How are trademarks, know-how, trade secrets and copyright protected in your country?
Franchise & Licensing
The protection of intellectual property rights (such as trademarks) in Angola is granted by Law 3/92, dated 28 February (“Intellectual Property Law”). As mentioned above, for trademarks to benefit from such protection they must be registered towards the Angolan Institute of Intellectual Property (“IAPI”), which can be obtained following the submission of a request for registration. The application can be challenged by any interested party, within 60 days after its publication in the Industrial Property Bulletin, with the applicant having the right to respond to such opposition, upon which a final decision will be issued by IAPI. Parties can file an appeal to Administrative Courts if their request or opposition has not succeeded.
Although know-how and trade secrets are not specifically protected by the Intellectual Property Law, it is worth noting that Law 18/03, provides in its article 43, 1, paragraph c), that amongst the obligations of the franchisee, he has the duty to keep secret the information disclosed by the franchisor, including manufacturing processes and know-how, either during the contract period or after its termination. It should be also noted that, franchise agreements usually include confidentially clauses and specific duties of secrecy which are generally accepted in Angolan law.
Copyrights are protected under Law 15/14, which foresees a general protection to the copyright works throughout the life of the author and 70 years after his decease. The moral rights connected with copyright do not expire and are enforceable and actionable by the author’s heirs.
Finally, we note that Infringement of trademarks also benefit from criminal and civil liability protection under Angolan law, for instance in case of counterfeit.
Franchisors can register their trademarks pursuant to the Trade-marks Act and can register copyright pursuant to the Copyright Act. Use of a mark in Canada without registration provides some trademark protection rights but those rights are limited to the trading area in which the business is known. Trademark registration entitles a trademark owner to protection across Canada (even if the owner is not doing business across Canada). Copyright also exists automatically when a work is created but it is much easier to protect against unauthorised users when it is registered.
Trademarks are protected in Chile upon registration. In addition to the registration in Chile of the trademarks that are part of a franchise agreement, the parties can register a short form trade mark licence with the Chilean Trade Mark Office to gain further protection against third-party trade mark infringement (section 18 bis D, Chilean Law 19,039 on Industrial Property, of 1991, as amended by Chilean Laws 19,996, of 11 March 2005 and 20,160, of 26 January 2007). Registration is not mandatory and most franchisors do not register trademarks licences unless they are aware of, or are particularly concerned about, possible infringers.
The franchisor must register its trade mark and logo with the Chilean Trade Mark Office in order to prove their validity against third parties, as the concept of "common law" trade mark is not recognised in Chile. It is sufficient to have filed for trade mark protection in order to enter into a franchise agreement or other trade mark licence agreement. It normally takes about six months to a year to gain full registration of trade marks, assuming that the applications are not contested. There is no procedure available through the Trade Mark Office to enforce trade mark rights against third-party infringements or post-expiration/termination use of the trade marks by a former franchisee. The sole remedy is to bring a criminal and/or civil complaint and request a seizure order to cease the offending use. The previous use of the trademark is not a requirement under Chilean trademark law for a party to register a trademark in the Chilean Trademark Office.
Generally, the following remedies are available in the case of infringement (Law 19,039 on Industrial Property): (i) cease of the infringing actions; (ii) damage award to the registered trademark holder; (iii) necessary measures to avoid further infringement; and (iv) publication of the court decision against infringers in a newspaper of the choice of the trademark holder.
Local laws provides a 10-year protection to registered trademarks, a term counted from registration date that could be extended for same term upon petition submitted before expiration of the term in currency or within 30 days following the expiration date.
Know How & Trade Secrets
No registration in any public office or registry is required to gain protection to trade secrets by local law. Moreover, trade secrets are protected by copyright on their mere creation as long as they remain confidential. Legal protection of trade secrets requires meeting the following requirements: (i) the information must be secret and non-accessible by third parties; (ii) the information must have commercial value; and, (iii) information must be reasonably protected by trade secret owner.
The misuse of trade secrets and other proprietary information by individuals or legal entities is punished with up to three years in prison and to a per-violation fine (section 284, Chilean Penal Code). While this provision remains relatively untested, a franchisor should be able to bring a civil injunctive relief action and/or an action for damages in a Chilean court in connection with any criminal proceedings against the infringer. However, enforcement of trade secret restrictions may be very difficult in a Chilean court that is inexperienced in these matters.
