapest Treaty is a treaty concerning the deposit of microorganisms that are the subject of a patent application. Most major countries are signatories to the Treaty. Background - Reason for the Treaty's Existence In order for a patent to be granted, it is necessary for the patent specification to describe the invention concerned and then for this description to be made public by way of publication of the printed patent document. Where an invention involves a microorganism or the use of a microorganism, it can be very difficult or often impossible to describe the invention properly in writing. In these situations it is necessary instead to deposit samples of the microorganism concerned with a specialised institution. Depositing samples of a microorganism in each country in which protection is sought is difficult and expensive and the Budapest Treaty therefore provides that the deposit of a microorganism with any one "International Depositary Authority" acts as deposit for the purposes of patent procedure in each of the contracting States and before any regional Patent Office (if such a regional office recognises the Treaty - the European Patent Office does). International Depository Authorities An "International Depository Authority" is a scientific institution which is capable of storing microorganisms. Samples of microorganisms are made available to the public by the Authority. Back to top

What do "TM", "SM" "patent pending" "regd. patent no." "regd. design no.", "design patent no.", "" and "" mean?
"TM" - This stands for "Trade Mark" and it means that the word or brand name concerned is being used as a trade mark by the company identified on the packaging. In countries that provide for common law rights, "TM" can imply that the company may claim some rights in the mark by virtue of their use of it, but this is usually only the case if they have used it for long enough and in such a way that consumers, on seeing the mark, think of that company's products. A lot of companies put "TM" next to words or expressions which they could never hope to claim for their own, such as "simply the best". Therefore, just because the letters "TM" are next to a word or expression, does not necessarily mean that you cannot use it, but you must contact a trade mark attorney before you do, to ensure you will not be infringing the rights of others. "SM" - has the same effect as "TM", but it stands for "Service Mark". Service marks are brand names and logos used in connection with services and are essentially the same as trade marks. See above under "TM". "Patent Pending" - this means that an application for registration of a patent has been filed, but the patent has not yet been or may not ever be granted. The use of the expression "patent pending" on a product doesn't necessarily mean that the company concerned owns any rights in the concept behind the product. Rights are awarded only on grant of a patent. You should

contact a patent attorney for assistance in determining whether or not you can make, use or import the product concerned. Further, patents are territorial, they only cover a single country (in general - an exception is the European Patent). Therefore, just because a patent is pending in one country, does not necessarily mean that the company concerned will be able to protect their invention in other countries. Again, your patent attorney can assist you in determining which countries might be covered. "Regd. Patent No." - This usually means that the concept behind the product concerned has been patented in at least one country. Patents are territorial, they only cover a single country (in general - an exception is the European Patent). Therefore, registration of a patent in one country does not necessarily mean that the company concerned has registrations in other countries. You should contact your patent attorney for assistance in determining in which countries the product has been patented. Your patent attorney can also tell you whether the patent referred to does in fact exist and if it does whether it is still in force. "Regd. Design No." or "Design Patent No." - This usually means that the external design of the product concerned has been registered in at least one country. Design registrations and design patents are territorial, they only cover a single country. Therefore, registration of a design in one country does not necessarily mean that the company concerned has registrations in other countries. You should contact your patent attorney for assistance in determining in which countries the design has been registered or patented. Your patent attorney can also tell you whether or not the design registration or design patent referred to does in fact exist and if it does, whether it is still in force. "" - This stands for "registered trade mark" and usually means that the trade mark concerned has been registered in at least one country. Trade marks are territorial, they only cover a single country (in general - exceptions are theInternational Trade Mark and the Community Trade Mark). Therefore, registration of a trade mark in one country does not necessarily mean that the company concerned has registrations in other countries. You should contact your trade mark attorney for assistance in determining in which countries the trade mark has been registered. Your trade mark attorney can also tell you whether or not the mark is in fact registered, since the "" can sometimes be used incorrectly when a mark has not been registered, and whether any registration is still in force. "" - This stands for "copyright" and means that the author claims copyright in the work to which the symbol is affixed. This is a worldwide right and will generally mean that you cannot copy the work concerned in any country. You should, however, contact your patent attorney as sometimes the copyright may have expired or the work concerned may not be protectable by copyright in your country (for example, designs of industrial products are protected by copyright in only a very few countries), in which case you may be free to copy it. Back to top

What is "passing off"?

Definition "Passing off" is when someone else uses your trade marks, packaging, name, colours or other features which identify your products to consumers, in a way that misleads consumers into thinking that another company's products are yours. They are "passing their products off" or "misrepresenting" them as yours. The law of passing off has been developed by the courts in common law countries, that is, countries having a UK style legal system. Countries with other types of legal systems sometimes have law similar to that of "passing off" embodied in other laws such as "unfair competition law" or "fair trading law". In common law countries (including countries where Marks & Clerk has offices - the UK, Hong Kong and Singapore, but not China), it is generally necessary to show the following in order to be successful in a passing off action: 1. That there has indeed been misrepresentation. That is, that someone else's products have been misrepresented as your products. 2. That the misrepresentation was made by a trader in the course of trade; and not just someone putting home-made lemonade in your wine bottles for home consumption, for example. 3. That the misrepresentation has been made to customers or prospective customers of the trader or consumers of the product; and not just in an internal seminar, for example. 4. That the misrepresentation has been calculated to damage your business or it is reasonably obvious that this would be a result of the misrepresentation. 5. That the misrepresentation has caused you actual damage (i.e. loss of sales, customers or orders) or will probably do so. As you can see, there are a lot of requirements for a successful action for passing off and it is therefore a complex and usually quite drawn out and expensive business. It is always better to register your trade marks than to rely on passing off. Back to top

What are Plant Variety Rights?

Definition Plant variety or plant protection rights are rights given to plant breeders to protect new strains and breeds of plants. They are similar to patents in that an application must be filed and an examination must be undertaken by the plant variety rights office examiners who may raise objections which must be dealt with before a registration certificate can issue. Plant variety rights are unique, however, in the nature of the technology they cover. Actual samples of plants are required to be propagated (grown) to prove the distinctiveness, novelty, uniformity and stability of the strain. They must be correctly named using special international nomenclature and these names will be permanently associated with the strains regardless of who propagates them in the future (which makes these names quite different to trade marks). Back to top

What are Supplementary Protection Certificates?

The granting of a patent for a pharmaceutical product or a plant product is often not the end of the story - official Government marketing authorisation for the product usually has to be acquired and this can take many years. The time taken to gain marketing authorisation can significantly reduce the effective term of the patent and it may therefore become less profitable, or possibly uneconomical, to develop medicinal or plant products. To avoid this problem there is now a Europe-wide system of Supplementary Protection Certificates (SPCs). SPCs are available for pharmaceutical products arising out of pharmaceutical inventions and for plant products. SPCs extend the duration of protection conferred by the basic patent for the "active ingredient" or combination of active ingredients of a medicinal product or for the "active substance" or combination of active substances of a plant product, in cases where the granting of first marketing authorisation has delayed the commercialisation of a product. SPCs do not extend the life of the basic patent. The duration of an SPC is calculated as the period between the date of filing of the patent application and the date of granting of the first marketing authorisation in any of the EEA member countries, less five years. The maximum duration of an SPC is 5 years, starting from expiration of the basic patent. SPCs must be obtained nation by nation throughout the EEA and the rules vary slightly. The SPC must normally be applied for within six months of the date on which the first marketing authorisation was granted. However, if the authorisation was granted before the grant of the patent, the six month period runs from the date of grant of the patent. Back to top Click here for Marks & Clerk Solicitors site
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