IP rights can be valuable commercial assets which should be identified and protected. The first step in protecting your IP is to identify the IP assets that you actually possess. This can be a complex task, and needs to be conducted on an ongoing basis as your business develops. For this reason, it is generally advisable to contact an IP professional to conduct a review of your business.
How do I identify valuable IP rights?
An overview of the main categories of IP rights and some of the different things they protect is given below:
Trade Marks – let customers and potential customers know the commercial origin of your goods and services – can include domain names, business & company names, product & brand names, logos, trade dress & packaging designs.
Designs – protect the appearance of industrial products & their packaging including surface decoration, and features of shape & configuration.
Patents – protect industrial inventions.
Copyright – protects original artistic, musical or literary creations which may include computer programs, marketing materials, songs & lyrics, works of artistic craftsmanship.
Database Right – protects the investment made in a new database.
Confidential Information – protects business secrets.
Once you have identified your IP, you need to give thought to whether it is properly protected in the territories where you trade or may wish to trade in the future. As a general rule, where possible you should try to obtain registration of your rights in order to protect and commercialise them as IP assets.
If you need assistance to conducts an audit of your IP rights contact us here.
How to Secure IP Rights in Important Markets
Registered Rights
Broadly speaking, IP rights can be categorised as registered or unregistered rights. The advantage of registered rights such as a UK Trade Mark Registration or UK Registered Design that they provide their owners with evidence of the scope of the right registered. They also provide a monopoly in the right registered so that it is unnecessary to show that it has been copied in order to stop unauthorised third party use.
These factors are key in ensuring the protection and commercialisation of your brands. Therefore, where possible key IP Assets should be protected by means of registration in markets of interest to your business.
Without a registration you are more limited in how you can commercialise your IP through, for example, licensing opportunities. You are also limited in the IP enforcement options that are available, which could in turn lead to dilution and loss of confidence in your brand among customers and investors.
Unregistered Rights
Where registration is not possible, unregistered rights should be properly identified and recorded at the time of creation for the purposes of future enforcement and commercialisation. Contracts for creation of designs and copyright works (including contracts of employment) should clearly set out provisions for ownership and remuneration in respect of designs and copyright works created on commission or whilst employed to avoid future disputes.
Some IP rights, for example, copyright and database right, cannot be registered in the UK and do not require registration to spring into being. This can seem like an advantage for a business with limited resources. However, registration of an IP right ‘fixes’ the nature and scope of the right as well as fully identifying the owner of the right. Uncertainty in these areas can make it difficult for the owner of an unregistered right to prove ownership or to show that the scope of the right extends to prevention of the use made by the alleged infringer. In this way, enforcement of an unregistered right can become complex and expensive with correspondingly less incentive for an infringer to come to terms and settle without the necessity for expensive court proceedings.
How to Maintain Registered IP Rights
Trade Marks
A UK or EU Trade Mark Registration will lapse and cease to have effect in the absence of renewal every 10 years.
From the date of registration of a UK or EU Trade Mark Registration there is a 5 year grace period to begin use in the territory covered. Following Brexit, it should be appreciated that use in the EU does not count as use of a UK comparable trade mark right and that use in the UK is no longer relevant to showing use of an EU Trade Mark Registration throughout the EU.
After the initial 5-year grace period it is open to third parties to apply to revoke your registration if you have not made genuine use of it during the past 5 years. If no evidence of use can be shown, and there is no reasonable justification for non-use, then your trade mark registration will be lost. In the absence of proper use you may also be unable to use your registered trade mark to prevent unauthorised third party use and registration.
Non-use actions are commonly used by competitors when they notice that the trade mark of a rival business has not been used for 5 years. Accordingly, once you have a UK Trade Mark Registration, it is important to use it, and to promptly defend any non-use action by a competitor. In case of attack you will bear the onus of providing evidence of your use so it is important to maintain your records of use, including use by licensees, subsidiaries or otherwise with your consent. It is also important to remember that you will need to show use of your trade mark in the form registered and in relation to the goods and services covered. Use of a different mark or use for similar goods or services is insufficient.
Trade marks can also be lost if they become generic in the trade through a process called dilution. For this reason it is important to actively enforce your trade mark registrations against infringing third parties, and third parties seeking to obtain a confusingly similar trade mark.
It is advisable to put a commercial watch in place once your trade mark is registered so that you are fully informed of later trade mark applications which might conflict with or dilute your trade mark rights.
These issues highlight the necessity for trade mark owners to periodically review their portfolios of IP rights to ensure that registered rights protect and match the use actually made by the business in markets of interest and that they cover any licences granted to third parties.
Designs
UK & EU Design Registrations will lapse and cease to have effect in the absence of renewal every 5 years up to a maximum duration of 25 years.
If you need assistance to renew or maintain your registered rights contact us here.
Representation & Address for Service
It is important to ensure that agent and address for service details for your registered rights are up to date so that you continue to be informed of renewal and other maintenance requirements, and that you receive notifications and other official communications which will allow you to defend your registered rights from attack, and object to conflicting marks.
From 1 January 2021 a UK address for service must be appointed for each of the following:-
- a new UK trade mark application
- a new design registration
- a new UK comparable trade mark registration derived from the EU designation of an International Registration (Madrid Protocol)
To ensure proper portfolio management it is also advantageous to have a UK address for service for UK comparable trade mark and design registrations created to avoid loss of rights after Brexit.
We act as agent of record for our clients and maintain careful records so that maintenance requirements are met in good time. We also receive and report official notifications so that objection may be taken to conflicting trade mark applications and threats to your registered rights dealt with in a timely fashion.
If you need assistance with representation contact us here.