The latest amendment of Chilean law 19,039 on Industrial Property includes provisions on trade secrets (articles 86, 87 and 88) that regards as a violation of trade secrets the illegitimate acquisition, disclosure or exploitation thereof, provided that the illegitimate act entailed (i) an intent to make a profit (even if such profit benefits a third party; and, (ii) a damage to the trade secret owner.
Legal protection of trade secrets is indefinite provided they remain secret and confidential.
Chile is a member of the WIPO Berne Convention for the Protection of Literary and Artistic Works 1971, which require signatory countries to give national treatment to copyrightable works created in other signatory countries (including the USA). As any other works, computer software and manuals are protected by copyright on their mere creation, and in tune with copyright international regulation, no registration is needed to gain protection by local law.
However, a franchisor can facilitate enforcement against a copyright infringer by submitting its copyright works to the Chilean Copyright Office (“CCO”). The CCO would issue copyright certificate, which is regarded as prima facie evidence of holding rights on a given work in the event of an infringement. The lack of such certificate would force franchisor to prove its rights on the copyrighted material prior to obtain any relief. However, all copyrighted works submitted to the CCO are available to the public, so that the time and cost saved as a result of gaining prima facie evidence of rights could be outweighed by the public disclosure of the works.
Chilean law permits franchisors to contractually provide for the right to withhold a franchisee's use of materials (including copyrighted material) when the franchisee has failed to comply with the terms of a franchise agreement, including failure to pay all fees due to the franchisor.
Copyright licences can be registered with the Chilean Copyright Office, although registration is not mandatory.
Copyright protection remains in force throughout the life of the work’s author plus seventy years, counted from author’s death date.
- Trademarks are protected by the Law on Trademarks and Geographical Indications;
- Know-how and trade secrets are protected by the Law on Commercial Secrets;
- Copyrights are protected by the Law on Copyright and Related Rights;
- Administrative liability for violation of IPR is set forth by the Code of Administrative Offenses;
- Criminal liability for violation of IPR is set forth by the Criminal Code.
Trademarks, Copyrights and Trade secrets are all considered Intellectual Property Rights which are regulated under Law No. 82 of 2002, concerning the Protection of the Intellectual Property Rights (“IP Law”).
In order for a trademark to be protected according to the IP Law, registering same before the Egyptian Trademark Office is mandatory. The period of protection conferred by the registration of the trademark is ten (10) years, said registration shall grant the owner of the trademark the exclusive right to use and license his trademark and prevent third parties from registering the same trademark. It also grants the owner of the trademark the right to take legal procedures against any infringement by third parties.
Copyrights are protected in Egypt under the provisions of the IP Law. The IP Law indicates that protection of copyrights which shall be through registration at the competent authority based on the classification of the work. Copyright is protected throughout the lifetime of the author and for fifty (50) years after his/her death except for i) the authors of works of applied arts which protection period is twenty-five (25) years from the date of publication or making the art work available to the public and; ii) collective works which shall be protected for fifty (50) years from the date on which the work was published or made available to the public for the first time, whichever comes first.
Trade secrets according to the Egyptian IP Law may be termed under another terminology, we call it undisclosed information. Undisclosed information is protected under the IP Law, this means any type of information that is related to commerce so long as the following legal criteria are met with:
- Information which is confidential, in the sense that it is not, as a body or in the precise configuration or assembly of its components, generally known or common among those involved in the industrial art within the scope of which the information falls.
- Information that has commercial value because it is confidential.
- Information that depends on the effective measures taken by the person lawfully in control of it, to keep it confidential.
The legal possessor is the person who should maintain the confidentiality of such information. However, if the information were submitted to any competent authority to have a permission for marketing pharmaceutical-chemical or agriculture-chemical, the competent authorities should abide by the obligation of keeping such information protected from the date of its submission to the competent body until it is no longer confidential, or for a period not exceeding five (5) years, whichever comes first.
As for know-how, in order to explain protection thereof, we should differentiate between the source of the know-how which may be either: i) a patent, or; ii) technical information that is not registered as a patent as follows:
1- Know-how as a patent:
Registration is required before the Egyptian Patent Office for the protection of the invention as a patent according to the IP Law. Protection occurs when the inventor obtains the patent certificate which lasts for twenty (20) years, these 20 years will start retroactively as of the date of filing the application in Egypt.
