August 2020  |  Printable pdf version

Everybody knows that starting a new venture or running a well-established business is a daunting task and that there are many reasons why many organizations do not meet success.

In particular, when it comes to Intellectual Property (IP), many companies ignore or do not recognize their assets, fail to properly anticipate and identify their needs, underestimate their potential breadth or do not adequately exploit it by setting up the best protection. Often ignored because immaterial, IP may be at any stage the foremost element of your business development and competitive strategy. And it may become your primary source of income and contribute to your economic health/wealth, growth potential and expansion abroad.

But what is IP? Katzarov – Patent and Trademark Attorneys

But what is IP?

Today, IP is a set of business, legal and financial assets covering creations of the mind, such as patents, trademarks, designs as well as copyright and related rights. They provide an exclusive right, which protects from misuse or misappropriation of your ideas.

One size does not fit all. Katzarov – Patent and Trademark Attorneys

 

One size does not fit all.

As they serve different purposes, more than one form of protection may apply to protect the fruit of your ideas. Moreover, one same object may be subject to several IP rights of the same kind, i.e., several trademarks, several designs and/or several patents covering different aspects at once.

 

Take the following examples:
  • A CD-player. Its technical parts are protected by patent, its shape by design and its brand name by a trademark, while the music played is protected by copyright and related rights.
  • A bottle of Coca-Cola®. The shape of the bottle is protected by both a design and a 2D or 3D trademark. The brand Coca-Cola® itself is a trademark (protected by many different versions), the soda’s formula/recipe is a trade secret, while the packaging is protected by copyright and sometimes design too.
  • A mobile phone. Its design, graphic profile and logotype can be protected by trademark, design and copyright. Its name can be protected by trademark. The technical solutions used in the phone, its components, the camera, the software, can be protected by patent (usually dozens if not hundreds of patents) or copyright. The graphical user interface that appears on the screen is also generally protected by design, while icons of the apps are protected by trademarks.

The following table summarizes the main features of the exclusive rights granted by IP:

Patents

Designs

Trademarks

Copyright

What is it?
An invention on a novel product, method, composition or process, or a new association of existing products/processes with a new result.

What is it?
Shapes and forms, i.e. the exterior appearance and aesthetic characteristics of an object (3d or 2d).

 

What is it?
A distinctive sign that identifies or distinguishes the goods or services of a company from those of other traders.

 

What is it?
An original intellectual creation including artistic, literary and other work/written expression.

Examples
A refrigerator, a toothbrush, a car motor, a medical device, an applecorer, etc.
Examples
Wallpaper/textile patterns, pieces of clothes, alarm clocks, toys, chairs, jewellery, containers, etc.
Examples
A word, phrase, logo, slogan, color, sound or any other distinguishing feature.
Examples
A song, a choregraphy, a text, a movie, a building, a sculpture, visual arts and work such as advertising and promotional material, etc.
In which situation?
Useful to any entity who manufactures innovative goods, i.e., goods which did not exist before or answer unresolved problematics.
In which situation?
Useful to any entity who manufactures  goods with an original/new shape, and especially when the shape of the product is its core value. 
In which situation?
Useful to any entity whose name and visual identity is important – basically, any actor of the market. 
In which situation?
Useful to any entity that creates content, especially when the creation cannot be protected by other IP rights.
Key attribute
Must solve a problem in a new, non-obvious and technical way and be industrially applicable.
Key attribute
Must be new, somehow original, industrially applicable and have an ornamental dimension besides serving functional purposes. 
Key attribute
Must be distinctivbe, not misleading and in line with public order and legislation.
Key attribute
Does not protect ideas, rather the manner in which ideas are expressed.
Term of protection
Generally 20 years (with annuity fees to be paid each year).
Term of protection
Generally 5 years, can be renewed until a maximum of generally 25.
Term of protection
10 years, can be renewed unlimitedly.
Term of protection
Generally 70 years after the death of the author.
 

Patents

What is it?
A technical invention on a novel product, method, composition or process, or a new association of existing products/processes with a new result.

Examples
A refrigerator, a toothbrush, a car motor, a medical device, an applecorer, etc.
In which situation?
Useful to any entity who manufactures innovative goods, i.e., goods which did not exist before or answer unresolved problematics.
Key attribute
Must solve a problem in a new, non-obvious and technical way and be industrially applicable.
 Term of protection
Generally 20 years (with annuity fees to be paid each year).
 

Designs

What is it?
Shapes and forms, i.e. the exterior appearance and aesthetic characteristics of an object (3d or 2d).

Examples
Wallpaper/textile patterns, pieces of clothes, alarm clocks, toys, chairs, jewellery, containers, etc.
In which situation?
Useful to any entity who manufactures  goods with an original/new shape, and especially when the shape of the product is its core value. 
Key attribute
Must be new, somehow original, industrially applicable and have an ornamental dimension besides serving functional purposes. 
 Term of protection
Generally 5 years, can be renewed until a maximum of generally 25.
 

Trademarks

What is it?
A distinctive sign that identifies or distinguishes the goods or services of a company from those of other traders.

