Preface xv
About the author xvii
1 Creating and Identifying Your IP 1
Trade marks 2
What can you register as a trade mark? 2
What cant you register as a trade mark? 4
Always conduct pre-emptive searches 6
Unregistered trade marks 9
Use of the and TM symbols 10
Copyright 12
What is copyright all about? 12
What attracts copyright protection? 13
What does not attract copyright protection? 14
Protecting your ideas 15
Make sure that you own the copyright 15
Period of copyright protection 18
Moral rights 19
Database right 20
What is database right? 20
What protection does database right give you? 21
In what respect do you need to bother with database right for the purposes of your brand strategy? 22
Designs 23
UK registered designs 24
UK unregistered designs 27
European Community designs (registered and unregistered) 28
Overlap between trade marks and designs 31
Benefi ts of registering device marks/logos as designs 32
2 Registering Your IP 35
Trade marks 36
The Nice classification system 36
UK registrations 37
Community registrations 44
International registrations 49
The standard Nice classification of goods and services for trade mark registrations (from January 2007) 52
Copyright 71
No UK registration system 71
The international protection available for copyright works 71
Use the symbol 73
Designs 74
UK registration procedure 74
Community registration procedure 77
3 Housekeeping Your Trade Mark Portfolio 81
Housekeeping tips for preserving and protecting your trade mark portfolio 82
Register your trade marks in the name of the same proprietor 82
Be consistent when using your trade marks 83
Do not allow your trade marks to become generic 86
Conduct regular trade mark audits 87
Certificates 89
Keep accurate and accessible records 89
Renewal dates 91
4 IP and Your Employees 93
IP and employees 94
What to include in your employment contracts and why 94
Confidentiality clauses 95
Moral rights and waiver 96
Commissioned works/Contractors 97
Communicating to all employees the importance of IP 98
Chain of command 99
5 Exploitation of Your IP 101
Exploitation of your IP 102
What is the difference between a licence and an assignment? 102
Exclusive/Non-exclusive 104
Registration implications 105
Registrations by rogue licensees 106
Standard protective licensing provisions 107
Franchising 110
Mortgaging/Selling off unused IP 111
6 Policing Your IP 113
Policing your IP 114
Why is it important to monitor your IP for potential third party infringements? 114
How can you find out if somebody is infringing your intellectual property rights? 114
Which governmental or public agencies can help you? 115
How can private service providers help you monitor your intellectual property for infringements? 119
7 How Are Your IP Rights Infringed? 127
Registered trade marks 128
Advantages of registering 128
Acts of civil infringement 128
Criminal trade mark offences 131
The grey market goods problem 132
Copyright 136
Acts of civil infringement 136
Defences to civil copyright infringement 139
Criminal copyright offences 140
Designs 142
UK registered designs 142
UK unregistered designs 144
Compulsory licensing of your unregistered design 147
Community designs (registered and unregistered) 147
Criminal offences 148
8 Enforcing Your IP and The Remedies Available To You 149
How to react to an infringement of your rights 150
Do you have a clear reporting procedure and chain of command? 150
The need for speed 151
The importance of a confusion log 151
Cease and desist letters 153
A word of warning about making unjustified threats 154
Website infringements and service providers 155
What next? 157
Remedies 161
Injunctions 162
Delivery up, recall, seizure and destruction 169
Damages/Account of profits 171
Disclosure of the identity and whereabouts of other wrongdoers and information on infringing products 174
Publication of judicial decisions 175
9 How To Avoid Infringing Other Peoples IP 177
How to avoid infringing other peoples IP 178
10 Registering and Protecting Your Domain Names 183
Domain names 184
What is a domain name? 184
What is the value of a domain name? 184
Registering a domain name? 184
Problems with the registration system 185
Disputes 187
Trade mark infringement/passing off 188
Alternative dispute resolution 189
11 The Take-Home Message 195
The dos and donts of brand strategy 196
Trade mark registrations 196
Trade mark portfolios 198
Trade mark infringements 202
Design registrations 205
Copyright 207
Database right 210
Domain names 211
Index 213
