Intellectual property includes inventions, literary and artistic works, symbols, names, marks, images and designs used in commerce.  It is divided into two categories, namely:

·          Industrial property:

o         Patents

o         Trade marks

o         Industrial designs

·          Copyright:

o         Literary works eg, novels, poems, plays, films

o         Musical works eg, manuscripts, recordings

o         Artistic works eg, drawings, paintings, photographs, sculptures

o         Architectural designs

o         Broadcast of radio & television programs

Patent Search, Application & Grant

Unfortunately, there is no worldwide patent protection that exists and an inventor must apply for a patent in each country the inventor wishes to seek protection in respect of his or her invention in accordance with the laws of the country.  A number of countries are members of regional or international organisations providing for single applications to be made, with such applications being taken to be applications filed in the individual respective member countries in the organisation. 

These organisations include:

·          European Patent Office

·          African Regional Intellectual Property Organisation

·          Patent Cooperation Treaty (provision of priority filing rights only)

In most countries, the maximum term of a patent will depend on the type of patents filed.  Generally, the terms are as follows:

·          20 years for a standard patent

·          25 years for pharmaceuticals

·          8 years for an innovative patent

The filing process of a standard patent can be long and arduous and it is usually very difficult to obtain a standard patent for all aspects of an invention. 

An innovative patent is much simpler to obtain and is used for getting quick protection as it requires a lower inventive threshold than a standard patent.

Trade Mark Search, Application & Registration

Trade marks come in many forms and may include marks, logos, names, graphics, shapes and colour combinations.  A trade mark search should be conducted before using a mark given the potential adverse consequences of inadvertently using a mark similar to that already registered.

Protection afforded to the owner of a trade mark depends on whether a trade mark is registered or not.  In most cases, an unregistered trade mark may only be protected by way of a passing-off action or, in some jurisdictions, trade practices action, requiring the owner to show proof of an established reputation in the trade mark.

Registered trade marks confer on the registered owner the right to protect its trade mark against any infringement arising from the use of deceptively similar marks in the same category of goods or services that the trade mark is registered in, using the Nice Classification comprising of 34 classes of goods and 11 classes of services.

However, an application for registration may be opposed by third parties and may be rejected where the trade mark:

·          consists of ordinary names or symbols

·          is similar to another registered trade mark within the same category of goods or services

·          is likely to cause confusion of another trade mark within the same category of goods or services

There are two types of trade mark registration:

·          registration under the Madrid System

·          registration in each individual country

The Madrid System provides for the registration of a trade mark in over 80 member countries by way of a single procedure through the filing of a single trade mark application, and the provision of a single expiry date no matter how many countries are added as members at a later date.  The list of current members of the Madrid System may be downloaded here.  A trade mark registration under the Madrid System generally lasts for 10 years and may be renewed thereafter.

Application for registration in respect of non-Madrid System countries must be submitted to each individual national office of the country in which a trade mark registration is sought.  Although an arduous process, it is a necessary step for the protection against any potential infringement of the mark, particularly by ‘copycat entrepreneurs’, in such countries.

Industrial Design Registration

Industrial designs refer to the ornamental or aesthetic aspects of an article, eg, the shape, pattern, line or colour of a watch, jewellery, luxury item, house-ware, electrical appliance, car, architectural structure etc.  The design must be appealing to the eye in order for it to be registered in most countries.

Industrial design protection is closely related to copyright protection and in some countries, industrial design and copyright protection can exist concurrently.  In other countries, they are mutually exclusive and once an owner chooses one form of protection, the owner can no longer invoke the other.

There are two types of industrial design registration:

·          registration under the Hague Convention

·          registration in each individual country

Protection in respect of an industrial design may be made at an international level through registration under the Hague Convention by way of the filing of a single application.  There are currently about 49 countries participating in the system and the list of current members may be downloaded here.

Different rules apply with respect to the protection of an industrial design in each country.  Generally, however, once registered, the registrant will be accorded exclusive rights to the design for a period between 5 to 10 years, which, in some countries, may be renewed for further terms.  If the design has been made public, it is a requirement in most countries for an application for registration to be submitted within 12 months of such publication.

Copyright Protection 

With the notable exception of the US, it is not necessary for a copyright owner to register to obtain copyright protection in countries that are signatories to the Berne Convention, with copyright protection lasting for the life of the author plus 50 years.  Practically almost all countries in the world are Berne Convention signatories, and/or signatories of the Trade Related Intellectual Property Rights (TRIPS) Agreement, which require adherence to principles of copyright protection under the Convention.

In the US, a registration is required in order for a US national (but not a foreign national) to institute an infringement action against another.

There are many commercial agencies that provide a registration service to enable the copyright author to place on record evidence of work produced and date it was produced.  It should be noted that such registration firstly, will not confer any greater protection or rights on a registered work for the copyright owner than a non-registered work, and secondly, is no substitute to registration in non-Berne Convention countries and/or the US.

Our Expertise

We specialise in conducting searches and the registration and management of all intellectual property rights of a business internationally as part of our core services, supported by our Global Business Research Centre or GLOBREC which provides key updates and developments on intellectual property regulations, laws and events around the world.  Our team handles the following:

·         all types of intellectual property searches, including infringement, state-of-the-art, competitor searches

·          worldwide intellectual property watch service

·          registration of intellectual property in foreign jurisdictions

·          management of infringements and intellectual property disputes

·         advice on, preparation and review of, contracts for licensing, assignment and management of intellectual property rights

Information on Fees & Charges

Search, registration and renewal fees vary depending on the type of intellectual property required to be protected.  As a general guide, the following applies in respect of a single intellectual property registration: