Tag Archives: designs

Intellectual property

Intellectual Property Rights – Frightening?

I was speaking to a designer recently who said that people find IP rights very frightening.

That intrigued me. Why fear IP? Is it that you fear what you don’t understand? Is it that IP is a nuisance perhaps?

Whatever the reasons for this designer’s comment the reality is that IP is part and parcel of business. You need to be mindful of IP all the time, whether you’re starting a new project or business or growing or exiting a business.

 

It’s Possible It’s Not Your Intellectual Property

The fact that it’s possible that something you assume is yours is regarded by the legal system as not yours is a difficult concept to grasp perhaps. That’s because IP often resides within something else. At it’s simplest you may own a book but you don’t own the copyright in that book. It belongs to the author or the publisher. Similarly, you may own your website in the sense that it’s your site, but not necessarily own the copyright in its designs and functionality. What this means is that you can use it for your business but if you try to licence valuable parts of the design or functionality to others in order to generate a new income stream you would be prevented from doing so because you don’t own the copyright and designs in it.

Questions that arise in relation to IP include:

  • What type of IP is it?
  • How should you protect it so it can be yours?
  • What should you do to turn your idea into IP that you can own?
  • Is it essential to keep your idea secret so you can own valuable IP?
  • Are you infringing on other people’s Intellectual Property?

What Is Intellectual Property?

Intellectual property (“IP”) is an umbrella term that describes a range of rights in intangible assets, such as:

        • Copyright: in various works like photographs, words, music, logos, and software.
        • Designs: rights in the shape of goods like ipads, or bottles, or in the surface design of materials such as wallpaper.
        • Trademarks: rights in packaging, names, slogans, and logos.
        • Patents: over an innovation which was previously unknown, like the bagless Dyson vacuum cleaner.

IP rights are territorial, which means you are generally protected in the countries in which you register them. For IP rights that arise automatically, such as copyright, you will have wider protection worldwide thanks to international treaties between countries.

Also, there are useful measures you can and should take in other countries to better protect your assets.

 

Owning Intellectual Property

To own intellectual property rights it’s necessary to take the right actions in relation to your ideas. That’s how you avoid discovering that your ideas become someone else’s intellectual property. It’s important when commissioning someone to carry out certain types of activity that results in new IP to have the right agreements in place.

Otherwise, you could find that:

  • your logo belongs to the designer who created it.
  • your website is not yours to do with as you like

Due to the IP default rules, it’s all too possible if you don’t know the right actions to take, to find that you pay for work to be created, but that you don’t own the rights to exploit it.

The biggest trap to avoid is finding that your idea for business software becomes the IP of those who develop it.

 

Avoid Infringement

It’s necessary to think of IP in two ways. Firstly, whether you will be infringing on someone else’s intellectual property rights. Secondly, whether someone else is infringing on your rights.

Doing searches of various kinds and registering rights is key to protecting inventions and names. As it’s necessary to protect your turf against copycats, disputes can arise all too easily, so you need help to manage and resolve them, even if that doesn’t involve a last resort of using the court process.

Typically, not owning copyright to something important in your business is undesirable. This could result in the sale of your business falling through.

To protect IP involves implementing a range of legal agreements, not just when you’re setting up a new website, or licensing your IP or selling products and services online, but also as you grow the business. It becomes even more important with growth of a business to have good agreements in place that protect your intellectual property.

Protecting a new name, software and other assets against copying of all kinds, or an invention that could be patentable are reasons to deal with IP. It’s what makes your business valuable.

So going back to the question I started with, whether IP is frightening, it’s not IP that is the problem so much as ignorance of something important in business.

We are still at the early stages of the digital economy, but the more digital our lives become the more essential it is to get a good understanding of IP and protect your business. Start by having an intellectual property assessment and advice. We provide this at Azrights.

podcast_shireen_smith

Legally Branded Podcast | How To Protect Your App Idea from Being Copied

podcast_shireen_smithHow do you protect your original app idea from being copied by others? And what are the key considerations you need to know when it comes to developing a successful product? We talk about all this and more in today’s episode.

Click to Listen to Legally Branded podcast.

Topics discussed:

  • Why it’s important to protect your app idea from being copied.
  • What it takes to transform an idea into a successful app or product.
  • The legal protections you can use to protect your intellectual property.
  • The importance of researching the different legal tools to protect your app idea.