2- Technical information which is not registered as a patent:
This is regulated under the Technology-Transfer Section in the Egyptian Commercial Law, which provisions thereof should be taken into consideration while executing the franchise agreement, as most of these provisions are considered as Jus cogens. The parties in this consensual franchise agreement will stipulate therein the protection provisions they deem suitable.
Trademarks, know-how, trade secrets, and copyright are all protectable Intellectual Property rights in France.
Under French law, any sign capable of being graphically represented and distinguishing the goods or services of an undertaking from those of another can be registered as a trademark (Article L.711-1 of the Intellectual Property Code). This can include, inter alia, names, audible signs, and figurative signs.
Trademarks, and any license or assignments thereof, must be registered with the INPI or EUIPO in order to be enforceable against third parties.
A duly registered trademark confers exclusive rights for 10 years, which is renewable indefinitely. These rights enable the trademark holder to act against any unauthorised use of the trademark.
Trademark holders can protect their trademarks by opposing the registration of new trademarks that may cause them harm, and by taking civil action for infringement.
Trade Secrets and Know-how
Trade secrets have recently been codified into the Commercial Code. Article L.151-1 defines trade secrets as information that:
- in itself or in the specific configuration of its components, is not generally known or easily accessible to persons within the relevant business sector;
- has actual or potential commercial value due to its secret nature; and
- is subject to reasonable protective measures by its legitimate holder, taking into account the circumstances, to preserve its secret nature.
In case of infringement, Article L.152-3 of the Commercial Code allows the holder of a trade secret to seek interim measures, such as injunctions to prevent the use or disclosures thereof.
The legitimate holder of the trade secret can authorize a franchisee to have access to the secret. It is advisable that the franchisee be bound by confidentiality clauses.
French law does not provide a codified definition of know-how, and therefore relies on case law as guiding authority.
Trade secrets and know how cannot be protected by copyright, and thus can be enforced on the grounds of unfair competition.
Under French law, copyrights are automatic rights that protect original works of the mind (Article L.111-1 of the Intellectual Property Code). No registration is therefore required.
Article 112-1 of the Intellectual Property Code covers many types of works that can be covered by copyright, including literary, musical, artistic, graphical, and photographic, to name a few. The work must be concretely fixed into a tangible medium, thus ideas and concepts are not copyrightable.
Copyrights can be subject to license or transfer. However, French law distinguishes between the economic rights and moral rights. Moral rights, such as the rights of disclosure, attribution, and withdrawal of the works, are inalienable and therefore cannot be licensed or transferred.
Copyright holders can protect their rights in civil courts, in particular for infringement.
Trade marks, know-how, trade secrets and copyright are protected by the provisions of the following Laws:
- Law 4072/2012 on Trade Marks;
- Law 146/1914 on Unfair Competition;
- Law 1733/1987 on Transfer of Technology, Inventions, Technological Innovations and Establishment of an Atomic Energy Committee;
- Law 2121/1993 on Intellectual Property;
Trademarks: Trademarks are regulated by Resolution No. 2385/1924.Personal ownership of a trade mark cannot be claimed unless the trademark has been previously registered at the Ministry of Economy. The minimum protection is for a period of 15 years, which can be renewed for subsequent periods of 15 years. Penal sanctions apply to any person that deliberately imitates or uses or affixes the mark to their goods and products or sells a counterfeited mark or a fraudulent imitation of such mark. The right holder can also claim compensation for damages.
Copyright: Artistic and literary works are protected by Law No. 75/1999. However, ideas, data and abstract scientific facts are excluded from the protection provided by this law.Any person who infringes copyright will be required to pay fair compensation to the copyright holder for the material and moral damages. The infringer may also be liable to penal sanctions.A copyright must be registered at the Ministry of Economy.
In general, trademarks and copyrights are protected in accordance with the Trademark Law and Copyright Law, which follow the TRIPs since China is a contracting country. Know-how and trade secrets are protected under the Anti-unfair Competition Law. Where a violation of the laws constitutes an administrative or criminal offence, administrative or criminal liability shall be pursued.
