Tag Archives: Intellectual Property

Want To Avoid The Need To Rebrand? Find Out The Pitfalls Before You Choose A Name

Picking a name for your business isn’t always straightforward.

An obvious first step for entrepreneurs embarking on a naming project is to pick some names and do a search engine check to assess whether anyone else is using the name. If there’s no sign of a domain with that name, that might mean no one else is using the name, but not necessarily.

Unfortunately, too many business owners fall into the trap of not doing any further checks. They secure the domain name of their choice, and set about commissioning logo designs and business cards.

With almost 130 million .com domains and nearly 11 million .uk domains in use, it’s fair nowadays to assume that most brands have an internet presence – but that’s not always the case. Also, if a brand name is being used as a product name, it may not necessarily show up in the search engines. Alternatively, someone may have registered the name pending creation of a new brand.

The Problem With Not Doing Adequate Checks

The real problems come when an eager business owner doesn’t commission professional searches and just adopts the name, whether or not they file an application for a trademark.

All too often, time and money has to be written off when the inevitable cease and desist letter arrives because someone else has a better claim to the name.

Worse, this can all happen years later. Someone who owns a conflicting trade mark doesn’t have to oppose your application at the time you submit it, and if they simply haven’t registered their trademark you would have a messy passing off dispute on your hands.

(When you see the symbol, it means the business owner is claiming trademark rights in the name. It doesn’t necessarily mean the name is capable of being trademarked, or that they haven’t trademarked it yet. They may simply have not changed the symbol to ® to indicate the mark is registered.)

You might have traded happily for a few years, building up significant goodwill and reputation in your brand name… only to find you have to rebrand. So, it’s a false economy to not.

The Thinking Behind Rebranding

A trademark conflict is only one reason why a business might need to rebrand.

Another common reason is when a business has a name that is too descriptive to qualify for trade mark protection. That’s because a brand name must be sufficiently distinctive to qualify as a trade mark.

Two big rebrands many of us remember were when British Telecom became BT and Norwich Union evolved into Aviva. There are countless other examples, including BNI (formerly Business Network International) and HSBC (formerly, Hong Kong and Shanghai Bank).

A look at Interbrand’s Best Global Brands report demonstrates that every company has to have a distinctive name or – like IBM, HSBC and KFC – use initials that originally began as a descriptive name.

But even opting for initials doesn’t always work.

In 2000 the World Wide Fund for Nature (“WWF” to most Britons) sued the owners of the World Wrestling Federation (“WWF” to most Americans) for trade mark infringement – and won.

In 2002, the men in tights therefore rebranded as “WWE”, the World Wrestling Entertainment – and even had to give up the WWF.com domain.

With the spread of globalisation, another common reason for rebranding is to have a consistent brand internationally.

So, while many Brits still think of them as Opal Fruits, Marathon bars and Jif floor cleaner, their names were changed to the globally-used Starburst, Snickers and Cif.

And sometimes it proves necessary to rebrand to shake off negative associations with a previous name.

Entire towns and cities have rebranded for this reason – Windscale in Cumbria became Sellafield in 1981, while Bombay in India became Mumbai in 1995.

However, rebranding in this way doesn’t always work. Ask Gerald Ratner.

After the CEO of the Ratner jewellery chain was recorded in 1992 describing the jewellery sold in his stores as “total crap” and unfavourably comparing the company’s earrings with a 99p prawn sandwich, £500 million was wiped off the company’s value and 300 of its stores closed after customers gave the Ratner brand the cold shoulder. In 1993 the Ratner Group rebranded as Signet and moved its HQ from the UK to America. Signet, however, died a retail death in Britain and the group’s stores quickly rebranded to the existing H Samuel, Leslie Davis and Ernest Jones brands that remained largely untainted by Mr. Ratner’s words.

Rebranding – whether forced or voluntary – is not without risks, quite part from the costs.

Before you make a change, think about the following:

  1. Consult your customers first

Customers often don’t like name or logo changes. When Gap redesigned its logo in 2010, it was unprepared for extreme backlash its new logo evoked. Twitter exploded and more than 2,000 comments were posted on the company’s Facebook page, mostly demanding the return of the traditional logo. The online outcry led to Gap scrapping its very expensive new logo after less than a week, saying “the company’s customers always come first”.

