How to protect your intellectual property rights
The Covid-19 pandemic has made many small to medium sized enterprises (SMEs) appreciate just how important their domain names and other intellectual property (IP) rights are as well as the need to safeguard them.
However, before you can consider how best to protect your IP rights, you need to establish what they are.
Most of us would find it difficult to identify all of our IP assets, let alone implement the necessary measures to protect them. That is why it is so important to take professional advice to set you up so you can undertake regular IP audits of these intangible assets, yourself.
When are IP audits needed?
There are numerous reasons why you might need to undertake an IP audit.
The need might be simply a matter of due diligence: to ensure that your intellectual property is adequately protected to safeguard your existing and future strategic objectives. Your IP is a business asset and as with any asset, it needs to be identified and valued.
An IP audit should also include an external scoping exercise. This could avoid costly infringement claims and potential difficulties down the road.
An IP audit might also be desirable in the following circumstances:
- When key personnel are leaving or joining
- If you are entering into a licence
- If you are contemplating a merger or joint-venture
- In civil litigation
- Where your IP rights are uncertain
- If you are setting up a Franchise
An IP audit should also identify whether you are at risk of infringing a third-party’s established IP rights, here in the UK or perhaps abroad. IP rights are territorial and so it may be necessary to consider protecting your rights in foreign markets as well.
An IP audit can also flag up the need for various measures, in additional to registering or patenting a right, such as:
- Procuring licence agreements
- Non disclosure agreements
- Technology transfer agreements
- Non-competition Agreements
- Distributing and Manufacturing Agreements
IP audits can sometimes reveal potential new revenue streams, through licencing, franchising, or joint-venture agreements.
What confidential information do you not want your competitors to have?
A few examples from an almost limitless list of potential scenarios:
- Customer and supplier lists or other such databases
- Your marketing plans and confidential business objectives
- A particular way of doing something that gives your business an edge on its competitors
- Customer specific pricing lists
- In-house developed software
- Financial information, budgets, forecasts and business plans
- Detailed technical specifications for products or services
- Operation and design manuals
- Details of any product, process or service that enables your business to differentiate its offering
We can help you identify, protect and risk assess the threat to your business of each category of potential IP infringement.
What trade or brand name, logo, colour scheme or other symbols can you protect?
A trade mark is any sign or symbol that distinguishes your goods and / or services from those of your competitors. It can be one or more of any of the following: a logo, a shape, a picture or a three-dimensional form.
It is not strictly necessary to register a brand to protect it. This is because it is possible to seek redress in a passing off action. However to succeed in such a claim you will need to establish that:
- You have goodwill in the name/mark/ brand, and
- There has been a misrepresentation of one trader as another (at least in the eyes of the public) and
- You have suffered loss as a result.
‘Goodwill’ is the positive association that a name/mark has with its owner; where this association is deflected to a competitor as a result of its use of a name/mark which is either the same or too similar to that which is protected, so that damage has or might result, leading to a potential claim in favour of the true owner relating to the damage caused.
A professional audit will indicate whether the need to protect your trade name, logo or brand justifies the effort and cost of registration.
You should identify:
- Whether your business has more than one trade mark and if so which is the primary trade mark?
- Whether you use different marks for different products or services, or differently to when you first started your business?
- In which countries has this or these trade marks been registered and whether you intend to do business in a different country in the near future?
- Whether the registered proprietors of the trade mark are correctly cited?
- Are your registered trade marks due for renewal? (usually every ten years)
- Whether your trade mark infringes any registered mark or is likely to be confused with a previously existing competitor’s mark, in this country and abroad where you do business overseas?
- If unregistered, do you use the ™ mark to signify that you value the brand and you willingness to take steps to protect if from misuse?
To be eligible for registration, a sign or symbol must be capable of being represented graphically on paper.
Can you monetise your IP with licensing or franchising?
The simple answer is ‘yes’. You can licence, assign or franchise part or all of your IP. These are only feasible options if your IP is already fully articulated and protected. Everything is negotiable and that is why a project specific audit and professional advice is advisable. Richard James is one of only a handful of lawyers with a profound expertise in franchising and he also enjoys a national reputation as a first rate but approachable commercial lawyer.
Are your designs protected?
Generally speaking, a design that gives a product a distinctive look belongs to the person who created it. However, where the design is created by someone during the course of their employment or where it has been specially commissioned then it belongs to the employer / commissioning party. Some designs are automatically protected without registration, others need to registered. If a design innovative, in the sense that it unique and takes current thinking to a new level, then it may be patentable. This might apply to an innovation that makes your product work in a different way, a different way of working or a just a different way of making the product (perhaps from different materials). The grant of a patent confers an exclusive right to make, import, use, or sell a product or to use the patented process. The process of obtaining a Patent often takes up to 5 years; sometime even longer. You will need to consider where you intend to register the patent.
How extensive does your domain registration need to be?
The internet has served as a lifeline for may SMEs during the Covid-19 pandemic and for many others it has reemphasised just how important an asset your domain name is. For some businesses, it could be their single most valuable asset. So nothing should be left to chance, especially when it comes to the detailed administration. Here are some of the questions that need to be asked:
- Are the business owners listed as the registrant or legal owner of the domain name?
- Have you doubled checked to see who is listed as the primary contact as administrator?
- Are you absolutely certain that there are no inaccuracies that might result in your domain registration being cancelled?
- Have you diarised the expiry date for your registration?
- Have you considered obtaining a range of similar domain names with the other domains such as net; org or biz?
- Have you considered registering for several years ahead, to reduce the risk of missing an expiry date?
What copyrights need protecting and how?
Most SMEs already possess copyright in the sales literature and website content used to sell their products and services. This extends to leaflets, newsletters, blogs, articles, video presentations, packaging, parts lists, manuals, diagrams, sketches, photographs, databases and a legion of other media where ideas are expressed. Copyright occurs intrinsically, without the need for registration, from the moment a work is created. Even so, it is advisable to use the © symbol to signify your intention to protect your IP rights in your property. Different considerations may arise if your business operates abroad. Copyright only extends to the tangible expression of an idea as distinct from the idea itself. As with a design concept, the copyright is generally owned by the person who created the work or expression. However, where it is created by someone during the course of an employment or where it has been specially commissioned then it belongs to the employer / commissioning party. Special considerations apply to certain foreign jurisdictions.
Your Specialist for How to protect your intellectual property rights is...
Richard James Partner
Corporate Finance, Franchising, Technology and Media Contracts and Intellectual Property