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intellectual property (IP)

intellectual property (IP) | 05 Oct 2020
BY Manisha Bugwandeen-Doorasamy

COVID-19: Is it sparking IP interest?

Apparently, a number of major jurisdictions’ trade mark filings have been up this year. This is, of course, counter-intuitive, given that so many business-related figures are down.

There are certainly reports that suggest that the pandemic has sparked a wave of trade mark filings, particularly in the USA. Many of these trade marks make use of the words COVID or Corona, and it has been reported that the owners of the Corona beer trade mark have had their hands full with trade mark issues. Many of the new filings cover goods or services that are in some way linked to the pandemic (such as protective equipment), and these of course make perfect sense. In South Africa, we have seen applications such as CORONA, CORONA CARE, CORONA GUARD, COVID, COVID 19, COVID-19 DEPOT and COVID-KEY SA.

But there is no reason why the sudden interest in trade marks should be limited to COVID or Corona marks, or marks covering goods or services that might be pandemic-related. Right now, many people are fearful for their future. Many have lost jobs, whereas many have good reason to fear that they might do so. Many have more time on their hands than they’ve ever had before. The upshot of this is that a number of people are – perhaps for the first time in their lives – starting to think like entrepreneurs.

So, how is IP relevant to this? Well, anyone who is thinking of starting their own business will (or certainly should) know that they will need to have an identity. The product or service that they will be offering to the public will need to have a trade mark. That trade mark will most likely comprise a name or word, but it may also comprise one or more other things too – a logo (which need not even be static), a strapline (slogan), the shape of the product, a sound, a smell, a taste…

These new entrepreneurs will soon learn that there are many hoops to go through. The first one is to make sure that the trade mark that they have in mind is in fact available, in other words, that it does not infringe a trade mark that is already registered, quite possibly in the name of a competitor. It is important to understand that trade marks are territorial in nature and applications must be filed in the territories of interest. There are however two regional filing systems in Africa and you can even file one application in the European Union covering all the relevant member states. Entrepreneurs would most definitely want to avoid unnecessary conflict or even threatened litigation at this early stage, when deciding on a trade mark. Negotiating this hoop involves trade mark clearance searching, quite possibly in multiple jurisdictions. A trade mark clearance exercise is best handled by experts.

Assuming that the trade mark is available, the next step will be to secure exclusivity. This is done by way of a trade mark registration. Although registration isn’t a legal requirement, it is highly desirable – it is generally only with a registration that you can stop others causing consumer confusion through the use of similar trade marks. It might even be time to start thinking about licensing the trade mark to third parties, who will be able to use it (subject to your control) in return for a royalty. This is, of course, a business model that lends itself to fast expansion (often in multiple countries), although the trick is to ensure that you as the owner in fact own all the rights to the trade mark and are able to control the quality of the product or service offered by licensees.

There is, of course, no reason why this new entrepreneurial thinking should be limited to trade marks. Although many people will be thinking of creating their own version of an existing product or service, others may be thinking along the lines of a significant upgrade to an existing product, or even a product that doesn’t yet exist. For those people patent protection may well be an option. Patent protection is essentially there for new inventions. The main thing with a patent is to make sure that you seek protection early on. Patent law is a highly specialised field and you really do need to get specialist advice right from the outset.

For some aspiring entrepreneurs, industrial design protection may be an option. In South Africa, it is possible to get protection for both aesthetic and functional designs, with the emphasis being on the shape, pattern or configuration of the product. As with patents, novelty (newness) is the standard. So, once again the trick is to get in early.

For others, copyright law may be relevant. We’re thinking here in particular of those whose business interests may lie in things like writing, art, music, film and software. When it comes to copyright, registration generally does not feature, so things are not necessarily time-sensitive. Yet it’s always a good idea to get advice early on.

COVID-19 has wreaked havoc and it has caused a great deal of misery. Yet it has created opportunities too and it will no doubt continue to do so for some time. Intellectual property may have a significant role to play for those seeking to explore those opportunities.

 

Manisha Bugwandeen-Doorasamy

IP | Trade Mark Attorney | Executive

mbugwandeen-doorasamy@ENSafrica.com

+27 82 310 1016