  1. Check the translation

We live in the age of globalisation. If you sell your goods or services abroad, you need to think about what your brand name means in the native languages in your overseas markets. Some brand names are ill-advised because they have unintentionally unfortunate – and sometimes hilarious – connotations. A name like Pocari Sweat means it’s unlikely that particular Japanese sports drink will ever make much headway in the USA or Britain.

  1. Don’t act in haste

If you have to rebrand because of a trade mark conflict, don’t panic and trip yourself up by acting too quickly. See if you can negotiate a little extra time so you have some breathing space to run down existing stocks and to choose the right new name.

  1. Timing is everything

If you decide to rebrand, the best time to do so is once your business concept is proven and you know your business is viable. It’s not a good idea to continue with a descriptive name beyond that point as doing so will hold your business back in the long run.

Customers and clients identify and choose products and services by name. It’s therefore important to build up recognition in your name as early as possible, otherwise your business may miss out on the potential to increase revenue and all the earlier goodwill generated may be lost.

Conclusion

It’s important to think about choosing a relevant and distinctive brand name in the very early stages of planning a business.

A well-considered name can be an important factor in building a valuable, successful business – and it can save you a lot of money and effort that is needed to rebrand at a later stage.

If you’re thinking about names for your business idea and want expert advice on trade marks and branding, do get in touch.

Cease And Desist Letter? Six Crucial Points About Trade Marks

Cease And Desist Letter? Six Crucial Points About Trade MarksYour product or service’s brand name is how you promote and advertise your business—and it’s what your customers use to recommend you.

Using a strong brand name, your business becomes better known and builds goodwill in its name.

It makes sense, therefore, to own the rights in the name.

You should check online and offline to see if anyone else is obviously using the name. If you don’t make sure that you can use a name, you may risk receiving a cease and desist letter one day.

If your brand name is available and is not purely descriptive—it would be wise to register the name as a trademark.

Here are six key points to help you understand how trademarks operate.

 

1. Similar trademark names are a problem

The main objective of trademarks is to avoid customer confusion about the source or origin of goods and services.

If you choose a brand name that’s already registered, it almost certainly won’t be enough just to make slight adjustments to the name (such as in the spelling or adding an extra word) to avoid the risk of a trademark infringement claim.

Look at the issue from the customer’s point of view. Without the protections of the trademark system, consumers wouldn’t be able to rely on finding products and services they liked in the past and want to buy again. (Or finding products and services they didn’t like and want to steer clear of!).

If competing brand names are too similar, customers can be confused and disappointed if they mistakenly purchase the wrong product or service.

The more distinctive your brand name, the easier and more affordable it will be to take action against anyone who tries to piggyback on your success.

 

2. Company and domain registrations are not enough

Owning a company name or a domain name does not automatically give you a right to own the trademark rights in that name for your business, or prevent others from using a similar name.

Even if you have registered the .com domain name and a limited company, you still need to check that you may use the name for your purposes.

Among other things, this means checking the trademark registers—definitely the UK register, and  the EU register and possibly the registers in other countries where you intend to do business.

You may be able to use the company or domain name you’ve registered provided you don’t use it in competition with an existing business that has trademark rights in the name.

Your rights depend on the business activity you want to use it for. For example, WWF and WWF had a long drawn out battle before the Wrestling Federation conceded defeat against the World Wide Fund and changed its name.

 

3. There is a difference between registered and unregistered trademarks

In the UK, it is not compulsory to register a trademark to use it as a brand name.

And small businesses can often view registration as an expense they can safely defer to a later date.

However, don’t be lulled into a false sense of security: your rights are much more limited if you don’t register your trademark.

Registering your brand as a trademark means you receive notice of, and can object to, a trademark application made by third parties for a similar name. And—as with a domain name—you always run the risk of someone else registering the trademark before you get around to doing so.

If you’ve been using a name for a long time without registering it, you may have built up sufficient rights in it to prevent another party using the same name on the grounds that they are ‘passing off’ their business as yours.

But it costs a lot of time and money to take action in these situations and you face all the uncertainties inherent in litigation.

 

4. Trademarks are territorial

Trademarks are registered on a country-by-country basis.

So, if you register a trademark with the UK’s Intellectual Property Office, it will give you the rights to use your mark in the UK.

If someone in another country used and registered the same mark, however, your UK registration does not give you the right to stop them.