Intellectual Property Rights or IPRs must be registered in Peru to be protected from third parties before the National Institute for the Defence of Free Competition and the Protection of Intellectual Property (INDECOPI).
In Peru, protection of intellectual property can be divided into the protection of industrial property and the protection of copyright.
Industrial property protection applies to all economic activities. All natural or legal persons recognized by the constitution and laws of Peru, whether or not domiciled in Peru, are entitled to industrial property protection. The protected components of industrial property are invention patents, certificates of protection, utility models, industrial designs, trade secrets, goods and services marks, among others. Industrial property in Peru is governed mainly by Decision N°486 of the Andean Community (Comunidad Andina), Legislative Decree N°1075 and international provisions. Product and service marks must be registered with INDECOPI to obtain legal protection. Registration is done according to the International Classification of Goods and Services for the Purposes of the Registration of Marks (i.e., Nice Classification) and can be carried out through a multi-class registration request. Upon completion of the registration procedures, the competent authority issues a certificate that grants the holder exclusive rights to the mark for 10 years. Registration may be renewed six months prior to expiration and up to six months after the expiration date.
Likewise, copyright protection accrues to all intellectual works in the literary and artistic domain, whatever their type, form of expression, merit or purpose.
Trademarks, patents, and copyright are protected under the IP Code, which prohibits and penalizes infringement.
The IP Code includes “protection of undisclosed information” in its definition of “intellectual property rights”. Trade secrets and know-how may fall under this definition. The IP Code, however, does not have specific provisions protecting undisclosed information. Nevertheless, the Revised Penal Code punishes an employee of any manufacturing or industrial establishment who, to the prejudice of the owner thereof, shall reveal its secrets.
Trademark is a core element for every franchise transaction targeted at Russia. Trademark may be protected on a national or international basis. National marks must be filed and registered with the Federal Service for Intellectual Property (Rospatent). As Russia is a signatory to the Madrid Agreement and the Madrid Protocol, international registrations, which designate Russia, are also protected. To be registered, a mark must be new and distinctive. Distinctiveness may be inherent or acquired. A trademark can acquire distinctive character through intensive and actual use in commerce. Any words, pictures, three-dimensional configurations and other marks may be registered as trademarks. The registration of non-traditional marks (eg, sounds, colours and smells) is also permitted. Generally, use of the mark need not be claimed before registration. Proof of use need not be submitted before the trademark application is filed. However, the owner must use the trademark within three years of registration. If the mark is not used during three-year period after trademark registration, any interested person may apply for cancellation of the trademark protection on the grounds of non-use following a special pre-trial procedure. Registered trademarks are listed on the Trademark Register and are valid for 10 years.
Any proprietary and confidential information related to a business method or technology may be protected as a secret of production (also known as “know-how”). Know-how is not subject to registration or deposit. Nevertheless, the owner of know-how must undertake certain reasonable measures to maintain the confidentiality of the relevant information. If such measures are not implemented, know-how protection will not be afforded to the confidential information. One of the proper legal ways to acquire know-how protection is the introduction of the so-called “trade secrets regime” as it is specified in Russian law. In brief, owners of confidential information must properly identify and list the confidential information, limit an access to the confidential information by establishing an appropriate procedure for dealing with the same, affix the notice “trade secret” and add the owner’s details to the media in which the confidential information is stored and follow up with the other required steps. Know-how will be protected for as long as it is kept secret by its owner, licensees and franchisees. When the confidentiality is lost, the exclusive rights lapse immediately.
Copyright subsists in any scientific, literary and artistic works fixed in any tangible medium of expression, regardless of benefits, purposes or methods of expression. To be copyrightable, a work of authorship must satisfy two fundamental criteria: it must represent a result of creative input of the author and it must be fixed in a tangible media (e.g., paper or CD-ROM). Texts, graphics, designs, audio-visual works and software are subject to copyright protection in Russia. Copyright vests in a work of authorship from the moment of its creation. No registration or compliance with any other formal steps is required to acquire, exploit, transact or enforce copyrights in Russia. The standard term of copyright protection is the life of the author plus 70 years after her or his death.
Trade marks are protected by registration in the Intellectual Property Office of New Zealand. Once you have selected or designed your trade mark then as a precautionary move it is possible to obtain a search of the Trade Mark Register to ensure that it does not conflict with anyone else’s mark.
