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Common IP Myths Busted — Part 2: Knowing What You Can Use

11 May 2021

Author: Sarita Schröder

As the value of intellectual property in business has increased, so too has companies’ knowledge about how best to protect, commercialise, and enforce their rights. However, in our work as IP lawyers, we still regularly encounter many persistent misconceptions on the topic. In this blog series, we examine and debunk some of the most common of these.

You can find links to the other parts of this blog series at the end of this post.

Myth #3: If It Is Not Registered and Does Not Bear a © or ™ Symbol, We Can Use It

In addition to knowing what IP they own (see part 1 of this blog series), it is important for companies to understand what IP they can use. This means that companies should conduct or commission freedom-to-operate searches to ensure that the use of their IP would not infringe pre-existing third-party rights. In this respect, a common but dangerous fallacy is that if no similar IP is registered in the relevant official IP databases or if third-party content does not bear a © or ™ symbol (or other similar symbol), it is free for anyone to use. While there may be some truth to this in certain jurisdictions and with respect to certain types of IP, it is far from universally true.

For example, many jurisdictions recognise some form of protection for non-registered trademarks, and the use of the ™ symbol is often not mandatory. This is the case in both Finland and Sweden, where trademark rights can be established through use once the trademark has gained a sufficient degree of recognition among its target audience. The ™ symbol may be used to denote a trademark regardless of whether it is registered (whereas the ® symbol is reserved for registered trademarks), but using it is optional and relatively rare among Finnish and Swedish companies.

In addition, there are certain types of IP than cannot be registered in most jurisdictions. Copyright is the most ubiquitous of these. Copyright is generally conferred on the author of a work automatically once the work is created — although some jurisdictions, such as the United States, also require the fixing of the work in a tangible medium (e.g. on paper or in an electronic format). The United States is also one of the few jurisdictions where registering a copyright is possible. However, even there, registration is not a prerequisite for protection. Similarly, the use of the © symbol is voluntary in most jurisdictions, including Finland, Sweden, and — except for with respect to works published before 1 March 1989 — the United States.

Myth #4: Registration Will Guarantee Us the Right to Use Our IP

Another common mistaken belief that can prove very harmful in practice is the belief that registration ensures the right to use the registered IP. Unfortunately, that is not the case. IP rights are exclusive rights only in the sense that they give their owner the right to prohibit others from using IP that falls within the scope of protection of the rights in question. IP rights — even if registered — do not guarantee that the use of the IP in question will not infringe pre-existing third-party rights.

One reason for the above is that although such third-party rights generally constitute an obstacle to subsequent registrations of the same or similar IP, it is more an exception than the rule that IP offices would examine at their own initiative whether relevant prior rights exist. Most commonly, this type of so-called ex officio examination is carried out when processing patent applications. On the other hand, the registration procedure for, for example, EU trademarks and Community designs involves no such examination. Instead, third parties who hold relevant prior rights have the possibility to file oppositions or cancellation actions against applications or registrations that they consider problematic.

Within Europe, Finland and Sweden are among the few countries whose IP offices also carry out an ex officio examination with respect to trademarks, among other things. While this may provide some additional peace of mind to the owners of Finnish or Swedish trademarks, it does not eliminate the need for a freedom-to-operate search prior to filing an application. This is because IP office examiners only take into account registered rights and, for example, in Finland they limit their search to the class(es) of goods or services in which the application under examination has been filed — even though from an infringement perspective, other classes may be relevant, too.

Read the Other Posts in the Series

Part 1: Knowing What You Own