At least until the legal ramifications of Brexit become clearer, the position in the UK is complicated by the fact that it’s possible to register a trademark—an EU Trademark—that is valid across all 28 member states of the European Union. If someone has registered an EU Trademark before you register a UK trademark, their EU registration would trump your rights.

 

5. Trademarks comprise certain categories of goods or services

It is possible for several businesses to share the same brand name as long as the businesses are not in competition with each other. An example, is Polo which is registered by separate businesses for cars, confectionary and clothing.

This is because trademarks are registered against types of goods and services. There are 45 classes in all and you can register a mark in several classes if your business activities cover more than one class.

The overriding consideration is whether the names cause, or might cause, confusion to customers and clients looking to buy products or services.

So, if your business makes ball bearings (covered by class 6) and you want to use a name that is already registered by a firm of accountants (covered by class 35), there’s a good chance that would be OK. However, if you were a business consultancy (also covered by class 35), the accountants would probably be able to prevent your use of the same name because that might be confusing to potential clients.

 

6. The most famous marks can be an exception to the classification rule

A very famous mark may enjoy broader protection than an ordinary mark, because of its widespread reputation or recognition.

Such “household name” marks are often not subject to the classification restrictions.

If you were to try to register Coca-Cola as a trademark—even if you only make ball bearings—the soft drink manufacturer would probably be able to prevent your use of the name.

The law recognises that registration in such circumstances is inappropriate because it would amount to taking unfair advantage of the mark’s fame and its use might have a detrimental impact on the well-known trademark.

To learn more about these and other issues you should consider before choosing your brand name, read my book Legally Branded.

 

 

Why Most Businesses Fail at Legally Protecting Themselves!

Why Most Businesses Fail at Legally Protecting Themselves!

Why Most Businesses Fail at Legally Protecting Themselves!While SMEs are increasingly aware of the importance of intellectual property only a fraction of business owners are getting the right IP protection

That’s because IP is a complex subject, and business owners often don’t have a clue what they should do until it’s too late! Most will find out how well they’ve secured their IP once it gets challenged. If they’ve done it themselves then that’s when they’ll realise that the £200 trademark they thought was sufficient, isn’t!

Often businesses focus on the wrong IP, or register a right without first establishing whether it is legally available to use.

A common myth is that if you don’t have the resources to challenge other people’s use of your IP, there is no point in securing any IP rights in the first place. By not laying claim to an  IP someone else could use it, leading to disputes. Even without the resources to defend an IP right, litigation might arise. Costs involved in ceasing to use IP are ten times as much as costs to protect your rights in the first place.

But if you think IP is just about registration of rights, you’re missing the point. There are many facets to the subject. It requires guidance and support from an experienced IP lawyer to determine what the right strategy is for protecting your business assets.

Find out more via our website or one of our workshops.

Why Embracing Change Is Crucial To Nailing Business

What Is A Patent And How To Patent Your Idea

What Is A Patent And How To Patent Your IdeaIf you want a legal monopoly over an innovation there is no better way to achieve it than a patent.

Patents help you protect your creativity against copycat “me too” offerings. They last for up to 20 years.

Patent protection excludes others from using or selling the subject matter of your patented invention. They are a powerful monopoly right provided the patent specification is well drafted. It mustn’t be easy to design around. So, drafting your own patent may not be such a good idea.

For product-based businesses, like Mandy Haberman’s Anywayup Cup, a patent is essential. As soon as manufacturers found out about her popular innovative baby cup they began copying it. Because she had a patent, she was able to put a stop to the copying. Otherwise, it would have been impossible for her business to compete against the big boys once they wanted to develop similar cups. Her patent was effective because it prevented other manufacturers designing around it.

 

How to patent your idea

Essential to patentability is secrecy. If you disclose your invention in public before filing a patent application, you lose your right to patent it. Steve Jobs made this classic mistake when he unveiled a feature of Apple’s then-new iPhone by saying “And boy, have we patented it.” In fact, the application hadn’t yet been filed so Apple lost the opportunity to patent that feature.

Although you don’t need to have a finished product in order to secure a patent, you need more than a mere idea. There are various requirements to patentability. For example, minor improvements to an existing product or process won’t secure patent protection. There is more information here on our patents page.

