Techcelerate Workshop – Intellectual Property and Trademarks by Kirsty Brummell of Trademarktonic

Techcelerate Workshop 25 (2nd Sep 2020) – Intellectual Property and Trademarks by Kirsty Brummell https://www.trademarktonic.com/

Slides are for informational purposes only and not to be taken as legal advice..
About Techcelerate Ventures

Tech Investment and Growth Advisory for Series A in the UK, operating in £150k to £5m investment market, working with #SaaS #FinTech #HealthTech #MarketPlaces and #PropTech companies.
Trade mark design Application protect File work
About Techcelerate Ventures

Tech Investment and Growth Advisory for Series A in the UK, operating in £150k to £5m investment market, working with #SaaS #FinTech #HealthTech #MarketPlaces and #PropTech companies.
Trade mark design Application protect File work
Introduction to 
Intellectual 
Property
Dr. Kirsty Brummell
Defining 
Intellectual 
Property
Intangible property resulting from creativity and innovation
Patents
Confidential 
Information /
Know-How 
(Trade Secrets)
Plant Varieties
Database 
Rights
Why protect 
Intellectual 
Property?
➢ To stop other businesses/individuals from using what you 
have created without permission i.e. your brand name, 
designs, literary works, artistic works, invention
➢ Can help act as a deterrent to competitors and other businesses 
from using your IP 
➢ Helps you to control your business reputation and the value of your IP
➢ Provides you with opportunities to maximise on the commercial 
potential of your IP through e.g. licensing and sales agreements
➢ Can help attract investors when they are looking at whether to 
invest in your business 
Trade Marks  
Badge of 
Origin
A trade mark means any sign which is capable of 
distinguishing the goods or services of one 
business/individual from those of other traders 
Main brand 
name
S logo
Cartoon character
Front of pack design
Other types 
of Trade 
Marks
Slogan
Shape
Colour
Position
Pattern
Tips for 
Selecting a 
Brand Name
✓ The more inventive, unusual, unique your brand 
name/logo is, the easy it will be to protect as a     
Trade Mark and stronger rights
✓ Avoid descriptive terms for your main brand name in 
relation to products or services offered where 
possible 
✓ Avoid common terms in use in the general language 
and in your trade
✓ Avoid using a brand name that could create confusion 
as to the nature, quality or geographical origin of your 
products or services
✓ Think about long term strategy and whether your brand 
name/logo will be suitable if your business expands into 
other product and service areas and markets
How to 
protect your 
Trade Mark
Trade Mark law in the UK is governed by the UK Trade Marks Act (1994)
Registered Trade Mark Rights
❖ The best way to protect your brand name/logo is through trade 
mark registration
❖ Trade marks are territorial rights and trade mark applications can be 
filed at national Trade Mark Offices e.g. at the UK Intellectual 
Property Office or via an International Madrid trade mark system 
(country designations).
Unregistered Trade Mark Rights
❖ Goodwill and reputation in relation to use of a trade mark built up 
over time
❖ Protection through the common law tort of passing off
❖ Can be more difficult to prove compared with registered TM rights
Is your brand 
name 
available to 
use and 
register?
Importance of Trade Mark Clearance Searches
▪
It is advisable to carry out proper trade mark clearance searches 
ideally prior to using and registering a brand name or logo
▪ Searches are made to determine whether there are any existing 
trade mark rights which could be used to prevent the use and 
registration of your brand name/logo
▪ Search results are analysed to determine risk levels to use 
and registration of a trade mark
▪ Searches should ideally be made in those countries 
in which you intend to sell your products 
and services
Trade Mark 
Registration 
Process
UK TM Application
File Application
Examination (3-4 weeks)
Publication in UK 
online TM journal
Opposition Period (2 months)
Registration and 
issuing of Certificate
4 months approx
- Classification system of goods (1-34) and services (35-45)
- Once registered a trade mark can in theory be renewed 
indefinitely (renewal due once every 10 years)
-
First trade mark filing can be used as priority date for further 
TM Applications within 6 months of original filing date
Trade Mark 
Applications 
In Other 
Countries
Overseas Trade Mark Applications
o Nationals – TM Applications filed in individual countries via their 
national TM Offices
o EU Application – covers 27 Member States (and also UK during Brexit 
transition period)
o
International Madrid Trade Mark System
- TM Applications filed at WIPO
- Country/Regional designations can be selected
- Based on ‘home’ TM Application
- Covers 122 countries 
- Members represent more than 80% of world trade
- Benefits are cost-effectiveness and streamlining of admin
- Disadvantages - dependent on home country App   
- time to register can take longer
Tips on using 
your Trade 
Mark
Trade Mark Use 
▪ Appropriate Trade Mark usage is important for maintaining a mark’s 
distinctiveness and preventing a possible loss of rights
▪ Use your trade mark followed by the common descriptive name of the 
goods or services where possible/appropriate e.g. DIVINE chocolate 
▪ Highlight your trade mark and place the TM or ® symbol as appropriate 
next to your main trade mark. Note that the ® symbol can only be used 
once a trade mark is registered
▪
Include a trade mark statement on your packaging/other materials and 
website to show that your trade mark is owned by your business 