Assuming that the trade mark is available, its protection is afforded by filing an application and paying the requisite fee. Once processed, the Trade Mark Office will issue a filing date and application number.
In the United States, trademarks, know-how, trade secrets and copyrights are protected by federal and state statute, as well as by common law.
A trademark is created by virtue of its owner’s use of the mark in connection with a certain set of goods or services thereby resulting in “common law” rights in the mark. Neither federal nor state registration is required in order to create a trademark; however, given that a franchisor’s trademark is the very essence of its franchise system and brand value, it is highly recommended that a franchisor seek trademark registration as step one in its franchising journey. Registration serves to both put the general public on notice that the franchisor claims ownership of the mark and also to provide the franchisor with presumptive rights to the mark in the event it becomes necessary to protect the mark against infringers.
Trademark protection in the United States is afforded on both a federal and state level. While, pursuant to the Lanham Act (also known as the Trademark Act of 1946), a federal registration gives the registrant, except for prior uses in any given market, protective rights throughout the entire United States of America (and, in fact, requires that the mark in question be used with goods or services in interstate commerce (i.e., across state lines)), on the state level, trademark registration only protects a subject trademark in the particular state within which registration was accomplished (and within which the mark is used with goods or services).
On the international level, while a trademark federally registered in the United States of America only provides protection therein, pursuant to the Paris Convention it may sometimes allow for an early priority date in other counties in which registration is sought. Further, under the Madrid Protocol (to which the United States of America is a party), trademark holders can ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. While each country retains the right to grant or deny protection of a mark, once the trademark office in a designated country grants protection, the mark is granted the same protection as if such application was filed directly with the United States Patent and Trademark Office (the “USPTO”).
Notwithstanding any common law rights in, or federal and/or state registration of, a trademark, it is still possible for an owner to unintentionally lose the right to its mark. In order to maintain trademark registration in the United States, an owner must be able to prove continued use of the mark in the identical and consistent form originally filed with the USPTO. If it cannot, the USPTO may refuse to renew the owner’s registration and/or the owner may lose its presumptive rights to the mark. So, for example, if a franchisor trademark owner engages in “naked” or uncontrolled licensing (i.e., it fails to exercise control over third parties using its marks and/or fails to require third parties to enter into written trademark license agreements delineating clear quality control provisions), it may lose control of its marks and therefore risk ownership thereof. As well, a trademark owner must actively monitor the use of its trademarks and enforce its rights therein in order to maintain ownership. By way of example, if a franchisor trademark owner learns of a third-party infringing use of its marks and takes no action (such as, by way of example, sending a cease and desist letter or commencing a legal action against the user), its presumptive ownership could be lost.
Know-how and Trade Secrets
While a franchisor’s trademark may be the face of its franchise system, its trade secrets and know-how are the soul. These trade secrets and know-how can include any confidential information which is used in the franchisor’s business and gives the brand an opportunity to obtain an economic advantage over competitors who do not know or use such information. It may include a formula, pattern, compilation, program, device, method, technique or process.
On a statutory level, until relatively recently, the protection of trade secrets was only regulated at the state level, which varied from state to state and which required litigants to resolve their disputes in state court. However, in 2016 the United States enacted the Defend Trade Secrets Act, which created a federal private right of action for trade secret misappropriation and access to federal courts to resolve disputes. While the Defend Trade Secrets Act does not pre-empt state law and plaintiffs can (if they so desire) still choose to litigate in state court and under state law, the Defend Trade Secrets Act served to strengthen and provide uniformity in U.S. trade secret protection. Importantly, in order to seek protection under the Defend Trade Secrets Act, a plaintiff must demonstrate that it has taken reasonable measures to keep such information secret; the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information; and the trade secret is used in, or intended to be used in, interstate or foreign commerce.
In addition, trade secrets may be protected by court order. By way of example, a court can order an injunction to cease misappropriation; order a misappropriating party to take overt steps to maintain secrecy; order the payment of a royalty to the owner; and/or, award damages, court costs, and reasonable attorneys' fees. Importantly, if a trade secret owner fails to maintain the secrecy of its supposed trade secret or if the supposed misappropriator independently discovers the information or the information becomes generally known to the public, the owner will lose all rights to such trade secrets.