However a patent may not always be the right answer to protect your business. For example, a recipe like the Coca Cola formula was protected through trade secrets. By opting to keep the formula confidential rather than disclosing it in a patent application, Coca Cola has managed to keep its recipe a secret for over a hundred years. If it had opted for a patent Coca Cola’s patent  monopoly would have lasted just 20 years. By now everyone would have been able to freely copy the formula. This is a good example of how it is possible to protect an idea or concept through various intellectual property rights. So, it’s essential to take advice and be strategic about IP protection.

Trademark protection in China

While the Chinese system of trademark registration shares many common elements with the European regime there are subtle differences that present a trap for the unwary.

Even Donald Trump had a long standing battle with a Chinese businessman, who registered the name ‘Trump’ in China preventing the US billionaire from using his own name for construction services.

That battle is now over, thanks to a recent ruling of the Chinese authorities which recognized the US President as the legal owner of the ‘Trump’ brand. Chinese intellectual property legislation has been notoriously difficult for Western companies to deal with.

Chinese trademark problems

In 2012, the tech giant Apple Inc. had to settle a $60 million lawsuit with a Chinese firm, Proview, in order to use the ‘iPad’ name. A steep price for not getting in early, and, one which is set to be even steeper for the new Apple iWatch as we wrote in our blog “iWatch Trade mark – Apple In Multimillion Dispute”.

However, Apple is not the only company to fall on the wrong side of Chinese trademark issues. Pfizer had not registered the Chinese equivalent for the name ‘Viagra’ and consequently ended up losing the name to a local Chinese company that had claimed ownership over it. Luxury fashion brands Burberry and Hermes have also run into trademark problems. The importance of your company’s name has never been as critical as it is today.

In 2015, a New Balance affiliate was ordered to pay $16 million in compensation to a Chinese show manufacturer who had registered the Chinese brand name “Xin Bai Lun.” New Balance knew about the trademark but continued to operate under the impression that there would be no consequences.

If you are manufacturing or selling in China, undertaking the correct international searches and working with intellectual property lawyers and translators is crucial.

Our Intellectual Property Advice

  1. Know Your Name

While in the UK, and Europe generally, you often only need to consider the English language trademarks that you use with your products, there are other dimensions to consider when securing trademark protection in China. The original brand name may be a priority, but your business, products or services will also become known by a name in a local dialect. Unless you develop a strategy early on, you may find that the market has chosen a brand name for you. This is what happened in the early 1990s, when Chinese businesses began using Chinese characters to approximate the sound “Coca-Cola”. Unfortunately, though the wording used may have had a similar pronunciation, actual translations of the text included “female horse fastened with wax” and “bite the wax tadpole”.

Well in advance of taking steps to extend your brand into China, you should decide how you would like to be known. Beyond your domestic branding, you will need to consider translation or transliteration of your name, whereby you either use words in a local dialect to approximate the sound, or translate the meaning of your trademark into Chinese. Coca-Cola were lucky to find a Mandarin pronunciation which had a positive meaning (“Ke Kou Ke Le”, roughly “permitting the mouth to rejoice”), but you may not find it so easy. You will also need to consider registering your trademark in Chinese characters, and the position is further complicated by the fact that may different characters have the same pronunciation, so the best approach will depend on the particular name you choose.

 

  1. Move fast

Most people tend to see intellectual property as a burdensome cost at the beginning of an entrepreneurial venture. Whilst it is true that intellectual property registration can be a costly exercise, investing in your intellectual property early will save you thousands, if not millions down the line. This is true especially if you intend to take your brand to ‘first-to-file’ jurisdictions like China. There is no end to those who will try to appropriate from you, so make sure they do not appropriate your intellectual property by registering before you do.

IP squatting, whereby trademarks are registered by a local entity which then trades on your success, or which tries to sell the rights back to you, is a problem in China, where it can sometimes be big business. So, timing is  important. If you wait for your plans to mature, you may find  it’s too late, and a local Chinese business has already adopted your branding, as happened to Starbucks. While the coffee giant eventually won its legal battle with the Shanghai coffee corporation, it could have avoided the costly dispute if it had registered its own brand in good time.

