Trade Marks vs Other Types of IP: What’s the Difference?

Trade Marks vs Other Types of IP: What’s the Difference?

Trade marks are a very cost-effective and powerful tool which businesses often overlook when starting a new venture. In some ways, trade marks are the ultimate form of IP protection, because if granted, they allow you to monopolise the public’s association between certain words or a logo and your business. This means you have ownership over your intangible “goodwill”, which otherwise cannot be protected by other forms of IP. I often hear people talk about “patenting” or “copyrighting” their brand name, when they really mean is obtaining a trade mark. While frustrating, such confusion is understandable, given the overlaps between these forms of IP, and the fact they are often used together as part of a broader IP protection strategy. In this brief, I will try to clarify this issue by discussing and contrasting trade marks with other forms of IP, namely, copyright, patents and trade secrets.

Trade Marks

A trade mark allows the owner the exclusive right to prevent others from using any confusingly similar mark over similar services. This is done by comparing the look and sound of the marks, as well as the trade channels where the marks appear, and if this would lead to confusion, you can sue for trade mark infringement. Trade marks can also be used in other ways, such as forcing others to hand over a website address incorporating your trade mark.[1] Trade mark rights are territorial and usually last 10 years in each jurisdiction, but can be renewed indefinitely. Unregistered trade mark rights exist at common law, but these are typically subject to the rights of the “official” registered trade mark.

Copyright

Unlike trade marks, copyright arises automatically without requiring any formal registration procedure, and typically lasts for the lifetime of the author plus at least 50 years, depending on jurisdiction. Copyright protects the particular expression of a concept embodied on a physical medium, but not the “idea” behind the concept itself. Therefore, if you develop some unique tools, software or business processes, you typically can’t use copyright prevent someone else from using the same idea to compete with you if the actual “expression” is not copied. While it may be possible to have “copyright” in an original slogan or logo, it will be unlikely to protect a “brand name” because it would need to qualify as an original artistic work. Therefore, copyright is a distinct form of IP.

Patents

Patents, unlike copyright, allow protection of the broader “idea” embodied in an invention.[2] However, patents can cost tens of thousands of dollars to obtain, and only protect novel and inventive ideas as specified in patent “claims”. Further, patents only last for 20 years and do not protect a brand name or abstract concepts such as “goodwill”. While you cannot patent a brand, it is possible to obtain a “design” patent over the unique shape and ornamental features of your product as shown in a drawing. An example is a design patent over the distinctive shape of the Apple iPad (see http://www.google.com/patents/USD670286). Design patents are much cheaper to obtain than standard patents, but only last for 14 years. It is also possible to obtain trade mark and copyright protection over a unique “shape”.

Trade Secrets

Trade secrets can be used as a strong form of IP protection, typically in combination with other forms of IP. Like patents, trade secrets allow you to protect an idea, but unlike patents, they rely on you maintaining confidentiality over it. Therefore, trade secrets are only valuable if your idea cannot be reverse engineered. If a process for making an end product can be kept secret, trade secrets can be used effectively in conjunction with trade mark rights to provide protection indefinitely. An example is the powerful “Coca-Cola” brand and formula, which has been kept secret for over 100 years and is worth billions of dollars. Software, although mainly protected as a copyrighted work, can also be kept a trade secret. For example, restricting access to “source code” or only allowing access to “software as a service” via a browser, can make it very difficult to reverse engineer software.

Conclusion

Compared with the other forms of IP protection mentioned above, trade marks allow you to “own” the unique goodwill generated by your business model which might otherwise have insufficient protection under copyright, patent or trade secret laws. Trade marks can be used in a licence agreement  to control the distribution and quality of your products. For example, trade marks are used by franchisors to control franchisees, assign territories, and ultimately leverage the power of the franchises’ unique systems, processes and business models. Strong trade marks are therefore useful for any business that wishes to spend time and money building up a reputation in the market and own the goodwill in that reputation. They can also be used synergistically as part of a broader IP protection strategy.

[1] For example, WIPO offers a Uniform Domain Name Dispute Resolution services to force the transfer of URLs provided you can establish trade mark rights over the URL and the opponent has registered the URL in bad faith for the purpose of resale to you. See http://www.wipo.int/amc/en/domains/gtld/.

[2] Assuming that the idea or invention is not too abstract, such as a business method or software algorithm not embodied in some physical medium. Patentability of software will be covered in a subsequent blog.

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