How to protect your business intellectual property

A business should protect its name and its ideas just as readily as it would secure its physical assets. How can intellectual property be safeguarded as a business grows and enters new markets?

The value of a brand name, logo, invention, design or any other creative endeavour may be more difficult to precisely quantify than physical assets, but as intellectual property (IP) they can carry enormous commercial weight and should be protected.

Register

Protection of a brand name (or 'trademark') comes in the form of registration at a relevant national IP office. Examination of the trademark will be followed by a period where third parties have the opportunity to oppose the application. Once accepted, it can give the holder the right to a monopoly of that IP and the ability to stop others using an identical or similar offering for identical or similar goods or services, assuming an earlier right has not been granted for an identical or similar trademark, for identical or similar goods.

Due diligence

Due diligence must be executed in the relevant territories, checking no one has secured earlier rights, warns Ed Carstairs, Associate, UK & European Trade Mark Attorney, Gill Jennings & Every LLP. A business is best placed to carry out an initial search to highlight any obvious issues. Thereafter, the search may be best executed by an IP professional with access to richer data sources, stronger analytical skills and advisory capacity.
Doing so may uncover the trend in some developing jurisdictions, China in particular, where trademark 'squatters' effectively steal a name. Squatters can legally obtain a trademark registration before its legitimate owner, demanding payment to relinquish that right.

Coordinate

Filing quickly and early to pre-empt squatters is the simplest and cheapest solution, notes Carstairs. For an international business, or one with global aspirations, this may mean filing in multiple countries. For practicality, this will usually mean filing only in the countries that are, or may be, of interest for a growing business.

This demands internal coordination. "It is always advisable for the legal and marketing teams to be closely aligned on IP," says Carstairs.

Recourse

If an IP right is infringed, often the dispute is settled out of court, notes Carstairs. The first stage for the victim is to send a 'cease and desist' request. "Most of the time that resolves the issue," he says. If not, legal proceedings may follow, using the court system where the infringement is occurring. This will almost certainly demand local legal expertise.

Some tips to help ensure your trademark is protected:

  • Discover if you are free to use your trademark by searching for registered trade marks at gov.uk/search-fortrademark.
  • Register your trade mark as soon as possible.
  • Employ a third-party watch service to scan multiple jurisdictions on your behalf for potentially conflicting applications. This can be an early warning signal for a competitor entering the market.
  • Notify Customs authorities of your IP rights. They will monitor the import of counterfeit goods. If an EU trademark is held, this service can be extended to all EU member states.
  • Pre-empt infringements using very public assertions of your rights eg on your websites, emails, company literature and product marking.
  • When IP is up for renewal, do so or you will lose protection.
  • Re-register new designs of original trademarks if they substantially differ from the original, or file a top-up trademark application if you are launching a new product under that name.

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