It is typical for businesses to outsource manufacturing of their products to China, and in doing so license their Chinese partner to use their trademark for that purpose. In some cases, the Chinese manufacturer, or another entity in China, will hijack the brand, registering it as a trademark and securing ownership of the rights to it in China. Case law on this point is developing, but there is a risk that such a hijacker might bring an action against the manufacturer for trademark infringement, stopping production in its tracks. So, even if you manufacture but don’t sell your products in China, it is crucial to secure local trademark protection.

  1. Have An Intellectual Property Strategy

Throughout much of the world, trademarks are categorised according to the Nice Classification. This system sets out 45 classes of goods and services for which a given trademark will be used, for example class 25 covers clothing, class 9 covers software, and class 41 covers education, among other things. The same trademark name can be registered in different classes by non-competing businesses, and you can find out more about trademark classification here.

Although the Chinese trademark system does make use of the Nice Classification, it further divides these classes into narrower subcategories. This means  the same mark can be registered in the same international class, for similar goods or services, provided that the registrations fall within different subclasses. For example, general footwear, and football boots, would fall in different subclasses, and the same trademark might be registered by different companies in each.

A cost effective, and efficient way to protect trademarks abroad is by using the Madrid Protocol system of international trademark registration. This mechanism lets you extend an existing application or registration into a number of different countries in one go, rather than filing in each individually. However, the international applications must be filed in the same classes, and against the same goods and services. Typically this is not a problem, but in China, while it may be cost effective at first to file using the Madrid system, you may find that you also need to file an application directly to ensure  you are protected in the correct subclasses. In fact, where you have the resources available, registering a national Chinese mark may be the priority.

We are well placed to help you to take control of your intellectual property in China so your business can flourish from a secure foundation. Do get in touch for a no obligation confidential discussion.

How To Fight Your Domain Name Disputes. And Win!!

How To Fight Your Domain Name Disputes. And Win!!

How To Fight Your Domain Name Disputes. And Win!!Facebook and Instagram successfully recovered more than 100 domain names recently from a business that was selling Facebook and Instagram ‘likes’ and ‘followers’.

Social Marketing Madness had registered domain names that included the words Facebook or Instagram along with generic terms like ‘buy cheap likes’.

Facebook brought the complaint before the World Intellectual Property Office’s Arbitration and Mediation Center. WIPO determined that the domains were registered in bad faith, because the domains were being used for commercial gain and there was no other possible reason for their existence than to mislead consumers and take unfair advantage of the goodwill of the marks.

What to do if someone has a domain name incorporating your brand name?

If you discover that someone has registered a domain name incorporating your brand name, you might want to recover the domain. It’s worth noting that if you have a distinctive name that you have registered as a trademark, it will be a lot less costly and much simpler to recover the domains than if you’re relying on unregistered rights. (The below video explains how to choose a name that can function as a trademark)

 

The starting point is to decide whether to use the court system by litigating in the courts or  whether to initiate the dispute-resolution procedure available for the particular domain suffix. Each domain has its own dispute resolution procedure. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) – which for .co.uk domains is Nominet – allows the person claiming rights in a name to apply under the relevant Domain Registrant Scheme, for domains registered in ‘bad faith’ to be transferred or cancelled.

Two of the benefits of arbitration over litigation are that it is generally cheaper and faster. The fees for filing a dispute-resolution claim are lower and you will not need to go to the expense of legal proceedings.

However, the main limitation of using the dispute-resolution scheme is that if you are successful, you can only expect to get the domain name transferred to you. The tribunal does not have the power to award any monetary damages.

One of the benefits of litigation over dispute-resolution is that there are a large number of remedies available, including damages. It’s also possible to get an undertaking from the squatter not to register any names in the future that infringe on your trade mark rights. Additionally, cybersquatters often have to pay your legal fees too in addition to transferring the domains. A few years ago Microsoft took legal action against cyber squatters in the USA, UK and other EU countries, to recover its domains and claim damages.

How to win a domain name dispute?

To win in this type of dispute you will need to prove three elements, namely that:

  • you have prior rights in the name;
  • the owner does not have rights in the name; and
  • the domain name was registered and is being used in bad faith.

To initiate an action, start by collecting evidence. Are there references on the website to you or to your competitors? Check the whois facility to find out who owns the domain name.

Check the date when the domain was registered to the current owner. If they registered the domain name after you began your business, or registered your trademark the case is much easier to prove.

