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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.

startup intellectual property

Intellectual Property Business Advice For Startups

startup intellectual propertyBefore considering a budget for services such as Outsourcing, Trademark or Patents even, I’d like to give you some pointers based on my experience of advising startups of all types over the last 15 years.

Businesses tend to change radically in the early years so that a few years after starting up, many look nothing like their initial manifestation.

Sometimes this can be because as they get market feedback on their concepts their ideas develop and they pivot. Or it may be that new businesses don’t know what it is exactly that they do, and who they do it for. Even professionals, like lawyers and web designers, who you would think know pretty clearly what they do, struggle with this.

Startups, therefore, take time to find their feet.

For this reason, I would counsel against spending too much money on anything, be it design, legal fees, or otherwise. As the business gradually achieves clarity about the demand for its goods and services, and figures out which services will generate revenue, and responds to the market, its offering and niche will change.

 

Early phase legal work

Early phase legal work can therefore often be of temporary benefit only.

Yet what happens in practice when a start up chooses lawyers is that a price is set for the various documents or services the lawyer considers the business needs. This might include a trade mark, terms of business, a website development agreement, documentation for the website, and anything else that is particularly appropriate for a given type of business.

The value a good lawyer can offer to startups goes far beyond the provision of documentation or a particular legal service.

It may be that you could save by using templates and do your own drafting to implement the necessary documents for your business.

One problem is how to get access to best practice intellectual property advice so as to start up your business and projects independently without need to consult lawyers about every decision you need to make as you pivot and change direction.

In fact, few businesses can afford to consult lawyers on the intellectual property issues that arise in the very early stages of their projects, such as when they’re choosing names or even when they’re commissioning websites. Either they don’t realise that so many of their actions have far reaching intellectual property implications, or it’s not feasible to incur legal fees when the project is in its infancy.

The mistake with IP is in assuming you can leave it to one side till later – such as once you have something to protect.  You need to know how to make good choices, what checks to make, and which provisions to include in legal agreements you should use early on.

Over the years Azrights has realised that this requires a different approach to that of consulting lawyers in the traditional lawyer/client one to one advisory service approach.

So, we’ve created a way to deliver early support to businesses so they may protect their IP using a PROCESS BASED system which we’ve developed. This is known as Legally Branded Academy 2.0 (LBA 2.0).

This enables people, even those with no pre-existing knowledge of intellectual property, to use the system to protect their IP. You learn what to do at the point in time when you need to learn it. It’s only when a key action is about to be undertaken in a project that there is a need to apply a given process.  You access and apply processes when you need them. There are different processes depending on the actions the business is about to take.

So, for example, if you have an innovation you want to patent, that’s when you would look at the processes for patents and understand what to do before approaching a lawyer for help. Or if you’re about to pick a name and domain name, that’s when you watch the videos on names and learn the numerous issues to be aware of.  Names are a much misunderstood topic, even by highly successful business leaders. There are many myths and misinformation about naming.

Indeed the need to choose a name so early on in projects leads to many mistakes by business owners, sometimes with devastating consequences for the business. This is just one example of how not having best practice advice, and information at your fingertips when you need it, can result in poor intellectual property outcomes for the business.

Intellectual property has a broad meaning. It includes the knowledge and skills that are to be deployed in the business or project, or which will be turned into a business. It is an umbrella term that includes:

  • patents,
  • trade marks,
  • designs,
  • copyright and
  • trade secrets/confidentiality.

Registration of rights, which people traditionally associate with intellectual property, comes later and often people will consult a lawyer at that time. However, by then it may already be too late to rectify the impact of some of the early decisions and choices they’ve made.

The best way I can help you is via a 6 week group coaching program that gives you access to LBA 2.0 and 6 Zoom meetings when I will explain how to use the LBA 2.0 system in your business as part of your processes, and you will have an opportunity to ask me questions. This is the lowest cost way we’ve been able to find for supporting startups. Thereafter you may buy consultation or different services such as trade mark registration. The system gives you a number of the templates you would need to use and these templates are made very easy to tailor. So, it’s only if the other party won’t sign the document that you’d need to consider consulting a lawyer for advice.

This new process-based approach to IP protection is THE way to protect your IP on an ongoing basis as your business grows and develops.

Here is a link to the Azrights International Ltd site which is not regulated by the solicitors regulation authority, and offers the course combined with coaching. You can put your name on the waiting list if the course is currently closed. It reopens every couple of months and you will get a discount by registering your interest and will be the first to find out when the next course starts.

The first step is to buy a licence for Legally Branded 2.0 and get some coaching. Then order more licences for your team and arrange consultancy services if required down the line.

Being in business myself means I understand the emotional, financial, and creative investment clients make in their own future. With my insight into legal risk, I am well placed to offer you this different approach to managing your legal risks and budget.

In conclusion, the traditional approach to organising your legal work might not result in the best deal for you. What we are all about at Azrights is providing cost effective and appropriate legal solutions to help you to grow your business on solid foundations.

What Impact Will Brexit Have On Your Trademarks?

How to be prepared and make the correct moves to protect your intellectual property position

The media is abuzz with talk and comment on the ramifications Brexit will have on commerce.   Much relates to transport, travel and currency with the impact this will have on the marketplace.   A vital area, not to be overlooked, is the effect Brexit will have on intellectual property rights, such as trademarks, from a business perspective.  It is important for businesses, including small-to-medium-sized enterprises (SMEs), to have some understanding, and strategy, that copes with the certainty, and uncertainty associated with its consequences.

There are a series of headings that need to be reviewed apart from trademarks so that the many businesses that rely on other types of intellectual property can prepare themselves.  The main elements that SMEs may encounter are:

Trade marks

Any person or company holding an EU Trademark (EUTM) must review its position in light of the UK exit. It may lose its protection in that market and may have to reapply.  Of course, the UK government might agree to some arrangement whereby existing rights will automatically transfer, with or without the payment of a fee, but that’s by no means a certainty.

Sufficient use

One aspect of this relates to the “use” requirement for trademark protection.  It has been the practice that, if a mark was used in, say, the UK and Ireland, that this should constitute sufficient use to enjoy protection in all member states.  When the UK leaves the EU, a business may have insufficient use of its EUTM elsewhere in the EU to meet the threshold requirement.  In such a case EU-wide protection could be lost.

Registered Community Design:

Like the EUTM, a Registered Community Design (RCD) provides design protection across the EU. That which can be protected is very wide-ranging indeed.  It includes furniture, bicycles, chocolates and, for example, decoration applied to such items or clothing and fashion items. After the UK leaves the EU, however, the RCD will no longer be enforceable in the UK. If an SME designs and markets any product – from high fashion to bathroom fittings – it will need to know how to protect the designs in the UK post-Brexit.

Domain names: .eu designation

If you are a corporate owner of .eu domain names, you need to review your domain name portfolio to ensure it is Brexit-proof. After the UK leaves the EU, it is not clear whether a UK entity will still be permitted to own a .eu domain name.  Busineses and companies with .eu domain names will need to identify such domain names in their portfolio and decide whether it will be necessary to transfer ownership into an entity placed within the EEA.

Contractual agreements:

 While the effect of Brexit on contracts generally is likely to be dealt with in the UK/EU Brexit agreement(s), in the context of IP, SMEs will need to know what effect Brexit will have on IP licences and agreements. For example, will a trademark licence for “the territory of the EU” include the UK after Brexit? If a settlement agreement with a competitor provides that they agree not to use brand X in the EU, will they be permitted to use it in the UK post-Brexit? It will also be important to ensure that any agreements or licences which are negotiated in the period leading up to March 2019 properly address the effect of the UK’s departure from the EU to minimize trading uncertainty.

Geographical Indications and Appellations of Origin

These terms relate to the geographic location used to designate the goods or services which originate from a particular region or place.  Champagne must come from that region in France while Feta cheese must come from Greece. It is not yet clear what effect Brexit is going to have on the extensive scheme of EU protections for geographical indications, which include Protected Designations of Origin and Protected Geographical Indications. Although some of these EU schemes are open to non-EU applicants, the “home” country must provide reciprocal recognition (we will protect your name if you protect ours). In the absence of mutual recognition, food producers could face competition from cheaper versions of protected names. That said, the law of passing off will still be available post-Brexit and the UK Courts are extremely unlikely to allow SMEs to use famous names like champagne or Feta in the UK after Brexit.

Patents

While Brexit presents a particular level of uncertainty in respect to some aspects of patent law, others remain unchanged.  Indeed, the good news for inventors seeking to protect their inventions in Europe, is that they may not need to adjust their filing strategies because of Brexit. Even after the UK leaves the EU, it will still be possible for inventors to obtain protection for their inventions in the UK by filing patent applications directly at the UK Intellectual Property Office. Because these patent applications (and eventual patents) are governed by UK national patent law, Brexit will have no effect on UK patents granted by the UK Intellectual Property Office.

Similarly, inventors will still be able to obtain protection for their inventions in other European countries by filing European Patent Applications at the European Patent Office, because the European Patent Convention (EPC) is not a piece of EU legislation and will be unaffected when the UK leaves the EU.  Existing European patents covering the UK are also unaffected by the Brexit decision.

 

Necessary Actions

There has been a huge increase in the number of UK trademark filings. For example, UK trademark filings by US applicants have jumped by over 150%, filings from China by over 175% and filings from Canada by about 100%.

Clearly, businesses are taking action now to protect their intellectual property (IP) rights rather than awaiting the outcome of the divorce talks between the remaining EU states and the UK. Many are pro-actively ‘Brexit-proofing’ their IP rights.

Although it is hoped that the divorce settlement will make provision for the re-registration of European Union Trade Marks (EUTMs) and of Registered Community Designs (RCDs) before the UKIPO, if the UK and EU were to fail to reach agreement all EUTMs and all RCDs would simply cease to have effect in the UK after 29 March 2019 (the day that the UK will leave the EU).

The potential loss of enforcement of your EUTMs or RCDs in the UK may have very serious consequences, so it may be an idea to review your position sooner rather than later.  The authors, Shireen Smith and Kieran Heneghan would be delighted to assist you with this.

 

 

Azrights IP One – Intellectual Property Made Easy

 

image_ipone_product_launch

There is no one size fits all when it comes to the actions you need to take to secure your IP. Protecting IP might involve doing some due diligence searches, registering rights, using appropriate documentation, and more. Your IP protection strategy will depend on your business plans, and overall objectives. For example, a business with a product like C-Pen will need patent advice, among other things. On the other hand, an author setting out to write a book, such as JK Rowling of Harry Potter fame,  What JK Rowling Needed to Know About Intellectual Property will need advice on copyright primarily. Both might want advice on trademarks too.

IPOne

So, we’ve introduced a new service: IPOne to offer SMEs the strategic IP advice they need regardless of their business or IP profile. The prices are fixed. We’re working on a tech version of this, which when launched, will give start ups on a shoe string budget access to the IP advice they need before they start up. This will be released later in 2017.

Why we created the IPOne service

We created the IPOne service because clients sometimes asked us for a comprehensive review of their IP position, and we had no specific service offering with clear deliverables to propose to them. Another reason we created the IPOne was that occasionally we noticed businesses that seemed to be focusing their IP expenditure on the wrong IP protection. For example, in one  case, an SME with a successful operation in the EU and USA, with no trademark protection in place at all, decided to  spend a considerable amount of money on filing a US patent for a business process that was unlikely to result in a strong patent, if it succeeded at all. With proper advice this business would have known to get some trademark protection, strategically maximising its budget.

Another reason we introduced the service was when we noticed how many SMEs were registering a trademark without first commissioning any searches, or  using IP without doing due diligence checks.

The problem

Invariably our most popular service is trademark registration. Trademarks have, to some extent, become a commoditized service due to the large number of service providers, many of them unqualified, who offer low cost trademark services. Businesses are even encouraged to believe  trademarks are simple enough for them to draft themselves.

