Lewis Hamilton fails to push watch maker off the podium in trade mark action
Cancellation of ‘Hamilton’ trade mark is refused by the EUIPO.
One of the fastest growing sectors in the modern economy is the mobile apps sector. As this marketplace is digital and dynamic, developers are used to bringing innovative ideas to market quickly. Nevertheless, those same factors that allow for rapid development of new apps also allow for imitations to be developed quickly. Whilst being the first to launch an app can provide a considerable advantage in these areas, developers can significantly strengthen their position against imitators by taking steps to protect the intellectual property associated with their app. In this context, different features of new apps can be protected using different intellectual property rights and the optimum mix of these rights will vary depending on the nature of the particular app.
Patents can protect technical features of the app or how it is implemented. If granted, a patent can enable the patent owner to prevent others supplying apps which fall within the scope of the patent. Even before a patent is granted, advertising that an app is patent pending can provide some deterrent to potential imitators.
In order to be eligible for patent protection, at least some features of the app must be novel (not previously disclosed to the public) and inventive (not an obvious improvement of anything previously disclosed). As novelty and inventiveness are judged as of the date of filing of a patent application, it is vital that advice on patentability is sought before the app is launched.
A further restriction on patent applications that applies to many apps is that some classes of invention are excluded form eligibility for patent protection. The list of excluded subject matter areas includes: schemes, rules or methods for performing mental acts, playing a game, doing business; computer programs; or presentations of information, so long as the invention relates to these areas, as such. The final proviso “as such” opens the way for apps that include some excluded subject matter to be patentable, so as long as the apps include additional novel and inventive features that are not excluded subject matter.
Trade mark registrations can be used to protect the branding of an app including such elements as the name, the logo or an icon used in an app store. If a trade mark is registered, it provides the mark’s owner with the power to prevent others using or registering the same mark or a similar mark for identical or similar goods/services. In order to be registrable, a trade mark must not be overly descriptive of the app or the service it provides, and must not be too similar to any existing registration covering goods/services identical or similar to those provided by your app. In view of the potential difficulties that can be caused by prior marks, it is strongly advisable to conduct trade mark clearance searching before launching a new app.
Copyright accrues automatically in the creation of qualifying original works. Such works include software code for implementing the app, text appearing within the app or used to promote the app, and images or screen templates/layouts utilised within the app. Since copyright is only infringed by copying the protected work, it is important to keep records of when particular material was developed. It is also very important to ensure that the copyright in any work created on your behalf is assigned to you, especially if the work is commissioned from an external consultant.
Some aesthetic elements of apps qualify for copyright protection, such as images or screen templates/layouts utilised within the app may also be eligible for protection by way of a design registration. Registered designs provide protection for the aesthetic qualities of new designs of individual character (the overall impression is different from any existing design).
In Europe, multiple designs can be included in a single application for a relatively small additional cost. Accordingly, design registration can provide a cost effective deterrent to lookalikes.
Whilst the notes above give a flavour of the protection that is available for new apps, this is a complex area. Accordingly, it is well worth taking professional advice to help you in deciding the best approach to protecting your new apps.
If you would like to know more, please contact us.