Prevention

Trademarks: A trademark is most often a word, phrase, or symbol (but it can also be a sound, scent, or color) that identifies the source or origin of a particular good or service sold in commerce.

The name of your business, your company logo, your product names and even the appearance of your products may all serve as trademarks that distinguish your business from your competitors. “COCA-COLA,” for example, is a standard “word mark.” The Nike “swoosh” is a “design mark” and the word mark “eBay” is an example of a “stylized” word mark having a distinctive font and design.

You can also trademark distinctive pattern styles such as the iconic, recognized “Burberry plaid.” The packaging for your products can also be trademarked. This is referred to as “trade dress,” – the Tiffany’s blue box being one of the most well-known.

All of these examples serve to identify the original source or creator of the products that bear the trademark. To inventory all of your trademarks, write down all of your business names, product names, logos, and original designs, distinctive packaging, etc. Each of these may be protectable assets of your business.

Copyrights: A copyright protects any original work of authorship that is created and made into a fixed tangible medium of expression such as a song, a book, a painting, a dance routine, a jewelry design or movie. Often copyrights are described as a “bundle” of rights which include the right to reproduce or “copy” the work, the right to publish the work, the right to adapt or create derivative works, the right to perform the work and the right to display the work. It is possible to both trademark and copyright something, your company logo for example. When your logo appears on your products, it is protectable as a trademark. However, since its an original creative work of art, you can also file for copyright protection. Think about all of the artistic items you have created for your business; they may well be copyrightable.

Patents: A patent is an exclusive right, granted to an inventor, to manufacture, use or sell an invention for a specified number of years. Types of patents include utility patents, design patents, and plant patents. Common examples of patented items include perfumes, games, jewelry, computer software or hardware, machines, and even sporting goods. What’s not patentable is merely the “idea” for something. To have a patent, you have to get your idea down on paper and prove that it can be built or used.

Domain Names: A domain name is the primary navigational tool for the internet. You can use domains to drive interested consumers to your website featuring your products and services. As a result, having several domain names is key to establishing your online presence, boosting your visibility among search engines, and protecting your valuable brand. While not explicitly an IP right, practically speaking, domain names are often considered, and approached, like intellectual property.

The right to use a domain name is a contractual right created by a series of contracts between the domain registrant or user, the registrar (the domain name “seller”), the registry of the top-level domain (the manager for the database for the top-level domain) and the Internet Corporation of Assigned Names and Numbers (ICANN), a non-profit organization entrusted with the security, stability, and interoperability of the domain name system (DNS). A domain name is more analogous to getting a phone number from your mobile phone carrier than it is to a statutorily granted IP asset, but it is no less valuable.
 

In some countries – the United States, for example – you can acquire legal rights in a trademark simply by using the mark in connection with your goods. You can even sue a party for infringement without ever registering your mark. In other countries however, using the mark is not enough.  In China, e.g., you must register your mark with the China Trademark Office (CTMO) to ensure that your rights are protected (unless your unregistered mark is recognized as a “well-known mark by trademark authorities, which only applies to very famous brands).  In these “first to file” jurisdictions, another party, including a counterfeiter, can pre-empt your use of a mark in that country if they file an application before you, even if you have been using the mark for years. 

Even where registration is not a legal requirement, it typically offers several benefits that are not otherwise available to a trademark owner without registration so, as a practical matter, registering your trademarks should be considered a top priority in every jurisdiction where you’re doing business.

In the United States, these advantages include:

• recovery of profits, damages and costs in a federal court infringement action and the possibility of treble damages and attorney’s fees;
• constructive notice of a claim of ownership;
• the right to deposit the registration with US Customs to stop the importation of goods bearing an infringing mark; and
• a basis for filing trademark applications in foreign countries.

Similar advantages are granted if registrations are filed in Europe with the EU Intellectual Property office (EUIPO) or in Asia.

You can register your trademarks:

1) Directly with the relevant IP offices in individual countries
2) Using the World Intellectual Property Organization (WIPO), Madrid System, which allows you to file a single application and pay one set of fees to apply for protection in up to 124 countries.

