Too early for a Christmas update? It’s never too early to protect your IP

The battle of the Christmas adverts has begun, and already John Lewis has been accused of copyright infringement in relation to the arrangement of the song on its Christmas advert. While we make no comment on the alleged infringement, it acts as a reminder of the importance of intellectual property (IP) rights and the risks posed.

Using suitably festive examples we look (from a UK point of view) at some different types of IP rights, and how companies can try to protect themselves.

1. UK unregistered design rights – It was recently estimated that 12 million Christmas jumpers are sold annually in the UK. Perhaps, the level of competition is why some Christmas jumpers incorporate increasingly complex designs, such as 3D pop out features. Can such Christmas jumpers be protected?

Potentially, the shape of the whole/part of the Christmas jumper (excluding surface decoration such as logos and colours) could be protected by UK unregistered design rights provided it meets the requirements (such as being original and not commonplace) and the term of protection has not expired. Surface decoration sometimes can be protected under separate new post-Brexit rights and UK registered design (see section two below).

There could be infringement of that UK unregistered design right if the competing Christmas jumper copies exactly or substantially the protected design, or if a third party knows or has reason to believe that the Christmas jumper it is selling is infringing.

2. UK registered designs – Retailers have repeatedly warned of supply issues relating to Christmas toys. With demand so high at this time of year, some sellers may try to see what toys are the most popular and make their own versions. Can the designer of the original toy prevent this?

UK registered designs potentially could protect the appearance of the whole/part of a uniquely shaped toy, including surface decoration, if it meets the requirements (including that it is novel and produces a different overall impression from earlier designs).

There could be infringement if the appearance of a later toy produces the same overall impression as the registration. Unlike UK unregistered design rights, there is no need to prove copying to succeed in preventing the infringement.

3. Trade marks – What about selling a product using the name or logo of a character, film or TV show?

These names and logos potentially could be registered as trade marks. For example, “THE GRINCH” is a registered UK trade mark that includes goods relating to stationery products, clothing, games and playthings and even decorations for Christmas trees.

Not to be like the Grinch, but it could be trade mark infringement to use a trade marked name or logo on the packaging or label of your product or on the product itself.

4. Copyright – What about instead selling a product using certain images such as from the Christmas classic, ‘The Snowman’?

Drawings/images of cartoon characters that are sufficiently original potentially could be protected by copyright.

It could be copyright infringement to put such a drawing/image of The Snowman (or copy a substantial part of the character) on the packaging or label of the product or on the product itself, or if a third party knows or has reason to believe that the product it is selling infringes.

5. Passing off – For some, the Coca-Cola advert with the Coca-Cola Christmas truck signals the beginning of the festive season. If a third party tried to use, for example, the Christmas truck, and Coca-Cola could prove sufficient goodwill in the UK for the truck then Coca-Cola may be able to rely on passing off.

Tips for protecting your IP rights

• Register trade marks or your designs – this provides better protection. It is easier to prove your rights with a certificate than having to prove the elements for unregistered rights to subsist. Further, registered rights generally last longer.

• Keep detailed records to help prove the subsistence and your ownership of your unregistered design rights, copyright and/or goodwill (passing off). You should check also that any contracts with employees and third party consultants transfer the IP to you. This is also important if you are accused of infringing a third parties unregistered design rights or copyright.   

• Use the © symbol to put third parties on notice of your copyright, and use the ® symbol if you have a UK trade mark.

• Carefully consider where you first make your designs available to the public (this will affect where you may have unregistered design protection) and whether you should register your designs first (as you may have difficulties later).

• Regularly review your trade mark portfolio in case there are countries or goods/services which you are going to expand into that are not covered.

• Conduct searches for registered trade marks and registered designs to check for earlier registrations that may be a problem. Further, there are watch services that can alert you if, for example, a third party applies for trade marks that are similar to your trade marks.

• Obtain permission for the use and sale of products covering the above IP rights. It is very important that such licences record in writing how the licence will work. This may include what rights are being granted, whether the licence is exclusive or non-exclusive, the territory/territories to be licensed, how payment works and how long the licence lasts.