Examples
A word, phrase, logo, slogan, color, sound or any other distinguishing feature.
In which situation?
Useful to any entity whose name and visual identity is important – basically, any actor of the market. 
Key attribute
Must be distinctivbe, not misleading and in line with public order and legislation.
 Term of protection
10 years, can be renewed unlimitedly.
 

Copyright

What is it?
An original intellectual creation including artistic, literary and other work/written expression.

Examples
A song, a choregraphy, a text, a movie, a building, a sculpture, visual arts and work such as advertising and promotional material, etc.
In which situation?
Useful to any entity that creates content, especially when the creation cannot be protected by other IP rights.
Key attribute
Does not protect ideas, rather the manner in which ideas are expressed.
 Term of protection
Generally 70 years after the death of the author.

 

So... why IP?

Nowadays, IP is all around and takes an increasingly important role as almost any commercialized product or service is the result of a chain of changes, improvement and innovations, which has an effect on various areas of our lives.

It is a wrong assumption that IP rights only serve defensive purposes. Like a Swiss army knife, IP rights have multiple aspects and offer numerous commercial, legal and financial advantages to what you have invented or created:

Commercial aspect. Katzarov – Patent and Trademark Attorneys

Commercial aspect

  • identify and differentiate your company
  • distinguish your assets
  • win a competitive advantage
  • generate economic value
Financial aspect. Katzarov – Patent and Trademark Attorneys

Financial aspect

  • attract investors and raise funds
  • finance your business
  • guarantee funding (pledge)
  • generate income (license/franchise)
Legal aspect. Katzarov – Patent and Trademark Attorneys

Legal aspect

  • confer an exclusive IP right on a territory
  • defensive – keep competitors at distance
  • offensive – prohibit the reproduction, imitation and adoption of the same or confusingly similar IP rights

In any type of business, there is a race to market competitiveness and attractiveness to customers. Ignoring IP standards, not addressing them at an early stage or lacking of a well-thought-out IP strategy may be fatal for your business viability, regardless of the size, profile and lifetime of your company.

For instance:

  • Start-ups have invested considerable money, time and efforts to innovate or create something and aspire to reap the benefits of their brilliant and innovative ideas by turning them into competitive and cutting-edge advantage so as to increase their profit margins and become a successful business. Safeguarding the product of these ideas through IP will help differentiate them, deliver their competitive advantage and generate revenue.
  • SMEs need to improve their competitiveness and potentially obtain a new source of revenue by getting the most value out of their know-how and creativity. Seeking protection of those IP assets may carry current and future economic value for their business.
  • Multinational and large-scale companies drive their commercial performance on a global scale. Understanding the international market and properly managing their worldwide IP portfolio is an operational and strategic issue to remain at the top.

 

The invisible ingredient of IP

As IP includes disclosure and may sometimes be perceived as being costly and time-consuming, some businesses are reluctant to secure their IP rights and hesitate to rely on trade secrets to hide their viable IP rights.

Besides not having to disclose some valuable information, trade secrets offer many attractive advantages. Unlike other IP rights, they are not limited in time and do not involve any procedural formalities or costs. Therefore, they may be perceived as a preferable alternative to IP rights. For instance, some of the most famous trade secrets have an immense value such as Coca Cola’s recipe or Google’s algorithm for its search engine. By treating their assets secretly, these companies have maintained their competitive advantage

However, any breach in keeping the information secret may be fatal, because once the secret information is made public or has no commercial value, anyone can use it. In case of misappropriation, protection offered by trade secrets is rather weak and more difficult to enforce compared to other IP rights. Legal protection mainly consists in non-disclosure agreements, work-for-hire and non-compete clauses but restricting the valuable secret information to few trusted individuals remains the key. In case of disclosure, trade secrets lose all their value.

Trade Secrets – Katzarov – Patent and Trademark Attorneys

In Switzerland – Katzarov – Patent and Trademark Attorneys

Trade secrets are not considered as IP rights and have no legal definition. There is no trade secret law either, but certain provisions in the Unfair Competition Act, the Criminal Code, and the Code of Obligations may apply.

Choosing the most appropriate approach is a difficult and strategic choice, which depends on several factors such as the profile of each industry, the competitiveness of the area and how long the products will remain on the market. While relying on trade secrets may be an interesting option in the fast-moving industry, the registration of IP rights is recommended in a highly competitive sector with technological breakthrough.

In parallel, trade secrets protection is useful for other confidential business information, which cannot be protected as viable IP rights, such as client lists, advertising strategies or other information, technique or method, which is not known to the public but has an economic value.

As other IP rights, trade secrets contribute to your company’s value and lie at the core of your company's competiveness. They must be appropriately protected and should be used with other IP rights to assert and protect the key assets of your business. The right protection is therefore undeniably a balanced mix of the information being kept secret and the registered IP rights, clearly identifying which assets are being protected and how.

Because IP rights not only depend on the business market but also constantly evolve through the lifetime of the company, being accompanied by skilled professionals in that field is a major key to success.

 

By Milana Pantelic and Julie Mondon
Trademark Attorneys at KATZAROV S.A.

KATZAROV SA
Patent & Trademark Attorneys
Geneva Business Center
Avenue des Morgines 12
1213 Petit-Lancy
Geneva
Switzerland
T +41 22 342 66 30
F +41 22 342 66 15
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