Geographic Limitations: Trademark rights are geographically limited. Having trademark rights in the United States, e.g., provides you no protection in China, and vice versa. So, you need to ensure that you’ve taken steps to protect your rights in every country in which you’re doing business (or in which you may seek to expand your business).

Product Category Limitation: The scope of protection of a trademark is only applicable to the specific international class of goods and services that you designate and pay for in your trademark application. There are 45 classes of trademarks from Chemicals (Class 1) to Legal Services (Class 45). Depending upon the kind of product or services you are selling, you may register your mark in multiple classes. In China, there are even “subclasses.” Two identical registered trademarks may exist at the same time if each one is assigned to different classes of goods/services and provided that there is no likelihood of confusion. It’s important that you file your trademark in the proper classes to ensure adequate protection.

First to Use vs. First to File: The third point you must keep in mind is how you go about acquiring trademark rights in different countries. In some countries – the United States, for example – you can acquire legal rights in a trademark simply by using the mark in connection with your goods (though there are added benefits to registering as explained below); in others however, using the mark is not enough. In China, e.g., you must register your mark with the China Trademark Office (CTMO) to ensure that your rights are protected, unless your unregistered mark is recognized as a “well-known mark” by trademark authorities. In such “first to file” countries, another party, including a counterfeiter, can pre-empt your use of a mark in that country if they file an application before you, even if you have been using the mark for years.

You are not required to register a work to claim copyright protections. In fact, your ownership vests the moment your copyright protectable work is fixed in a tangible medium. Some jurisdictions, however, may require registration in order to avail yourself of the full range of rights provided under that country’s laws. By way of example, under U.S. law, a copyright owner may not pursue civil litigation in connection with a claimed infringement without first obtaining a certificate of registration from the Copyright Office. Registration also serves as prima facie evidence of the validity of the copyright, serves as constructive notice to potential infringers, and allows the copyright owner to seek statutory damages for infringement (i.e., the copyright owner will not be required to prove the actual monetary damages suffered as a result of another party’s unauthorized reproduction or other covered use of the work).

In the United States, the Copyright Act of 1976 (as amended) establishes the basis of all copyright law and vests authority for issuing copyright registrations in the Copyright Office, part of the Library of Congress. In Europe, EUIPO manages copyright registrations. There is no centralized copyright office in Asia but the World Intellectual Property Organization (WIPO) has a division for helping copyright owners with registrations in Asia.

Global Reach: While every country has its own copyright laws, global treaties related to copyright law provide some consistency. Unlike trademarks, which are geographically specific, the BERNE Convention means that the copyrights you establish in one country are recognized by every other signatory, meaning every other country in the world (except for seven who do not participate in the BERNE Convention). This is very useful for things like online enforcement but remember, as discussed above, there are many reasons to register to maximize your protection.

Copyrighted Images vs. Copyrighted Products: You can register copyright protection for an image of your product but also the product itself. The difference will be important when it comes to enforcing your rights. For example, if you find that a website is showing an image of your product lifted from your own website (what is frequently referred to as “piracy”), you have a copyright interest in that image and can file a DMCA takedown notice with website owner (See Enforcement, Section d. below). However, if your product has a unique creative design element and a counterfeiter has manufactured a product that resembles the same design, you may be able to sue the counterfeiter directly for copyright infringement of your product in a court of law.

Copyright Term: Unlike trademarks that can be registered indefinitely so long as you are using the trademark in commerce, copyright protection expires. The term of copyright for a particular work depends on several factors, including whether it has been published, and, if so, the date of first publication. As a general rule, for works created after January 1, 1978, in the United States, copyright protection lasts for the life of the author plus an additional 70 years. After that period, the copyrighted work is considered in the “public domain”

SMEs may not always be in a position to produce or market their invented product with their own resources. Patents, being a form of commercial property, provide a basis for you to:

• negotiate with business partners while preserving your IP rights;
• license someone else to manufacture your product on agreed terms, or
• take legal action against infringers who are using the patented invention without your permission.

Patent protection can be obtained through filing an application with the USPTO in the United States. In Europe, patent applications are reviewed, and registrations issued, by the EUIPO.