As a law firm we were conscious of the risks clients faced in requesting a single service like trademark registration, when they had a host of other IP issues they were not even aware of. Yet the going rate for trademark registration was insufficient to allow scope for incidental advice on other IP rights.

Whenever it was clear that a client needed to take wider advice, we would highlight this to them. However, as the IP needs of businesses vary so much depending on the business model, IP advice doesn’t lend itself to being addressed in passing. It’s necessary to understand the client’s business model and aspirations in order to give relevant advice.

Intellectual Property also often involves a large element of education. So, it’s time consuming to communicate IP issues to SMEs, and advise on how they should structure their processes to be protected on an ongoing basis. The other problem we had is how to offer a price so clients would know in advance how much they would need to pay for holistic IP advice regardless of whether their business model would require a focus on patents, trademarks, designs, copyright, trade secrets, or database rights.  Giving an hourly rate and estimating the number of hours involved to advise isn’t straightforward to do when you don’t yet know enough about the client’s business model.

Who’s it for?

The IPOne service is for small businesses of fewer than 10 staff, be they pre-start up, early stage, or established. Every business that is aiming to build value or who simply wants to avoid some of the unpleasant consequences that can befall the unwary if they infringe on the rights of third parties, needs the IPOne.

When you have a good idea for a product or service, what you’re doing when you bring it to life is that you’re creating intellectual property. Virtually every decision you make in the early days of a project, from choosing a name, having a website or logo designed for you, writing content, creating a data plan, or taking some other creative action, has IP implications.

If you wait till you’re successful before taking IP advice it can be too late. IP needs to be taken account of early on if you want to avoid the need to undo ill considered actions later on. By then you might have already built something successful, and if its foundations are shaky it could have very serious consequences for you. So if you want to wait to address IP issues till your business has taken off, then consider whether it is possible to make all your decisions temporary ones? If not, it could be too late to leave IP advice till your concept is proven. Prevention really is ten times cheaper than a cure.

What’s different about the IPOne service?

The IPOne service is a fixed price service to give you holistic IP advice. It includes deliverables that SMEs invariably need, such as legal agreements, and a letter of advice, as well as a one to one consultation to ensure you take steps that are appropriate to your unique business requirements. A few key actions will set you up with strong foundations, giving you 80 per cent of the protection you need, short of registering your IP rights. All our IPOne services include advice on the steps to take in order to obtain this wide ranging IP protection on an ongoing basis.

What will clients get at the end of it?  

After you’ve had advice and holistic IP guidance your business can proceed to determine its strategy for securing its IP. Some SMEs may be better placed to obtain a legal monopoly, create new income streams or otherwise use IP to grow profit margins and protect their market share. You will be more able to protect the effort you put into building your business by knowing how to prevent competitors from copying you in damaging ways.

What Next?

The IPOne service responds to a market need for tailored IP advice giving a holistic view on the IP issues pertinent to any small business.

We want to change the way business protects its IP so SMEs are properly aware of the implications of their decisions when implementing their ideas, and know what to do on an ongoing basis to be protected.

Knowledge of IP Law Crucial to Tech Industry Success

ss“The law has always been slow to catch up with new technology, and nowhere is this more evident than on the web.  Technology is a copyright-intensive industry and disregarding the importance of IP law is extremely dangerous for any technology company,” says Shireen Smith, leading IP lawyer and founder of IP specialist law firm Azrights.

Software solutions can make it possible to create substantial businesses from simple ideas, for example Uber and Airbnb. However, unless technological systems are protected by a suitable legal framework, businesses can lose the commercial advantages that their innovation has given them.  Shireen Smith believes that IP is the foundation of any business and companies should ensure that it is protected as early as possible.

Shireen said, “Because of the competitive and fast-moving nature of the technology industry, it is vital that tech startups consult an IP specialist as early as possible.  That’s because IP law can sometimes lead to surprising results. For example, you might find that the person with ownership rights is not necessarily the one you expect.

“If there is something to patent, then invariably filing for patent protection is necessary before even sourcing the funding for new software or technology.