Once you file a dispute-resolution procedure or initiate court proceedings, the domain is locked so that cyberflight (whereby the registrant transfers the domain to a third party) is no longer a serious risk.

As mentioned, to succeed in a domain dispute, it helps to have a trademark registration. This can make short work of the requirement to demonstrate rights in the name. Otherwise, you will need to establish that you have goodwill in the name.

If the domain name you are using for your brand is purely descriptive, there is little you can do to stop others using a similar domain name.

The message to take on board is that having a distinctive name which is protected by a trademark is an absolute essential in the digital economy. If a name isn’t descriptive, and is legally available, it means you can protect it and have exclusive rights over it. This makes it easier to have a unique online brand because if others are “passing off” your brand by registering your name as a domain, you are in a strong position to recover it from them

You don’t have to be a well known mark to be able to take action in the way Facebook has recently done.

What is a trademark and how to register yours correctly

 

What is a trademark and how to register yours correctlyWhat are trademarks?

Trade marks identify your products and services so that customers may find the products and services they like and avoid those they didn’t enjoy. If consumers have had a good experience with a business, or have heard that a particular business provides effective service, they may want to buy from that business. They should be able to reliably do so, without the risk of finding an imposter instead. Trademarks serve this purpose as they are your business’ “badge of origin”.

Signs and other identifiers

The signs that are typically registered are words (that is, names or slogans), and logos. Packaging and design features of a brand, including graphic symbols, are also sometimes registered.

There are other identifiers that are less commonly registered, such as musical jingles, shapes, colors, and smells. A well-known trademark registration of a shape is the Coca-Cola bottle. This is no simple feat to achieve as a registration. However, now that Coca Cola have managed to secure a trademark for this bottle shape, they have exclusive rights over the iconic bottle for as long as they continue to use it.

A registered trademark secures rights over not just the same name, logo, tagline or other sign, but also over confusingly similar ones too.  That’s because the aim behind them is to ensure that buyers can find the products or services they are looking for, and won’t be confused by competing products or services that are branded in a similar way.  So, a registered trademark owner is able to challenge others who use similar branding.

For example, just recently we heard that Darryl McDaniels, a member of influential hip hop group Run-DMC, has filed a £40.7 million lawsuit against Amazon, Walmart and other stores for using the  Run-DMC name and logo on clothing they sell. As McDaniel has the name and logo registered, and this makes it easier for him to enforce his rights and prevent competitors from benefiting from his trademark’s reputation. Similarly, McDonald’s was able to prevent the registration for foods or beverages, of trade marks combining the prefix ‘Mac’ or ‘Mc’ with the name of a food stuff or beverage.

Registering trademarks is therefore an essential step to retaining your brand’s distinctiveness, and securing the exclusive rights your business needs over elements of your brand identity.

How to register your trademark correctly

The starting point is to make sure you may legitimately lay claim to the name, tagline or logo you intend to use (or continue to use) and register.

The name of your product or service is the most important right to secure. Under trademark law names may be shared, which means you need to focus on choosing the business categories in which to register your mark. Trademarks are registered by reference to specific ‘classes’ or business categories. This means that if your desired name is already registered but for different business activities, you may still register it, and co-exist with another business who is using the same name for those different purposes.

For example, Automobile Association and American Airlines are both known as AA; similarly POLO is registered by three different businesses who use the name for a car, confectionery, and a line of clothing.

 

So, when you want to put your stake in the ground by claiming the rights to the elements of your identity, such as your name, logo, or strapline, you should be clear about how you’re going to develop your business. Then you can ensure you secure an adequate scope of protection in your  trademark registration. Otherwise, someone else may have rights to use the same or a similar brand element in the business categories you later realise you need. An example may help here. Say you register your name to sell clothing, and then later decide to also sell cosmetics. If someone else is using a similar name to yours for cosmetics, you would infringe on their rights, meaning you’d need to find a different name for your cosmetics. So, don’t ever assume you may just go ahead and use your name for any business activity. First check whether you’ve registered the name for that business category – cosmetics, in this example, and if not, do a search and register in the new business category before embarking on the new use of your name.

Advantages of registering a trademark

The advantages of registering a trademark are significant. Registration considerably reduces the risk of others picking the same brand element for their new products or services because your registration is on the public trademark registers. People are expected to search these registers before choosing names or other brand elements. If you’re not on the register someone else may build rights over the same name or other brand element, and this can lead to messy disputes and unnecessary costs.

