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Home > Human and Intellectual Capital Checklists > Intellectual Property—Registered Designs and Trademarks

Human and Intellectual Capital Checklists

Intellectual Property—Registered Designs and Trademarks


Checklist Description

This checklist offers an overview of intellectual property, with a particular focus on designs and trademarks.

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Definition

Intellectual property is a legal concept that provides for the exclusive ownership of abstract creations. It entitles the owner of such rights to charge for the use of the property or sell it.

Design is an intellectual property right that relates to the appearance of a product. Usually, a design right arises automatically when an author creates an original design, but in certain jurisdictions a design has to be registered to guarantee its protection.

A trademark is a registered symbol or sign that is created to distinguish a product from its competitors. A trademark can be a logo, name, shape, color, sound, slogan, or domain name, or any combination of these. To be recognized as a trademark, it must be distinctive—i.e. it must not be similar or identical to other trademarks. It also must not be deceptive or contrary to law. The usual duration of a trademark’s registration is 10 years, after which it must be renewed.

A trademark is protected by registering it in a specific territory or country. Each country has its own rules and regulations regarding registration. The registration process can be expensive, but it is important to consider the risks of nonregistration.

Registration of a trademark usually starts with a search to see if there are any conflicting or similar trademarks. An attorney or agent can be instructed to prepare the application. The formal application will be analyzed to determine whether the trademark meets the necessary legal criteria to be registered. Any challenges from third parties must be answered before registration is confirmed.

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Advantages

  • Registering a design or trademark allows the owner to control who uses it and how it is used.

  • Intellectual property rights allow the author of a creative work to profit from it by charging for its use or by selling or licensing the rights.

  • Registration gives the owner exclusive rights to the use of the property. This will deter others from misusing it or pretending that they are the owners.

  • Registering a design or trademark allows the owner to take legal action more easily against anyone who uses the design or trademark without permission, and to be compensated for misuse.

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Disadvantages

  • In certain circumstances registration can be expensive.

  • Not all symbols or designs can be registered.

  • In general, registration needs to be renewed periodically. Designs are protected for up to 25 years, but trademark registrations need to be renewed every 10 years.

  • Registration is limited to a particular territory. To protect designs and trademarks in other territories additional registrations are required.

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Action Checklist

  • Always consider protecting your design or trademark to avoid future problems.

  • Get advice about whether your designs or trademarks can be registered. Check out the cost of registration and the countries in which you would like them to be registered. Try to balance the cost of registration against the possible cost of nonregistration and the time spent dealing with the defense of your rights if they are breached.

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Dos and Don’ts

Do

  • Consider registering your designs and trademarks.

  • Balance the cost of registering against the risk and complications of being unprotected.

  • If necessary, involve your lawyers in the evaluation of both the risks and potential benefits of registering your designs and trademarks.

  • Decide carefully in which countries you will protect your intellectual property.

Don’t

  • Don’t think that having a design or trademark will give you protection without registration.

  • Don’t assume that all designs or symbols can be registered.

  • Don’t ignore an infringement of your design or trademark.

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Further reading

Books:

  • Poltorak, Alexander I., and Paul J. Lerner. Essentials of Intellectual Property. New York: Wiley, 2002.
  • Stim, Richard W. Intellectual Property: Patents, Trademarks and Copyrights. 2nd ed. Florence, KY: Delmar Cengage Learning, 2000.

Articles:

  • Dinwoodie, Graeme B. “The integration of international and domestic intellectual property lawmaking.” Columbia VLA Journal of Law and the Arts 23 (2000): 307.
  • Sosinsky, G. J. “Laudatory terms in trademark law: Square pegs in round holes.” Fordham Intellectual Property, Media and Entertainment Law Journal 9:2 (Winter 1999): 725–773. Online at: tinyurl.com/5re4a74

Websites:

  • Lawdit Solicitors—UK commercial solicitors specializing in intellectual property and litigation: www.lawdit.co.uk
  • Source for trademark clearance searching and monitoring: www.trademark.com
  • United States Patent and Trademark Office: www.uspto.gov

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