 

Key Takeaways:

  • Any idea for an app, no matter how groundbreaking it may seem, only has the potential to be a successful product. You’ll need to address various issues along its development before you can transform it into your vision. In the end, the success of your app depends on whether your idea is well received.
  • There is the real problem of how to protect your idea so that you benefit from it. Unless you know how to develop an app yourself, you’ll need to hire the right person or company to develop it for you. This requires using the right agreement to plan the project and protect your interest.
  • Protecting your intellectual property needs to be covered in your plans first and foremost. You need to know how to use the law to support you if you’re to achieve your aims. Ignoring the law can lead to discovering unintended consequences that can prove fatal to your entire project later on.

 

Action Steps:

  • Critically assess your idea. Spend time doing really thorough research on your product and check it’s market viability.
  • Before you take any steps to implement an idea, take the time to understand the legal protections you can use to protect it.
  • Learn the five principle rights covered under intellectual property, namely: copyright, patents, trademarks, designs, and confidential information.

 

Shireen said:

“Quite aside from the very real practical problem of finding somebody who understands your vision and can deliver an app that reflects what’s in your head, there is a real problem of how to protect the idea so that you benefit from it.”

“If you don’t take the right actions very early on when you’re creating something if you’re not careful how you implement your ideas, then you may actually lose the opportunity to own a valuable intellectual property right.”

 

Thank you for listening!

 

You can discover more ways to use the law to protect your next big idea by checking out my Legally Branded Academy Course.

 

Feel free to ask questions or connect with me on social media using the links below. If you liked today’s episode or have learned something new from the series, please consider giving a review.

 

Links to my books and online courses:

  • Books:

 

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Shireen’s Website

What is Intellectual Property Part 2

What is Intellectual Property? A Guide for Start Ups (Part 2 of 2)

What is Intellectual Property Part 2In this second blog post for ambitious start-ups during global entrepreneurship week, I focus on names, copyright and designs, as well as know how.

In the first blog post, What is Intellectual Property? A Guide for Start Ups (Part 1 of 2), I looked at patents and trade secrets.

There is much a well-informed start-up can do to protect its IP without spending a lot of money. The trick is having an IP strategy and knowing how to manage IP issues.

IP issues for names

As mentioned in an earlier blog, a start-up is not free to choose whatever name it likes. There are legal considerations to take into account. Finding a name that is available to use can be difficult due to the sheer volume of existing trademark registrations, and the fact that similar names are a problem.

For example, as discussed in our blog post, Facebook Users Mourning the Removal of Scrabulous, the name “Scrabulous” was too similar to “Scrabble”. As a result, the Scrabulous Facebook App which had attracted thousands of followers had to rebrand.

Trademark clearance checks are necessary to avoid infringing on the rights of others. While you can do some basic checks yourself, you need advice from a good trademark lawyer before you settle on a name. Names are an important way in which the law protects a business, so it is worth taking time to pick a good, legally effective one.

Once the name is picked, and checked – this might involve international searches if your business is going to be online – you need to register a trademark. You also need to be ready to extend that registration internationally.  Registration can be costly, so a business without a budget for IP would do well to delay choosing its ultimate brand name.

Disasters due to ill-advised name choices

Trademark disasters can befall any business, even multinationals such as Microsoft. Microsoft was forced to rename its cloud storage service SkyDrive to OneDrive following a trademark infringement dispute with BSkyB. Start-ups face similar problems all too often, they just don’t attract media attention. An important difference between start-ups and the Apples, Amazons, and Microsofts of this world is that start-ups lack the resources to get themselves out of trouble.

If a start-up has to rebrand for infringing on the rights of others it could sink altogether. As I explained in my blog post, Rebranding: Legal Issues you can’t afford to ignore, don’t shrug off the risks by assuming you will just rebrand if it comes to it. A rebrand involves changing everything at short notice and it will rarely be possible to divert customers from your old URL to the new one. Taking a risk over your name is a gamble – not a sensible business decision.

To avoid problems it is best to go with a temporary name initially. The time to focus on finding a permanent name is once the business concept is proven and there is a budget for IP checks, registrations and designs.

One strategy might be to start off using a descriptive name. As descriptive names cannot be registered as trademarks, you’re on safe ground using them. You can choose a distinctive brand name later, when resources allow. You can always keep your descriptive name at that stage by making it your tagline.

Businesses that need a budget for names from the outset

On the other hand, you may be starting a business where it is essential to build a brand. In a blog post a few years ago, I explained how Zumba’s success is due in part to its name. Zumba is a distinctive name that in no way describes its dance fitness business.

If yours is such a business – one that needs an effective brand name in order to succeed – then you would not be able to use a temporary name. You would need to find funds to consider trademarks before embarking on the business.

If Zumba had chosen its name but failed to register a trademark before the dance took off, its rapid success could have meant the founders were no longer able to register ‘Zumba’ as a trademark. This is a peculiarity of trademark law. Zumba’s wild success might have made the name generic and therefore incapable of registration.