“In their haste to rush to market quickly, many entrepreneurs are making a classic mistake: failing to protect their IP before revealing their ideas.  Patents are only granted if an invention is novel and has not been disclosed to third parties.  Therefore, startups which raise investment through crowdfunding sites before securing a patent lose the possibility of patenting the concept later on.

“Many entrepreneurs fail to seek legal advice before trying to raise funds through crowdfunding sites. They naively assume these sites must have thought through the legal aspects on their behalf.

“However, in practice they need to find the funds to file an initial patent pending application before speaking to angel investors or seeking crowdfunding because few investors agree to sign non-disclosure agreements (NDAs) before listening to an opening pitch.  It bolsters a business’s credibility enormously if it has taken steps to protect its IP beforehand.

Shireen continued, “Another danger associated with using crowdfunding without appropriate IP
protection is that well-resourced competitors are scouring these sites and are free to exploit the technology or concept you just shared with the world.  Innovators often sabotage their own ideas by alerting businesses to it who are well placed to copy it.”

“Another issue is technology startups unwittingly infringing on the rights of others. Formlabs, a team of PhD students, managed to raise just under $3m (£2m) to commercialise an accessible 3D printer. But the virtual high fives soon turned sour as an established company, 3D Systems, sued them for patent infringement.

“IP has a potentially transformative effect on a business.  If a fledgling technology company can claim sole rights to its software or systems, it can compete with the larger firms.”

On the evening of October 13 at the Institute of Directors, Shireen Smith launches a new book called ‘Intellectual Property Revolution’, which is all about how to successfully manage IP assets, protect brands and add value to your business in the digital economy.  It is written in plain English and is helpful for business owners and ‘brand guardians’.

A video explaining more about how the digital economy is changing IP can be found here

Useful links:

Azrights website

Azrights on YouTube

Azrights on Twitter

 

Design Registration – YSL Wins Over H&M

Community Registered Designs and Patents Design registraion is an important way in which to protect the unique shapes or surface designs that a company’s designers produce. Generally, there is no requirement to prove novelty in order to register a design. It is only when you want to rely on your design registration that it is relevant to prove novelty.So, the recent decision where Yves Saint Laurent (YSL) claimed victory over H&M because it indicates that it is not necessary for designers to come up with something radically different to what is on the market to qualify for design protection.

Overall Individual Character Wins

Last week the luxury fashion house YSL emerged victorious from a nine-year legal battle with the high-street retailer H&M over the validity of its two EU registered designs for its handbags.

H&M challenged the two registered designs, pointing to previous designs as evidence that the YSL designs lacked the required “individual character” to qualify for valid design protection. However, on the 10 September, the European General Court confirmed the previous decisions made by the Office for Harmonization in the Internal Market (OHIM) that YSL’s handbag designs had key differences from what H&M had cited as evidence. In passing the judgment the court held: “it must be held that the differences between the designs at issue are significant and that similarities between them are insignificant in the overall impression which they produce”. For a full summary of the judgment, see the official press release by the General Court of the European Union here.

YSL’s design:

YSL’s design

H&M’s evidence of prior design:

 

Trademark Infringement – E-Commerce Giants Sued For Online Selling Of Counterfeit Goods

Trademark InfringementTrademark infringement claims are on the rise with recent disputes related to the sale of counterfeit products on platforms such as eBay and Alibaba. In our previous blog post, Online Selling And Your Obligations To The Consumer, we highlighted the basic issues in relation to online selling regulations. At the heart of it, online sellers need to make sure they are in conformity with the law but, according to a recent article by Lawyers and Settlements, it seems that eBay and PayPal, as the online payment system, have failed to comply with these requirements.

Trademark Infringement Cases

A lawsuit has been filed against eBay and PayPal for trademark infringement following the sale of fake products on eBay’s platform. The filing itself notes that counterfeiting is a big business, costing retailers in the industry between $200 and $250 billion dollars each year and in addition, dilutes the trademarks of the protected products.

eBay’s Liabilities

The suit was filed by Wimo Labs – a company with many registered trademarks mainly for iPhone and Apple watch cases and alleges that as many as 2,000 eBay sellers (who are also named as defendants in the lawsuit) are using their trademarks to sell counterfeit products and deceive consumers. The way eBay and PayPal are involved in the infringing activities is that they have knowingly and deliberately facilitated and profited from the sale of the fake products. What is more, eBay is alleged to have engaged in soliciting eBay buyers to purchase fake products.