▪ Where you have licensed your trade mark, you should ensure that use by 
the licensee is controlled and in line with the points above – brand 
guidelines
Introduction 
to Design 
Protection
o Designs can be protected via registered and unregistered design rights
o Registered designs protect the appearance of the whole or part of a 
product
o The definition of what constitutes a product is quite broad – any 
industrial or handicraft items (except computer programs) and can also 
include packaging, labels, cartoon characters, graphic symbols, computer 
icons, logos, patterns (textile design)
o Designs from various industries can be protected and range from every 
day design products to a one-off designer product
o A few examples of well-known design products e.g. Coca-Cola bottle 
shape, SMEG fridge, VESPA scooter
Design law in the UK is governed by The Registered Designs Act 1949
Design 
Registration 
Examples
How can you protect your Design?
3D
Character
Graphic Symbol
Dispensing
device
2D
packaging
Design 
Protection
▪ Registered Designs provide legal protection against the unauthorised use 
of your design – for up to 25 years in the UK
▪ Registrations can be obtained by filing Design Applications with the 
relevant IP Office – in the UK e.g. at the UKIPO 
▪ Registration can help attract investors and acts as a deterrent to copying 
of your design by competitors and others. Also a useful tool when 
negotiating a licence agreement
▪ Registration makes taking action against design infringement and 
copying more straightforward
▪
In order for a design to be registrable it must be new and have individual 
character
How can you protect your Design?
Design 
Registration 
Process
UK Design Application
File Application
Examination (2 weeks)
Registration and 
design published
1-3 months approx
- Representations in the form of drawings or photographs 
must be filed with the Application showing the relevant 
views of the design
- Publication can be deferred for up to 12 months (not made 
public)
-
First design filing can be used as priority date for further 
Design Applications within 6 months of original filing date
Design 
Protection 
Tips
▪ Conduct design clearance searches, ideally before using your design and 
filing any Applications
▪ Good practice to have clarity in terms of design ownership – document 
the design development process, dates, creator names, keeping originals 
safe, putting in place relevant agreements with e.g. designers when 
commissioning designs
▪
Ideally better to file Design Applications before any disclosure. Where 
disclosure required during design development process then good idea 
to have in place non-disclosure agreements with e.g. any designers and 
working partners
▪ Record the date of first public disclosure of the design (to ensure designs 
are then filed before the end of the 12 month grace period in e.g. UK)
Introduction 
to Copyright
Copyright law in the UK is governed by the CDPA 1988
➢ Copyright protects against unauthorised copying of literary, artistic, 
musical and dramatic works
➢ Protects the expression or embodiment of a work which has been 
created using some form of labour, skill or judgement
➢ Comes into existence automatically once a works is created and 
recorded in some form
➢ The term of copyright protection for literary, artistic and musical works 
is the life of an author plus 70 years
➢ The author of copyright is generally the first owner of copyright (usually 
creator of the works)
Copyright 
Tips
➢ Take steps to ensure that you or your business owns the copyright in the 
works created where possible – through direct creation or where a 
designer has created by taking an assignment 
➢ Any original works are kept safely and evidence of the date of creation, 
creator and date works are published to the public are recorded
➢ Document the process of creation of your copyright works by taking e.g. 
photos/videos
➢ Marking your copyright work and materials with the © symbol can help 
act as a deterrent against copying
➢ Having an IP professional countersign your original works, to show that 
it has been seen on a given date and represented as being an original 
work of the author
How can you help protect your Copyright?
Introduction 
to Patents
➢ Patents protect inventions – something that can be made or used
➢ Territorial rights – Applications can be filed either via National (UKIPO), 
European (EPO) or International (PCT) routes
➢ In order for a Patent to be granted it must be new, involve an inventive 
step and be capable of industrial application
➢ Patent Application process takes around 3-4 years to grant for UK
➢ Patents usually last for 20 years in most countries including UK
➢ Once granted a Patent enables a patentee to prevent the making, using, 
selling or importing of their patented invention (without permission)
The Patents Act 1977 is the main law governing the Patents System in the UK  
Patent Tips
➢ Consider whether your invention is patentable – does it meet 
patentability criteria?
➢ Consider ‘freedom to operate’ searches before filing a Patent 
Application to check whether a similar invention already exists
➢ Do not disclose information about your Patent to the public prior to 
filing a patent application (prior art)
➢ If working with other businesses/individuals in relation to your 
invention, make sure that they sign a non-disclosure agreement
How can you help protect your invention?
Filing TM and Design Applications
Trade Mark and Design Searches
Monitoring and Watching Services
Portfolio Management & Maintenance
IP Audits and Strategy
Enforcement & Anti-Counterfeiting
Dispute Management
Commercialisation - licensing