It is generally advisable to register a trademark, as that is how you own the rights to a name. By registering their name, Zumba were able to capture the value that their success generated. Without it they would not have been able to exploit their brand for categories such as videos, clothing, books, and so on. And, the business would be worth only a fraction of what it is worth today.

So, if your success hangs on creating a brand, and licensing others to use your name, you won’t make it big unless you spend on international trademarks.

Copyright and designs

It may be that the key to protecting your business is not patents or trademarks, but copyright of a piece of software or other item.

According to research by the IPO, 40 per cent of business owners think they automatically own the copyright if they commission work which is capable of being protected by copyright.  This is the single biggest mistake businesses make. Paying someone to create work does not automatically make you the owner of the copyright in it.

So, it’s important to understand what types of material are protected by copyright. That way, you can secure the rights over anything that matters to your business.  For example, logos are protected by copyright. As the owner of a business, you need to ensure you own the copyright in your logo.

If you are using another company or a freelancer to develop your software (or other items that are protected by copyright) then make sure ownership in the work is transferred to you in writing. This should be done before you engage their services, for example in the contract you enter into with them. But this does not need to be done in a formal contract. It could be dealt with in an email. See my blog post: Why use a lawyer when you can buy a legal agreement? for further guidance.

If you have a design created for you such as a cartoon character, logo, surface designs, or an unusual shape, (such as the coca cola bottle) make sure you obtain the rights. But note that there is a limited time to register these as designs. There are official fees to pay when you register designs, so be clear whether the design in question is going to give you a competitive advantage or not. If you think it might, then try to find the money for design registration.

Know how

Finally, bear in mind that you may want to exploit any know how you develop. This will be discussed in a later blog post, Licensing and franchising: what is the difference and does it matter?

Say you are a car wash that has developed a successful process for getting its customers to buy for hot wax and other optional extras. You might decide to license this process to other car wash businesses in return for royalties. This involves a legal agreement whereby you license your know how and ensure the other party uses it under strict conditions of confidentiality.

Conclusion

If you are thinking big, you need to understand IP and how it applies to your business.  If you have the funds from the start, you can use IP to protect your competitive position straight away. If not, you can position your business so that you secure your IP once it grows and you have the resources in place.

For more information about trademark registration and protecting your brand, visit our dedicated trademark website www.azrightstrademarkregistration.co.uk.

Image of the Legally Branded book

IP Solicitor Reveals How Small Businesses are Wasting Money on Branding by Failing to Take Account of Legal Principles – Legally Branded September 11 Book Launch

Legally Branded is a new title by Shireen Smith of Azrights Solicitors, which fills a gap in the market by providing accessible, and easy to understand explanations about intellectual property law and brand law for business owners.

Azrights Solicitors is pleased to announce that pre-publication copies of Legally Branded, are available for review. The general release is on September 11th, with the book currently available for pre-order on AmazonContinue reading

Logo protection through trademark, design and copyright

We often receive enquiries from clients wanting to register their logos.  Few know what registration they want or what protection is available, so it seems worth looking at this question in this blog.

Before explaining what legal methods are available to protect logos here are a few examples of the different types of logos that we might be talking about.

1.    A combined mark – that is a word and an image, looks like this:

The words or numbers incorporated within such a logo should be cleared for trademark purposes before using the logo to ensure it is not already trademarked by a competitor.  This is necessary even if you have already registered the company or domain name.  As a separate matter also have a trademark search to check that the image element is not too similar to a competitor’s trademark.

2.    A stylised mark – that means a word on its own like this:

The words or numbers incorporated within such a logo should be cleared for trademark purposes before using the logo to ensure it is not already trademarked by a competitor.  This is necessary even if you have already registered the company or domain name.

3.    A device mark – that is an image on its own like this:

The image element should be cleared for trademark purposes to ensure it is not too similar to a competitor’s trademark.

As trademark registration is often what people ask about, I will just say that what you register as a trademark depends on how you USE the mark in practice.  If you use it only as a combined mark then a single combined registration is sufficient.  If you use the elements separately then you should register each one separately as well as in combination.  For those on a strict budget, start off with a combined registration and then later apply for the separate elements.

However, trademarks are not the only way to register logos.  Essentially there are three ways to register logos:

•    Copyright registration
•    Registering just a design OR a trademark
•    Registering the logo both as a trademark and as a design.

Copyright registration

Copyright protects ‘works’ such as logos, graphic designs, drawings, and photographs.  In the UK copyright automatically vests in the creator of a ‘work’.  The ownership rule can be changed by contract.
While it is not necessary to register copyright in the UK, in some countries such as the USA it is established practice to do so through the Library of Congress.

