Common IP Myths Busted — Part 4: Maintaining and Enforcing Your Rights
21 December 2021
Authors: Sarita Schröder and Panu Siitonen
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 #8: We Have Registered Our IP, So Now We Are Sorted
IP protection is, unfortunately, not a one-and-done deal. IP — just like any other property — must be looked after properly in order for it to maintain its value over time.
Firstly, most registered IP rights need to be renewed regularly to keep them in force. For trademarks, the registration period is typically 10 years (calculated either from the filing date or the registration date, depending on the jurisdiction) and the registration may be renewed an unlimited number of times. Design, utility model, and patent registrations need to be renewed more regularly (typically every 1–5 years, depending on the jurisdiction and the type of IP concerned) and they can only remain in force for a limited time (typically 10–25 years — again, depending on the aforementioned factors). The renewal of a registration usually entails at least the payment of a renewal or annual fee. In addition, it may require, for example, the submission of proof of use of the IP in question.
Secondly, the proper maintenance of IP rights necessitates ensuring that the rightsholder’s own or third parties’ actions or inactions do not endanger the rights in question. In particular, where there is an obligation to use the IP in question (as is usually the case with trademarks at least after a certain period — often, five years), the rightsholder must make sure to comply with this obligation and document their compliance, so that they can prove it if necessary. Moreover, the rightsholder’s failure to take timely action against infringements or other incorrect usage of the IP in question by third parties may lead to a loss of rights, as is discussed in more detail in connection with myths #9 and #10 below.
Myth #9: Imitation is the Sincerest Form of Flattery
While it is tempting and certainly noble-minded to believe that a competitor’s imitation of one’s brand, technology, or other IP is a sure sign of success, it can also be dangerous if it leads to allowing the imitation to continue without carefully considering its long-term implications. Even if the market is such that there is plenty of cake to go around and a competitor piggybacking on a first-mover’s investments does not cannibalise the first-mover’s market share or otherwise directly harm its business, it can harm the validity and enforceability of the first-mover’s IP rights.
In many cases, the right to bring claims on the basis of an alleged IP infringement is time-barred. This means that if the rightsholder does not act against the alleged IP infringement in a timely manner, they may lose the opportunity to act at all. How long the rightsholder has to consider whether and what action they wish to take may vary substantially depending on the type of IP and jurisdiction(s) concerned, among other things.
Therefore, whenever a rightsholder comes across a potential infringement, they should stop to consider — with the help of external counsel, if necessary — whether and what action is required. If based on this assessment, the rightsholder opts not to take any immediate action, it is nevertheless advisable to record a reminder to reassess the situation some time down the line in the light of possible developments in market conditions and the potential infringement in question.
Myth #10: All Publicity is Good Publicity
Especially in the field of branding and trademarks, a myth closely related to the former is that all publicity is good publicity. In other words, brand owners may fall into the trap of believing that it is a positive development if in the eyes of the media and public, their brand becomes synonymous with the type of product or service they are offering.
For example, if you think back at the past few years, you are almost certain to have come across articles touting a hot new platform business as ‘the Uber for’ this or that service (e.g., ‘the Uber for healthcare’). In fact, if you do a search on Google for the phrase ‘the Uber for’, you will get over one million results. In other words, the brand Uber is widely used as a synonym for an on-demand platform business.
But why is the above actually bad news for Uber and other brands used by the media and public in a similar way?
A fundamental requirement for a brand to qualify for trademark protection is that it must be distinctive. This means that it must be capable of distinguishing the products or services of one undertaking from those of others. Generic terms, such as ‘apple’ in relation to apples (but not, e.g., computers or electronic communications devices), must be kept free for everyone to use.
Even if a term does not start out as generic, it may become generic as a consequence of how it is used. In the context of trademarks, this phenomenon is sometimes referred to as ‘genericide’. It is a fate that has befallen many famous brands over the years, for example, Escalator, Linoleum, and Trampoline. It is also a fate that is threatening many brands we know and love today. For example, have you ever asked for a Coke without really minding whether you get served a Pepsi or some other brand of cola drink, instead?
The trouble with the generic use of trademarks is that — unlike is the case with trademark infringement — the brand owner has little or no course of legal redress against the media or much less the public. Instead, the brand owner must try to educate those who use its trademark incorrectly. This can be achieved, for example, through cleverly devised publicity campaigns, such as the hilarious ‘Don’t Say Velcro’ music video released by the VELCRO® Brand legal team a few years ago.