According to Deborah Klar, co-counsel with R. Rex Parris Law Firm on the claim, the claimant company has sent more than 5,000 notices of claimed trademark infringement to eBay since 2013, requesting the e-commerce giant to remove the fake products. Additionally, rather than responding to a third-party from The Counterfeit Report, eBay instead opted to change commentary on the report’s sites and blocked The Counterfeit Report’s corporate accounts.

Klar also commented that “the sale of fake products causes consumer confusion, adversely affects their brand and also means our client has lost sales.” She also adds that “as a result of the sale of these fake products on eBay, our client has suffered substantial damage.” The problem with fake products is that they are widespread on eBay and have a tremendous impact on the sellers invested in protecting their brands.

Paypal’s Involvement

Regarding PayPal as a defendant, according to Wimo’s counsel, the former eBay unit is the link between eBay buyers and counterfeit sellers. As such, the company is actually in a position to stop eBay’s practices by simply removing the ability for those sellers to get paid.

Alibaba And Their Approach

On a separate note, Chinese e-commerce giant, Alibaba, has recently been criticized for being too soft towards counterfeit sellers. As a result, Alibaba has launched a new English version of its counterfeit reporting system called “TaoProtect”. Although AliBaba has another platform called “AliProtect” which covers its other websites, TaoProtect has been developed exclusively for dealing with a range of Intellectual Property (IP) complaints such as copyright, patent and trademark infringement and unfair use of those IP rights. This reveals the scale of the problem as well as the serious steps conglomerates such as Alibaba take to ensure IP rights are effectively protected.

The launch of the English version of TaoProtect, UK and other Western European companies would be able to access easily the counterfeit reporting system. Alibaba’s US-based senior IP protection manager commented that “because the success and integrity of our marketplaces depend on consumer trust, we have comprehensive policies and practices in place to fight IP infringement.”

The improvement in their system comes partly as a result of the lawsuit filed against Alibaba by companies like Gucci and Yves St. Laurent. The suit was filed by Kering (the fashion house which owns these brands) last May and a US District Judge in Manhattan granted to some of them an immediate order barring sales of goods on Alibaba.

Lexology commented that, generally, for brand owners having secured trademark registrations in China, the US and wherever else your business operates is the safest route to tackle online infringement.

This article aims to be an informative piece, providing you with the latest developments in the IP and commercial world. However, it is likely that your business faces similar issues. Therefore, if you need specific help to your situation, we can help. We have experience of dealing with different platforms online related to Trademark Infringement.

Trademark Slogans – Swatch Registers ‘One More Thing’ Trademark

Can you trademark a sloganTrademark slogans are important as they help distinguish a brand by emphasising what the business does or aims to do. By adding a tagline to a logo or name it is possible to encapsulate what the brand has become known for.

We recently wrote an article about Trademark searches and how to minimize the dangers of having similar names to your competitors. Just recently, Swatch has pulled a similar number on Apple by trademarking “One more thing”, a phrase made famous by Steve Jobs at every keynote he gave and recently, by Tim Cook when he unveiled the new Apple Watch.

Competition can take many forms, and trademarks play a significant role in keeping brand buoyancy amongst competitors.   According to an article published by Techradar, the move was inspired by Inspector Columbo’s “Just one more thing” catch phrase. It all seems well timed. A year ago, Swatch attempted to block the ‘iWatch’ trademark on the grounds that it was too similar to the ‘iSwatch’ brand. See this article from the Telegraph about Swatch objecting to Apple’s iWatch for more details.

Developing And Deploying Your Trademark Slogans and Taglines.

Slogans and taglines can be notoriously difficult to register as they often fail for a lack of distinctiveness. A tagline is something that represents your company, perhaps a distillation of your business aims. A slogan is a short phrase, much like a tagline, which often aims to be a catchy way to embody the business’ values. The aim of both slogans and taglines is to help distinguish a brand, product or service from its competitors.

