SonderAdmin, Author at Sonder & Clay

Author Matt Sammon

Your brand is important to you and your business so your selection of an Intellectual Property Law Firm to work with should be carefully considered. From independent IP law firms to huge global Solicitor firms, there are a multitude of options to choose from so identifying the right solution for your brand can be tricky. In this article we’re sharing guidance and tips to help you choose the best IP law firm to suit your business’ needs.

Can you manage your own Intellectual Property?

Before you start your search for an IP law firm, you need to decide what aspects of your Intellectual Property you can manage yourself and where you need help and guidance. The UK Intellectual Property Office manage the registration of Intellectual Property rights within the UK and provide a lot of information on the different types of rights that can be protected and how to go about it. Whilst managing your own IP can be very cost effective it can be time consuming and becomes more complex as your business grows.

The two types of IP Law Firms

Appointing an Intellectual Property specialists is a more strategic, long term solution and is an option worth exploring for all businesses. IP Law Firms tend to fall into 2 main categories:

Trade Mark & Patent Attorney Firms
Solicitors

Patent & Trade Mark Attorney Firms are regulated by the Intellectual Property Regulation Board and consist primarily of Chartered Trade Mark Attorneys and Chartered Patent Attorneys. Look out for this accreditation on their website and marketing collateral, and then verify this using the Chartered Institute of Trade Mark Attorneys – Find a Chartered Trade Mark Attorney online search.

Solicitor firms tend to be regulated by the Solicitors Regulation Authority and consist primary of Solicitors, some of which will be IP specialists. However, there is a great deal of overlap between these two different types of firm with many Solicitor firms employing Chartered Trade Mark Attorneys and vice versa.

Trade Mark Attorneys are IP Specialists

Both types of firms will offer a range of Intellectual Property services so it can be confusing when deciding which is best for you. Whilst both offer services their training and experience can be very different, Trade Mark Attorneys undertake a lot of IP specialist training to prepare them for filing applications, securing and dealing with registered rights, whereas training for Solicitors will often focus on a broader range of legal services that includes some IP.

The role of an IP Law firm

First and foremost, your IP Law Firm needs to be a trusted business advisor. Whilst some of the work they undertake can be fairly transactional, such as registering a trade mark they need to understand you and your business to be able to tailor their advice and service to you.

IP Law firms will be able to assist, not only in the protection of IP rights, but should also provide support for designing and implementing an IP strategy for your business. Your IP Law Firm needs to understand your business plan, the role intellectual property plays within it and be able to advise you accordingly. This enables them to effectively advise you on identifying your valuable IP, agreeing the best strategy for protecting that IP and then securing protection on your behalf.

IP plays a role in many day to day activities of a business, in particular marketing, sales and communications. It is also intrinsic to new product development, international expansion and collaborating with third parties. Your IP Law Firm will be able to provide you with advice along the way, including how to approach such issues, how to keep the business safe and ensure you protect what needs to be protected to give you security to proceed and the best competitive advantage for your investment.

As your business grows, so does your IP portfolio so it becomes more important to manage it effectively. Your IP Law Firm can provide access to a database of your rights and manage any few maintenance deadlines.

Traditional IP Law Firms

Traditionally, IP Law Firms are run as partnerships consisting of Partners, Associate Attorneys or Solicitors, Trainees and Paralegal support. The services offered are a mixture of fixed fee tasks and hourly rates and will include conducting clearance searches to see if you risk infringing the rights of a third party, filing applications to protect trade marks, designs and patents, advising on and recording acquisitions at the relevant Registries, advising on and bringing proceedings for infringement of third party rights, defending you against claims for infringement, attending to renewals of your registered rights and advising on issues relating to copyright such as ownership and infringement.

When you engage an IP law firm they will often propose a specific team to work with you, usually consisting of a Partner, an Associate and trainee or paralegal. Service levels vary from firm to firm so always research their reputation amongst existing clients. The main downside to traditional IP Law Firms is that costs can quickly escalate due to their strict pricing policies so they are not always the most cost effective solution, particularly if you want to keep tight control of your budget.

Modern IP Law Firms

More recently the industry has seen a proliferation in the amount of IP law firms. This is in part due to modernisation of the regulatory bodies and the emergence of alternative business structures. This means there is a greater choice in the type of firm to work with. Some of the more modern IP Law Firms offer a genuine alternative to the traditional model, adapting their approach and charging structure to suit the client.

In particular, being charged on an hourly rate can be frustrating as it is hard to budget for a project without knowing the cost at the outset. This can make the decision on whether or not to proceed with the particular project tricky as you have to take a gamble on the budget. People like to know what they are getting into and budget accordingly, which is a key benefit offered by modern IP law firms.

The main IP charging structures

Some firms will have a range of charging structures for you to choose from that might include fixed fee rates, capped rates, retainers and volume discounts so it is always worth shopping around to find something that suits you. The extent of your needs may also affect the decision on who to engage. A fixed fee structure works well if your needs are occasional, but a retainer will have significant advantages in terms of both cost and administration if your needs are greater.

How do I know what IP services I need?