To stop someone using an identical or similar logo – on their website say – you would need to prove they copied your logo. They could argue you copied theirs or that they came up with the same logo independently without copying yours.

So if you copyright the logo by registering it (you may do so with us or other reputable services) you can establish solid evidence about your logo upfront before any problems arise.  Such evidence should be acceptable to a court of law.  Without evidence it would be time consuming and expensive to sort out disputes over rights to the logo.  Your rights would seem less strong to whoever had copied your logo and therefore your chances of a negotiated settlement would diminish.  However, you still have the problem of proving that the other person copied your logo.

Contrary to popular myth it is not enough to simply post a copy of the logo to yourself.  This is not suitable evidence for a court of law as it could be argued you tampered with the envelope after it was posted.

Registering just a design OR a trademark

Given that logos will automatically have some copyright protection, what is gained by registering the logo as a design or a trademark?

Trademarks are tools to protect the reputation and goodwill of a business.  They enable your customers to recognise your products and services, and to distinguish you from your competitors.
Registering a trademark is the way to secure exclusive ownership of your unique brand signs, and to protect your business against competitors who use similar names or signs to take business away from you. While in the UK and USA rights in trademarks can be built up through use of the mark, in most countries the first to register will have the rights to a mark.  Indeed even in the UK, if someone else has registered the trademark for 5 years you will find it virtually impossible to stop them using the mark, and would need to rebrand.  Also passing off disputes are time consuming and messy.  My advice to anyone is to register their brand as soon as possible, unless they really don’t care if they have to rebrand and start over with a new name and logo.

Registering Designs is more powerful than copyright, and the problem of proof of the date of creation of it does not arise in the same way as it does with copyright disputes.    Registration of logos as designs can therefore act as a good deterrent to copying. The mere fact that someone else’s logo is too similar to your registered design gives you the ability to stop them using the logo.  In other words it does not matter that they happen to have come up with a similar design without copying yours.

Design registration is available in the UK or in the EU Once registered as a design you may renew the registration every 5 years for up to 25 years.

For those on a strict budget, wanting both trademark and design protection, I would suggest first registering a design.  This is because the right to register a logo as a design is only available for a short window of time (a year).

For international protection an EU registered design combined with a US copyright registration would be a good start.

Registering the logo both as a trademark and as a design

If you have the resources you could obtain both a registered design and a trademark registration (as previously mentioned, it is relevant how you intend to use the trademark as this determines whether to register a combined mark, a logo mark, or a word mark or all three) .

The best way to use a design registration is in conjunction with trademarks.  Having both types of registration gives you a  level of protection that increases the range of situations in which you can stop others stealing your intellectual property.

Design registration protects logos in ways that trademarking the logo does not.  For example, if someone is using your logo on their website for a non competing business, your design registration could put a stop to it, whereas your trademark registration could not. You may only stop others using your trademark if their use of it confuses your customers as to the source of your goods or services.

Also, if someone is using  your logo in a comparative advertising campaign you would be able to object to their use of your registered design logo in their advertisement if you had a registered design whereas trademark law would be unlikely to help you to stop a comparative advertisement – see here.

For information on trade mark pricing, see here

Bottle Battle between Brooklyn Brewery and Belgians

Real thing

the real thing

When finding out his bottle was a possible infringement of the Westmalle Belgian ringed bottle (trademark rights in which had been assigned to the New Belgium Company in Colorado) Mr Hindy, the owner of the Brooklyn Brewery was happy to withdraw the similar bottle design his designer had come up with for the Brooklyn Local 1 bottle.  See here and here

Before and after

Before and after (Photo: David W. Dunlap/The New York Times)

The bottle featured a double ring around the base of the neck and was amber in colour.

So, he had a ring free bottle mould created at a cost of over $60,000.  Reportedly he was already involved in a trademark litigation matter and wanted to avoid further litigation.

What is interesting about this case is how much publicity it has attracted for Mr Hindy’s Brooklyn Brewery.  I would guess that having the story run in places like the New York Times must be worth a lot more than the $60,000 it cost to redesign the bottles.

[Notes: The trademark for the Belgian ringed bottle was registered on 27 February 2007, registration number 3211981 by ABDIJ DER TRAPPISTEN WESTMALLE V.Z.W. CORPORATION BELGIUM Antwerpwesteenweg 496 B-2390 Westmalle BELGIUM :  (LAST LISTED OWNER) W – N BELGIUM, LLC LTD LIAB CO NEVADA 500 LINDEN STREET FORT COLLINS COLORADO 80524]