This is the third part in a series I'm writing on legal considerations for direct-to-consumer ecommerce brands operating in the UK, whether headquartered in the UK or abroad. The first post covered the Consumer Contracts Regulations (2013) and the Consumer Rights Act (2015). The second post covered the Data Protection Act (2018), which is the UK's implementation of the General Data Protection Regulation (GDPR) first initiated by the European Union.
In this post I'll be talking about intellectual property: protecting your ecommerce business's brand, designs and products from being appropriated by others. You've done all that work to build something new, so it's worth being aware of what automatic protections exist for you and what steps you can take to gain enhanced protection.
Standard caveat: I'm not a lawyer and have no legal training. What I do have is over 12 years experience in ecommerce in the UK and elsewhere, as a brand owner and operator, and more recently as the owner of a 3PL specialising in foreign ecommerce sellers in the UK. On the downside, that means you can't take anything here as legal advice, and you should do your own research to complement reading this article. On the plus side, what I write is readable and born from real life experience.
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In the UK, trademarks are registered with the UK Intellectual Property Office (IPO) and provide the holder with exclusive rights to use the mark for their goods or services. You can register a trademark online through the UK government's website. Trademarks can include words, logos, slogans and even colours and sounds.
Trade mark protection doesn't apply to any possible use of the mark, but to a specific list of goods or services, categorised under the Nice Classification. The categories in which you want your trademark to apply are specified in your application to the IPO, with a basic fee covering one class and additional fees applying for each additional class sought.
The IPO will examine an application to ensure it doesn't conflict with existing trademarks, and then publish it in the Trade Marks Journal to give third parties an opportunity to oppose the registration if they believe it infringes their own rights. The process typically takes 4-6 months. Trademark protection lasts for ten years from the date of application and can be renewed indefinitely for ten-year periods subject to payment of renewal fees.
If you're a foreign-based business, you might be better off registering through your own country's intellectual property body (e.g. the US Patent and Trademark Office), because of the Madrid Protocol international system for registering trademarks. The Madrid system facilities the process of securing trademark protection in multiple countries through a single application. You can still file directly with the UK's IPO if you prefer, but using the Madrid Protocol system via your home country is a more efficient route if you intend to operate in multiple countries.
Patents for inventions are also filed with the IPO and protection lasts for a maximum of 20 years. Before launching in the UK, you should do trade mark and patent searches to make sure there isn’t anything similar to your brand or invention.
The UK's Unregistered Design Right (UK UDR) gives automatic protection to the shape and configuration of three dimensional objects for 15 years from when the design was first recorded, or for ten years from the end of the first year that it's marketed to the public. Supplementary Unregistered Design (SUD) protection gives protection to both two and three dimensional designs for three years from the date the design is made public. These unregistered design rights only protect against direct copying, not independent creation.
As an alternative to relying on the above unregistered design protection, designs can be registered with the IPO to protect the visual appearance of a product, including both two and three dimensional aspects, for up to 25 years (subject to renewal every five years). For designs with a short market life, relying on unregistered design rights is more cost effective. But it’s easier to prove ownership if you’ve registered and protection is for longer.
Copyright protection arises automatically upon the creation of original works of authorship, including literary and artistic works such as drawings, paintings, photographs and graphic designs, as soon as they're created in a tangible form, and does not require registration. Protection typically lasts for the life of the creator plus 70 years after their death.
Whether you need to register a design with the IPO or can rely on copyright protection depends on your product and the type of protection you seek. Copyright doesn't protect the functional or technical aspects of a product. It covers the artistic expression in a design rather than the design's application to a product. If you want more comprehensive protection and better enforcement rights, then registering a design with the IPO is the better route.
Trade secrets like formulas, practices, processes or compilations of information also receive automatic protection without registration, provided reasonable measures are taken to maintain their confidentiality. This might be things like secure storage or non-disclosure agreements for key employees.
Don’t let unwarranted concerns about intellectual property slow down starting your ecommerce business or launching in the UK. Because copyright protection is automatic and free, you can get going first, ensure you have enough customers willing to pay for your product, and sort out additional protections as necessary over time.
Most of the world's countries are signatories to the Berne Convention for the Protection of Literary and Artistic Works, an international treaty which provides equal and automatic protection to copyrighted works from member countries. Provided that you’ve done trade mark and patent searches in the UK and are clear you’re not infringing on anyone else’s brand or patent, you should feel confident trading in an environment which respects the rule of law.