Another aspect of registering your trademark properly is to register in other countries in which you do business given that trademarks are territorial. This means your registration only protects you in the UK (or EU, if you’ve registered an EU mark).

A UK trademark registration covers the UK only while an EU trademark registration currently covers all 28 European Union countries in a single application, including the UK.  However, once Brexit kicks in and we leave the EU, this will no longer be the case, and you should be considering your strategy carefully if you’re registering your mark now.

To protect your mark in other countries, it is possible to use your trademark registration in the UK or EU as the basis of wider applications in other countries, either under the Madrid Protocol or directly with an agent if your desired country isn’t party to the Madrid Protocol.

You don’t need to be a household name, or a huge multinational to aspire to be a brand in the sense of becoming a recognised provider of the products and service you sell. Your brand protection is  important.

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.

 For a free consultation on how we can help your business 

What JK Rowling Needed To Know About Intellectual Property law

J K Rowling and Intellectual PropertyJK Rowling is now a successful writer with one of the most valuable brands. It’s taken her just 21 years to get there. Initially, when she sent her first manuscript to publishers, she was turned down by more than 12 of them before Bloomsbury, a publishing house in London, accepted her book.

Authors starting out will rarely have an agent to look after their interests.  So it’s important in those early days, for a writer to take advice on the publishing agreement before signing it. It’s the same with any project involving IP – it’s vital to get IP advice before implementing your ideas.

Why a publishing agreement is so critical 

Certainly, JK Rowling’s considerable wealth didn’t result from book sales alone. However, the foundations for that wealth began with her first publishing agreement which is a critical contract.

The publishing agreement determines how the intellectual property arising may be exploited. The rights you give your publisher set out who may control the various rights in the work you create.

As the creator of the work, the writer will own the copyright in it. Therefore, the agreement should protect your copyright, and you should never give it away to the publisher. So, if your publishing agreement has a copyright assignment clause in favour of the publisher, don’t sign it before taking advice.

Most publishers will let authors keep the copyright, and will insist on having certain rights, such as the exclusive right to print, or to produce translations, licensed to them. Other rights like film, or television rights might well be left entirely to the author, while it will depend on the type of book and the publisher what happens to book club rights or similar.

At the time JK Rowling secured her first publishing deal, who could have known her books would have so much success? Yet if you are someone creating a business, or an artistic work, or piece of music, you need to assume you will be hugely successful, and not give away your rights unthinkingly.

Ownership of copyright underlies JK Rowlng’s wealth

If JK Rowling had assigned her copyright in Harry Potter to the publisher, she would not have achieved the profits and wealth that her writing gave rise to. It’s because she retained ownership of copyright that she was able to licence others to use the name on merchandise, to license the making of films, and to carve out rights to licensees of her work on a geographic basis.

Harry Potter has been registered as a trademark as have other characters, along with many designs produced around the books’ elements. Securing such IP rights or giving others the right to do so plays a crucial role in the income generated by the brand.

Once you own IP rights which are desirable to others to use, you may license a whole host of businesses in exchange for royalties. Licensing increases your  revenues for as long as there is a market for your creations. And unlike physical property there is no natural limit to the number of people to whom you can give a right to use your IP. So the revenues to be earned from IP far exceed what you would be able to earn from investment in physical property like land which may only be let out to one party at a time.

Consequently JK Rowling’s creations have been used on a variety of goods and services. The movie characters have been licensed to theme parks and other organisations, and reproduced on many different merchandise. Licensing agreements are flexible as they allow you to license as much or as little of your IP as you like.  JK Rowling’s creations have made billion dollar profits as a result.

Conclusion

In conclusion, Rowling’s considerable wealth today is all down to her intellectual property, with her biggest source of income being generated from licensing.

So the moral is to protect your IP if you have ideas to bring to the world. Whether you are an author, designer, software developer, or entrepreneur, don’t ignore IP whatever you’re creating. By taking timely advice and setting your IP strategy you will be better placed to secure essential IP assets and build your business on strong foundations. The future growth of any business is based on its IP.

Why not begin by attending my next workshop by following the link on the sidebar of this blog.

 

What is Intellectual Property and Why Does it Matter to You?