Remember, that for something to be registered as a trademark, it must be capable of distinguishing your undertaking from those of another.

In one case, Mars objected to KitKat’s application for the slogan ‘have a break’ on grounds that it lacked distinctive character. If taken in isolation ‘have a break’ is actually a term which can, and is, used colloquially. It was held that “have a break” was therefore insufficient to distinguish the confectionary goods without the subsequent “…have a KitKat”, which it already has registered as a trademark.

In order for a slogan to be registrable, it must be able to show that it is inherently distinctive or has acquired some distinctive value through use. This can be a difficult task, but in a nutshell, you will need to be able to show that the expression of the slogan must be understood as referring solely to the use of the trademark for the purposes of identifying that brand or business from that of another.

If you would like to know more about how to proceed with your trademark slogan or tagline, or you are unsure about whether your slogan is inherently distinctive or has an acquired distinctiveness, see our trademark registration page or get in touch with us and we will be happy to help!

 

Patents - Novelty or Reform?

Patent Registration – Does It Lead To Greater Innovation?

Patents - Novelty or Reform?Patent registration is the first form of IP many businesses want to explore when they have an idea for something new. A patent is defined in the dictionary as a sole right to make, use or sell an invention for a set period.

The key word here is ‘invention’ which presumes innovation.. Therefore, patents should lead to the spread of knowledge and greater novelty. However, arguably the patent system has the effect of setting innovation back according to a recent article by the Economist.

Problems with patents

The article suggests that stronger patent systems do not result in more private research or an increase in productivity. The broadening of the patent regime in the 1980s following the USA’s recognition of the potential of crop science failed to galvanise progress in agriculture, and the article  also highlights how patent litigation is on the rise.

As a popular article recently stated: “most of the wonders of the modern age, from mule-spinning to railways, steamships to gas lamps, seemed to have emerged without the help of patents. If the Industrial Revolution didn’t need them, why have them at all?”

What is worse, as we wrote in our previous post “Patent Troll Problems – The Good, The Bad, And The Ugly”, the system has created a ‘web’ of trolls and defensive patent-holders which exist solely to exploit rights in patents often obtained from another company to block innovation.

Too expensive

The patent system is extremely expensive and even if individuals can afford to register a patent, any litigation afterwards is likely too costly to fund. This is also noted by Rubin who points out how “most inventors barely have enough money to file for a patent application. Even if the inventor can afford to get the patent to grant, patent litigation is exorbitantly costly, frequently requiring millions of dollars to fund. Individual inventors, and even small or medium-sized companies, cannot afford such fees without another company to finance the litigation or at least to license or buy the patent…The inventor may never realise any benefit from his toils.”

If patents lead to innovation and are so expensive to uphold, then it turns out innovation is expensive – probably more expensive than it should be. As innovation “fuels” the knowledge economy, it is the engine of development, and perhaps what we need is a “clear, rough-and-ready patent system” – to  encourage novel and fresh ideas. One that does not set innovation back.

Read the full Economist article

hat is Intellectual PropertyA Guide for Start Ups (part 1 and 2)

What is Intellectual Property? A Guide for Start Ups (part 1 of 2)

What is Intellecutal Property - GuideTo mark global entrepreneurship week, we are dedicating two blog posts to start-ups that are thinking big. This first one will cover patents and trade secrets and the second will be on trademarks and copyright.

A start-up’s intellectual property strategy needs to take account of their budget (usually limited) and business objectives.

The single most important piece of advice I would give to a start-up is that they need to find out about intellectual property (IP) and how it affects their business. Lack of funding for IP protection is not a reason to bury your head in the sand and could prove costly as the business grows.

What is Intellectual Property?

IP is an umbrella term for a range of separate legal rights, which protect a business and increase its value. These rights relate to the business name and logo, unique software that sets it apart from competitors, clever inventions, creative designs, or secret recipes and know how.

IP Rights

The main IP rights are patents, designs, trademarks, copyright and trade secrets or know how.

