Chronicle Editor
Aleck Ncube
ONE of the biggest obstacles for SMEs that want to use intellectual property (IP) is the policing and enforcement of their IP.
SMEs have various avenues to ensure their IP rights are not violated.
IP enforcement basics for SMEs
The manner in which an SME must go about protecting and policing its intellectual property is dependent upon the type of IP it has and the jurisdiction in which it is located or does business.
Perhaps the only strong similarity among all the policing activities and jurisdictions is that it is generally the IP owner’s responsibility to act as his or her own policeman.
Elements of an SME’s IP policing plan include:
-Recognition of responsibility to monitor one’s own products as well as products in similar lines of goods and services.
-Taking stock of all the IP inherent in one’s business. This can include a vast array of things, including a primary product itself (copyrighted music, trademarked handbags, patented medications, client lists, and trade secrets). It is important to remember that a single product may be comprised of several forms of IP. A coffee pot, for example, might have a patented waterheating mechanism, a sleek design protected by industrial design or copyright law and a colorful logo protected by trademark law.
-Learning the basic IP law of the jurisdiction in which the SME is based and the major countries in which the SME does business, such as export markets.
-If an SME is considering bringing suit against an entity that is infringing its intellectual property, it should assess its chances of winning a case and calculate the amount of compensation and/or damages and attorney’s fees that would be at stake.
Enforcing copyright
The explosion of digital music and movies has brought about some special legal provisions to protect rightsholders who choose to use technological protection measures (TPM) to help ensure that the content on their digital products is not copied. Digital rights management (DRM) is an umbrella term for the management aspect of TPMs and other measures that manipulate digital technology in so far as it secures, or attempts to secure, its content from putative copyright thieves.
Examples of TPMs include watermarks superimposed on digital imagery and “spoiler signals” which effectively ruin sound quality in copies of an original sound recording.
For copyrighted goods that have been copied without permission (such as soundrecordings on discs or DVD copies), the police are the general enforcement authority although a given infringement incident must usually be brought to their attention. A copyright owner can accomplish this in a number of ways.
-Inform the police. In favourable circumstances and if the infringement activity warrants this immediate action, the police may only need 24 hours notice in order to secure warrants.
-Alert customs officials. Customs officials can keep an eye on certain goods and impound them when they arrive; they are generally allowed to exclude infringing goods from entering into the country of destination, which subjects those goods to seizure, forfeiture and/or destruction. Action can generally be taken against an importer.
Enforcing trademark
Trademark infringement is generally inclusive of “passing-off” but it is important to understand both infringement and passing-off individually.
Trademark infringement is an act punishable through a legal statute that will spring from whether the mark is included in a national trademark registry and whether a third party uses a trademark that would cause a likelihood of confusion among the public.
Trademark registration is available for both goods and services.
Typical remedies for trademark infringement include injunctions, damages and an account of profits.
A trademark owner can do a number of things to inform the public that his/her goods or services are protected under trademark law.
Passing-off is when a third party misappropriates another’s trademark and misrepresents that mark to the detriment of trade mark owner’s goodwill or reputation; i.e., that third party markets or sells his own goods as if they were branded by another entity.
Be diligent. Firstly, a trademark owner can use the ™ or ® symbols on the item.
Secondly, he/she can look at trademark registrations periodically to see whether someone is registering a mark that is similar enough to his/hers that it might cause confusion.
Thirdly, he/she can maintain awareness of products or services being sold in the same or similar category and if need be, send a cease and desist letter to anyone who is using his/her trade mark without his/her permission.
Enforcing patents
The burden of protecting a patent falls on the shoulders of the patent owner.
As a small business with a patent or a patent portfolio, there are a number of pragmatic activities and approaches that can help combat potential patent infringers.
-Monitoring all products and processes in the field of an SME’s patented invention(s) will allow a patent owner to understand what patents are similar to his own and will help in surmising what kind of infringements are likely.
In the event an SME’s patent has been infringed, it is essential to act quickly.
l A patent owner should accurately translate his/her patent to the relevant language in the jurisdiction where she is applying for a patent. Because of the highly specialised nature of many patents, he/she should hire a professional translator; specifically one who can correctly translate technical terms and concepts.
Enforcing industrial designs
Industrial design in the legal sense refers generally to a product’s overarching aesthetic form or outward appearance. Some examples include the ornamentation, patterns or colour of armchairs, toys, watches and sports equipment.
To enforce industrial design rights, registration is a good starting point. Upon registration, requests for drawings and/or photographs of the designs in addition to a written description profiling the design’s novelty are submitted.
Like other areas of IP, it is necessary to police the avenues of distribution to ascertain whether an industrial design is being pirated.
Enforcing trade secrets
A trade secret is more or less self-defining: it is information that is kept from public distribution; owners of trade secrets seek to keep their special knowledge away from the public and/or competitors through a variety of legal and non-legal means, such as using non-disclosure agreements (NDAs) and non-complete clauses in employee contracts or building padlocked warehouses away from public view.
Because trade secrets fall outside the rubric of recorded IP, there are some special considerations that should be noted for purposes of business.
Firstly, like other IP laws, the degree to which trade secrets are protected in a given jurisdiction can vary. In the realm of valuation, trade secrets can pose a problem when, for example, a business is being sold.
Contracts between the business buyer and seller should include mention of any important trade secrets upon which the business is based, to ensure non- disclosure and to require the seller to instruct its employees to relinquish any records and materials that would enable the reconstruction of the trade secret.
The most important enforcement mechanism is to educate your consumers. The world’s most popular products are copied, sometimes very skillfully, leaving prospective consumers uncertain as to what they’re actually about to buy. If an SME has a website, it should dedicate a web page to illustrating how someone could tell a genuine product from a counterfeit product.
It should stress the quality of its product or ensure that its audience knows that there are only certain vendors that carry legitimate products.
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