What is Intellectual Property and Why Does it Matter to You?Every business will have intellectual property to protect, although the actions to take will be very different depending on the business and the intellectual property involved.

Say you’ve invented some innovative way to solve a problem that no one else has managed to solve. In the case of Anywayup cup it was a baby cup with an innovative lid that didn’t spill. For C-Pen it was a pen that scans the text of a document directly to your computer. A patent is available in both these situations to protect your investment.  Arguably, for product-based inventions a patent is essential because it gives you a legal monopoly in the invention. The patent, if well drafted, makes it difficult for others to copy your invention. Without patent protection well-resourced manufacturers could enter the same market once they realise you are onto something, and use their greater financial muscle to produce and publicise a similar offering.

Then suppose you have selected the perfect name for your invention and had a logo developed for it with an attractive design. How would you feel if you were to find out after spending time and resources promoting the name, that it couldn’t be exclusive to you because the name is incapable of functioning as a trademark? This is what happened to Tesco’s Clubcard. The name it chose for its loyalty program has proved impossible to protect. If this was you, wouldn’t you prefer to know about it in advance, so you could make a better choice? Or, say you find that the name is not legally available and you then lose everything overnight when a trade mark owner is able to put a stop to your continued use of your name? This is what happened to Scrabulous whose business on Facebook went up in a puff of smoke. And did you know that if you don’t take the right actions in relation to your logo, you could find yourself on the wrong end of a dispute as happened to Innocent who at one point lost the right to use their iconic logo. Would you have the resources to appeal such a decision as they did? These are just some examples of what can happen when you don’t get timely IP advice.

Every business has IP issues to consider because every business has a name, a logo, a website, a database of contacts and more. These are all intangible assets which are important to the success of a business.

What is IP?

IP is the collective name for the rights that protect creativity, imagination and ideas. It’s very wide ranging and the rules are often complex.

Trademarks identify your products or services, secure exclusive rights over the name of your business and contain the value of your brand. With the right name you can stop competitors stealing business away from you. Copyright is another essential intellectual property right. Every business uses copyright works because every business is likely to have a logo, website, brochures, photographs, packaging, software etc. Design protection is another type of IP right which is often overlooked. However, it is a powerful tool for protecting your market share and preventing competitors from copying your ideas.

 

 

The Benefits of Protecting Your Intellectual Property

Strategic decisions about IP should be made early in the business so as to make good choices of IP, and determine how best to protect yourself with your available resources.

IP presents both risks and opportunities. Used wisely, IP advice and protection

  • increases the value of your business,
  • helps grow your profit margins,
  • creates income streams,
  • attracts finance,
  • protects your market share,
  • prevents competitors from copying your ideas,
  • reduces future risks and liability (including personal liability of directors),
  • protects the effort you put into your business, and
  • gives you a legal monopoly.

Common IP Mistakes

A common mistake is to assume that IP advice is just needed if a business has a potential patent or trade mark to register. In the digital economy IP support is needed for every business.

Another error we often see, is businesses simply registering their trademark without doing any due diligence searches. It’s important to note that a trademark registration can be cancelled if someone else has better rights to the name. This is what happened to Microsoft who had registered Skydrive as a trademark only to have its use of the name challenged. Rebranding to Onedrive cost millions. Not every business has the resources of Microsoft to shoulder the costs that a rebrand invariably involves.

Some business owners justify ignoring IP on the grounds that they don’t have the resources to litigate. They wonder what is the point of protecting their IP. You’re actually much more likely to get into a dispute if you don’t register your rights than if you do. Owning registered IP rights can be a very useful bargaining tool if you find yourself threatened by a competitor. Unfortunately disputes relating to intellectual property may arise when your business has taken off and your IP has acquired value. Not protecting it could lay yourself wide open. So don’t expose yourself to litigation by not taking some basic steps to protect yourself.

How To Protect Your Intellectual Property?

IP help is important when you’re deciding how to implement your idea because the choices you make when bringing your ideas to life are all IP decisions. By consulting an IP lawyer at that early stage you are much better placed to make effective choices, and reduce the likelihood of having to undo ill considered decisions later on.Taking a holistic approach to IP is crucial.

We are well placed to help you to take control of your intellectual property so your business can flourish from a secure foundation. Do get in touch for a no obligation confidential discussion.

For a free consultation on how we can help your business