Patents protect inventions of products or processes, and relate to the way things work, what they do, how they do it, what they are made of or how they are made.  Patents are not concerned with the visual appearance of products – that is the domain of registered designs.

Trademark is the legal term covering brand names and other signs.

Copyright protects a diverse range of materials including websites, software, logos, the written word, music, art and more. There are some surprising rules within copyright law, so ownership will not always be with the person you expect.

Know how or trade secrets are two of the most important and valuable types of IP. To retain their value they must be kept secret and their disclosure tightly controlled. Once the secret is out in the public domain it can no longer be protected.

The terminology around IP is often confused in the media, leading people to think a name can be copyrighted or a book patented, and so on.  So, it’s worth taking the time to understand the difference between IP rights if you have big plans for your business.

In this first blog post I will discuss patents, and trade secrets, while the second instalment will cover the other IP rights.

An ambitious business that takes the time to understand IP can do a lot to protect its position. Often, there are alternative (less expensive) strategies for protecting yourself.

Trade secrets v Patents

If a patent is not essential for your business model you could simply guard your innovation as a trade secret until you have the resources to patent it. The software industry is an example of a business model where patents are rarely critical to the business model. Copyright is the IP to focus on when software is a significant element of your business model.

Where it is possible to use an invention without its inner workings being on display you can use the innovation while keeping its details a secret. This preserves the possibility of patenting it later once resources allow, unless someone else files a patent first.

Indeed in some cases, you may decide never to apply for a patent. As patenting involves revealing the details of how you achieve something you may prefer to keep that information private. For example, the Coca Cola recipe has been kept a tightly controlled secret for 100 years. Had they patented it, the recipe would have been protected for 20 years and would then have been available to others to use freely. As it is, Coca Cola has preserved the life of its innovation by not patenting it.

Whether this approach is suitable for your innovation depends on its nature. The question you need to ask is how likely are others to stumble across the same thing?

Every business is unique

Every business is different and will need to develop an IP strategy that reflects its plans; one size does not fit all. There is nothing that says you must always protect your inventions, or that you can ignore patents just because you’re a start up. The business model and what you are selling determines the IP steps you should take.

How does intellectual property affect your business model? It may be best not to pursue some ideas if there is no budget for an essential patent, or an essential trademark registration. On the other hand, for many businesses such IP issues may not be critical.

So, the first step is to find out whether your IP risks and opportunities can be managed with minimal expenditure in the business’s early days. Full IP protection can then follow once the business has sufficient resources.

Business ideas that require a patent

The experience of Mandy Haberman, inventor of the Anywayup Cup, illustrates the type of business that it may be best to avoid if you cannot afford to protect essential IP rights such as patents and trademarks. Otherwise, if you succeed, a better-resourced entity may copy you.

In Mandy’s case, as soon as other manufacturers realised there was consumer interest in her product, they copied it and produced similar cups. As this Guardian article explains, she took them to court to protect her business.

“Because I had patents,” said Mandy, “I was able to go to court, defend my idea, enforce my patent rights and that meant that I kept my monopoly in the market. This made me a lot of money; if I had not had the patents, I would not have made anything.”

So, if you want to make it big avoid embarking on projects where patent protection is essential from the start. These are the sorts of business in which the dragons in Dragons’ Den lose interest when they discover there is no IP protection, or that the patent protection is too weak.

Owning IP puts you in a strong position. Don’t let thoughts of the difficulty of enforcing your rights stop you getting the legal protection you need in the first place. Often, simply owning IP rights is enough to avoid disputes arising.

Business name

In the next blog post I will discuss the importance of names. For example, “Anywayup Cup” is the name by which leak-proof children’s cups are known. Long after their patent expires, the brand will live on. Consider the many other inventions that have become synonymous with their names – Asprin, Hoover, Kleenex to name a few – and you will agree that names are one of the most important form of IP.

I will also discuss copyright in my next post. It is one of the most universally applicable rights but it often catches people out due to the nature of the copyright rules.

In the meantime, if this article has prompted some questions about what IP means to your business, why not book a free consultation with our intellectual property team .