Latest developments regarding registered IP rights

Patents

For any new technology developed, an informed decision should be made regarding whether patent protection is the best approach to prevent the technology being taken over by competitors. Alternatively, the technology could be kept strictly confidential as a trade secret. It is essential to make this decision early in the development phase, as any disclosure of the new technology will prevent patent protection and render a confidentiality strategy ineffective.

The Unitary Patent and Unified Patent Court

With the introduction of the Unitary Patent and the Unified Patent Court, the patent landscape has become both simpler and more complex. The Unitary Patent provides unitary protection across 18 EU Member States, with Romania joining as the eighteenth member on 1 September 2024. The Unified Patent Court is a special court ruling on the validity and infringement of European Patents, unless these patents have been expressly opted out of its jurisdiction. This new landscape and the additional options available require patent applicants and holders to strategically plan how best to obtain, maintain and enforce patent protection rights against third parties.

Trademarks

Trademark protection should be secured for any elements intended to distinguish the company's products or services from those of others. Therefore, the actual and planned use of a mark on products or services (such as words and logos) is the starting point for an effective protection strategy. Since trademark registrations must specify the goods and services they cover, this list should be carefully tailored – broad enough to cover all relevant goods and services, including potential line extensions, but not so broad as to create unnecessary conflicts with third parties.

Today, trademark protection should extend beyond product names and logos. Slogans, jingles, packaging, product design and even colours can serve to distinguish a brand. While these elements may be registered as trademarks, the legal requirements and strategies for these less conventional marks should be evaluated on a case-by-case basis.

International trademark protection

International trademark protection has been made easier by important tools. The well-established EU Trademark Registration provides unitary protection across all current and future EU Member States. Additionally, the "Madrid System" for international registration, which bypasses national application formalities and allows for protection in foreign territories without local intervention, has been substantially extended and now applies to most of the world.

Registered designs

When investments are made in the design of products or communication tools, it is imperative to consider registered design protection. Many businesses still underutilise this tool, overlooking the potential for protecting valuable assets through design registration. Yet, design protection is relatively easy and cheap to obtain, even when registration should extend internationally. Both the Registered EU Design and the "Hague System" for international registration have seen significant improvements.

Taking action against misuse of a product design by competitors – whether blatant or more subtle copying – requires far less investment if a solid registered design is in place. However, design protection must be considered early in the product launch process, as only new, previously undisclosed designs are eligible for registration.

authors: Michael Woller, Christian Schumacher