Copyrights are protected in the United States on the federal level under The Copyright Act of 1976 (the “Copyright Act”), which prevents the unauthorized copying of a work of authorship. The Copyright Act provides that a copyright is established when the author “fixed the copy for the first time,” so long as the work is original to the copyright owner. Importantly, this Copyright Act is limited to copying the actual work itself; it does not protect the ideas that underlie the work. Similar to trademark registration, copyrights are not required to be registered in the Copyright Office in the Library of Congress. However, registration is a pre-requisite for instituting a lawsuit to protect against copyright infringement, and may lay the grounds for an award for statutory damages and attorneys’ fees. In addition, registration serves to provide notice to the general public of the fact of such ownership. The United States has copyright relations with most countries throughout the world and, as a result of these agreements, generally honours such other citizen’s copyrights.
Although it is less common for franchisors to register their copyrights, it is nevertheless recommended that a franchisor claims copyright in its manuals and other written materials (and that such manuals and other written materials recite such claim).
The following comments should be considered a brief overview of this subject only.
Trademarks in Norway are protected under the Trademark Act (2010) and are normally registered by filing an application for registration directly with the Norwegian Industrial Property Office (NIPO) or by filing an application and obtain registration in accordance with the Madrid System which is a more practical solution for registering and managing trademarks on a global scale.
An application to NIPO must include an image of the trademark and a list of goods and services based on the Nice Classification-system, for which the trademark will be registered.
NIPO requires a registration fee determined on the basis of the number of classes of goods and services. NIPO will consider the application and assess whether the application meet the formal requirements for registration. The registered holder of a trademark will obtain protection for the trademark for use for those products and services for which the trademark is registered in Norway.
Trademarks can also be protected without registration, subject to such extensive use that the trademark is considered 'well known' as a mark/brand for the relevant goods/services, within its circle of customers.
Without going into the details of definitions of 'know-how' and 'trade secrets', there are legal regulations protecting trade secrets both in the Norwegian Marketing Act (2009) and in the Norwegian Penal Code (2005). Non disclosure agreements (NDA) or non disclosure clauses are commonly used in various forms of contracts such as employment contracts or business agreements where information, know-how and trade secrets are exchanged between parties.
Unlawful obtaining of knowledge or possession of trade secrets is punishable with fines or up to 1 year imprisonment. Unlawful use or disclosure of trade secrets is punishable by fines or up to 2 years imprisonment, subject to certain requirements. The unlawful use must be for business purposes in competition with the originating business and disclosure must be done with the intent of enabling someone to exploit the trade secret. This also applies to unlawful obtaining, use and disclosure of technical drawings, recipes, models, descriptions or technical aids.
Copyright is protected by the Norwegian Copyright Act (2018), which doesn't require any registration of the copyright. The rights originate upon creation of a piece of work that is considered by law to constitute an intellectual work. This could be in the form of a written text, an image, a recording, a video, a piece of music etc. The rights to the work belong to the originator of the work, subject to exemptions in law or contract. For example, the Norwegian Copyright Act specifically dictates that rights to software created by an employee as part of fulfilment of the employment agreement, are automatically transferred to the employer. The moral rights remain with the originator.
Italian law grants protection to both registered and unregistered trademarks.
Registration confers to the owner the right to prevent third parties from using in the course of trade, without his consent:
a) any sign which is identical to the trademark for goods or services which are identical to those for which the trademark is registered;
b) any sign that is identical or similar to the registered trademark, for goods or services that are identical or similar, where due to the identity or similarity between signs and the identity or similarity between the goods or services, there exists likelihood of confusion on the part of the public, that can also consist of a likelihood of association of the two signs;
c) any sign which is identical with or similar to the registered trademark in relation to goods or services which are not similar, where the registered trademark has a reputation in the Country and where use of that sign, also for other purposes different from the one to distinguish the goods and services, without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark (Article 20 of the Code of Industrial Property).
Unregistered trademarks are protected only if they are used, and only in the territorial area in which they are used.
Know-how and trade secrets are protected under Articles 98 and 99 of the Code of Industrial Property. The provision refers to business information and technical-industrial experience, including the commercial ones, whether such information:
a) are confidential;
b) have an economic value
c) appropriate measures have been taken to keep them secret.