Patent Criteria: Patent applications must satisfy the following three criteria:

• Novelty – your invention must not have been made public – not even by yourself – before the date of the application.
• Inventive step – your product or process must be an inventive solution. It cannot be a solution that would be obvious to a manufacturer.
• Industrial applicability – it must be possible to actually manufacture the new invention. In other words, you can apply for a patent on a new kind of playing card that is easier to hold than existing cards. But you can’t obtain a patent for an idea for a new card game.

Registering a domain name is how you acquire the asset itself. Unlike, other types of intellectual property, names are created by a commercial contract rather than by filing a registration with any national patent, trademark, or copyright office.

Generic top-level domain names, such as .COM, .ORG, and .SHOP can be registered with one of several ICANN accredited registrars located around the world. Country code top level domain names such as .FR (France), .DE (Germany), or .CN (China), must be registered with the authorized registry operator for that country.

Domain Portfolios: Although you need at least one domain name to create your internet presence, you may wish to consider registering multiple domain names to create a portfolio of names for future use as well as prevent others from registering variations of your domain name. For example, if you own a sporting goods store, you may wish to register STORENAME.COM, but also STORENAME.SPORTS, and/or STORENAME.GAMES.

If you’re using a third-party manufacturer, make sure you have a proper agreement in place that mitigates the risk of potential counterfeit related activities. For example, your contracts should have explicit provisions for destroying defective goods found during production to prevent those products from entering the supply chain. Additionally, your contracts should include language that limits the manufacturers’ ability to order raw materials without specific authorization and also prevent the manufacturing facilities from producing “over-runs.” Finally, you should inspect their storage and holding facilities to make sure finished products are secured on site to prevent theft.

If you license your trademarks or other IP to third party sellers, resellers, wholesalers, or distributors; do your due diligence on each of your licensees to make sure that they operate in strict compliance with your terms and conditions for the sale and distribution of your products. Inspect their facilities periodically, and don’t hesitate to enforce or renegotiate your licensing arrangements when infringements become evident.

Budget allowing, incorporate anti-counterfeiting technology into your product or packaging. This provides overall security for your products and also allows you and your distributors to easily confirm genuine or fake items. A product security firm can help you determine the appropriate security and/or anti-counterfeiting measure. There are several security methods available including:

• Tamper-evident closures and seals: film wrap, shrink wrap, stretch sleeves, blister packs, tear tapes, perforated labels and seals, super-strong adhesives, and frangible films.
• Authentication solutions: holograms, security inks, security threads and fibers, watermarks, taggants and microprinting.
• Track and trace systems: linear bar codes, 2D bar codes, data matrix bar codes, sequential numbering, algorithmic codes and encrypted data.
• Anti-theft devices: electronic article surveillance (EAS) tags, acousto-magnetic (AM) labels, radio frequency (RF) labels, chip-based RFID, and ink-based RFID.
• Blockchain Technology (new technology): Blockchain is a distributed ledger system that can record transactions and track assets. Data is stored in blocks that are all linked to each other, timestamped, and considered as unforgeable. Blockchain has emerged as a useful tool to fight counterfeiting. Within a brand’s supply chain, a blockchain ledger can manage a variety of activity from automating contract compliance between entities via smart contracts to tracking products from manufacturing to distribution.

Tips on Searching for Security and/or Anti-Counterfeiting Technology

• Ask for client references. While some of the firm’s clients may insist on remaining anonymous, usually the firm can provide at least 1 or 2 references for you to call and learn about their experience using their security products.
• Ask for samples because although the security features may not be on the material you use for your product, you can see first-hand how it works in practice.
• Test. Test. Test. Test the security feature on your product materials to ensure how they function in a “real-world” environment. Some firms may also offer to do a pilot program, which may be a good way to test things out.
• Find out how the technology will be implemented. Many companies can work with either your printers or production partners. It’s good to ask how easy it is to implement into your packaging process.
• Ask for patent information since most technologies are patented.
• Ask how QR codes are protected if the company is offering them. Find out how they prevent the code from being duplicated.