Copyright is protected by the Copyright Act. The protection includes economics rights as well as moral rights (such as the right to be recognised as the authorship of the work). The moral rights are not subject to time limitation and cannot be waived or assigned.
As a general rule, it is always advisable for a franchisor to register its trademarks as it provides are more straightforward recourse against infringers and gives greater security and confidence for franchisees. The BFA requires that the franchisor must either own or have the legal right to use the network's trade name, trademark or other distinguishing feature and this applies to all BFA members.
Goods and services trademarks should be registered under the Trademarks Act 1994 at the UK Intellectual Property Office. Despite Brexit, it is also still possible to obtain a community trademark, which would be universally applicable throughout the European Union. A community trademark registration must be filed at the Office for Harmonization in the Internal Market in Alicante, Spain, or an international registration (designating the countries in which it is desired to protect the mark) through the World Intellectual Property Organization under the Madrid Protocol.
However, under common law there is also protection available for unregistered trademarks under the tort of "passing-off". This covers a situation where a person takes advantage of another's reputation by adopting a similar name or implying a link with their products or services. However, it can be difficult to bring a claim for passing off and, in order to be successful, the claimant must demonstrate strong goodwill in the brand and must show that the false imitation on the part of the defendant has resulted in the claimant suffering loss.
Most franchisors keep the bulk of their know-how in an operations manual. This manual is protected by copyright which subsists automatically and does not require registration.
The operations manual also tends to contain the franchisor's trade secrets and these are typically protected through confidentiality and non-use provisions in the franchise agreement. The protection of trade secrets through the common law of confidence has been supplemented by the Trade Secrets (Enforcement, etc.) Regulations 2018, which implemented the EU Trade Secrets Directive (2016/244/EU). This provides greater remedies for breaches of trade secrets and enables trade secrets to be enforced independently of contractual agreements.
Trademarks can be protected in accordance with the Trademark Act in two different ways, either by registration of a trademark with the Danish Patent and Trademark Office, or by commencement of use of a trademark. If the trademark does not have the required distinctive character at the commencement of use, the right is established if and when a distinctive character is created by the use of the mark.
Know-how is not defined by statute but can be protected by the provisions of the Marketing Act and the Trade Secrets Act. When drafting a franchise agreement, the franchisor's know-how is usually protected by detailed provisions of confidentiality, both during the term of the agreement, and also after the agreement has expired.
It follows from the rules in the Trade Secrets Act that a contractual party, such as a franchisee may not (unless authorised) pass on or make use of the other party's trade secrets such as technical or commercial information and know-how. Only specific information is protected and the categorisation as a trade secret presupposes that the information is not generally known, represents a commercial value and has been subject to reasonable measures in order to ensure that the information concerned will be kept secret. Actions in conflict with this prohibition may incur liability to pay damages under the general rules of Danish law as well as a fine or imprisonment for a period up to one and a half years.
There is no general requirement as to form in regards to protection of copyrights under Danish law. The acquisition of a copyright commences without observation or fulfillment of any formalities, such as e.g. registration, notification, application or deposition. The copyright comes into existence as part of the creation of the work/piece.
Trademarks in Mexico are protected through their registration before the IMPI. The holder of a registered trademark must prove the use of such trademark in order to avoid a cancellation action exercised by a third party who claims the lack of use by the holder. One way to prove the use of a trademark foreseen in the IPL is the granting of a license or franchise which is recorded before the IMPI.
In the event that the franchisor is not the owner of the trademarks, but another entity of the same group, then an intercompany trademark license agreement may be executed between the owner and the franchisor in Mexico and then recorded (or a summarized version of such) before the IMPI.
Know-how may be protected in Mexico whether through copyrights based on the Federal Copyright Law (FCL) or though patents or trade (industrial) secrets in terms of the IPL. Furthermore, it is recommended to always execute confidentiality agreements with the persons who will have access to information which contains know-how.
Trade secrets (or industrial secrets, as known under the IPL) are protected in terms of such law. The breach of a confidentiality obligation may result in the payment of damages and losses or of a conventional penalty, if agreed upon in the relevant agreement and, in some cases, disclosure of trade secrets may be considered a felony.
The IPL considers the unauthorized use of intellectual property rights to be an administrative infringement, for which the IMPI may exercise specific actions against the infringer.