The level of support you require will depend on the nature of your business and your future plans for growth. Some businesses will create and use much more intellectual property than other businesses. For example, business to consumer product firms will deal with many customer facing brands that would benefit from protection by trade mark registration. This will of course depend on whether such businesses are creating their own brands or dealing in third party brands.

Other businesses, such as service providers, may have a lower level of trade mark activity, but may have more requirements for advice on copyright in materials that they produce.

Start with an IP Audit

A good place to start is identifying what is unique to your business, i.e. what have we created to make our business successful. This will typically include brands (trade marks), advertising and marketing campaigns and straplines, products, product designs, training materials, marketing materials, business methods etc. You can then discuss this with potential IP Law Firms to get an idea of how they would approach implementing a strategy for protection and management of these valuable assets. An IP audit is a worthwhile exercise to gauge where your business currently stands and how to navigate a way forward.

Seek a flexible partnership

The level of service you need may define how you want to interact with your advisor. You may need someone that is heavily involved and becomes an integral part or your team that helps design and implement the IP strategy for the business, provides internal training and works with your various other inhouse functions such as finance, marketing and sales. Alternatively, you may prefer someone that is an occasional resource available as and when you need them.

A flexible approach to partnerships is more common in modern, independent IP law firms such as Sonder & Clay. Ideally, you want a quality service that is tailored to suit you and fits in with how you want to run your business.

9 Tips to choose the best IP Law firm for your brand

Establishing a good working relationship involves understanding how the firm operates, how they charge, who you will be working with and how they propose to communicate with you. Whichever firm you choose you will be working with individuals so take the time to understand who they are and whether you feel they ‘get’ you and your business. You should be comfortable working with them and confident that they will deliver what you ask for. Here are 9 practical tips you can use to for evaluate IP Law firms:

Take stock of the IP that is valuable to your business so you can easily convey this to firms you are thinking of engaging to see how they will approach your particular needs;
Identify how you like to communicate and ask specifically how they propose to communicate with you;
Ask what resources will be available to you, such as online database access and IP training for employees;
A good relationship with an IP Law Firm is for the long term so find out which attorneys will be providing the services and take the time to meet with them and discuss how they will approach working with you and what relevant experience they have;
Good advice is based on understanding your plans for the business and your individual needs. Ask how they will approach getting to know you and your business;
Talk about money. Not everyone is comfortable with this, but it is important, you need to understand what charging structures are available to you and how they will work with you to ensure you can budget for IP costs;
Seek recommendations. If you have friends or colleagues that use an IP Law Firm ask them what they think. You can also research the firms and individuals online. We have provided some useful resources below;
Check they are qualified to carry out the work you need;
Remember you are the client, tell them what you need and ask how they will deliver it.

We create real IP value

From the everyday to the IP emergency, our accomplished Chartered Trade Mark Attorneys and IP Solicitors are driven to get the very best outcome for every brief for every client, every time! Sonder & Clay are a full service IP law firm with proven expertise and results in IP protection, strategy, disputes, and exploitation. Learn more about our IP services or get in touch with us for a complimentary IP audit today.

Author Matt Sammon

The process of registering your trade mark gives you exclusive rights to deal in that trade mark, and to prevent others from doing so. In this article we will take a look at what you can register as a trade mark, the benefits of doing so and the process and requirements on how to register a trade mark. Whilst this blog focuses on the UK trade mark registration process and requirements, it’s worth noting that many foreign countries apply the same criteria.

How to identify your brand’s important trade marks

You can identity your trade marks by answering a few simple questions, such as; what is your badge of origin? how do your customers know and identify you? how do they spot your product on the shop shelves, or identify your service offering from those of your competitors? Is it a name, a logo, a shape, a sound? Whatever it is, that’s your trade mark.

Why register a trade mark?

The most obvious reason to register a trade mark is to prevent a competitor using it, or something similar, to drive traffic to their own goods or services, or to confuse your loyal clients into buying their products or services instead of yours. Once your trade mark is registered it is protected from this unsavoury behavior that can damage your business’ sales and reputation.

For the relatively minimal cost and low administrative burden involved in the registration process, the owners of a registered trade mark secure a strong registered right which is easy defend. A trade mark registration is your flag in the ground, marking out your territory from those of your competitors, and serves as a warning to your competitors and consumers alike that you are serious about protecting your position.

The risks of un-registered trade marks

In the UK, it is possible to rely on unregistered trade marks to take action against third parties, however reliance on rights that have not been registered requires that you are able to demonstrate a goodwill in the sign in the UK. The only way to establish this goodwill is through the filing of, extensive evidence, which is not only time consuming and a huge administrative burden, but also a costly exercise, which is by no means guaranteed to succeed. You will also be required to demonstrate, again through the filing of masses of evidence, that unauthorised use of your sign would constitute a misrepresentation to consumers. A small trade mark registration cost can save a huge amount of effort and cost later down the line.

What can register as a trade mark?

Whilst trade marks are most commonly words or logos (think ADIDAS or the Nike “swoosh”), these are by no means the only protectable forms of trade mark. With recent changes in the law regarding the format of a registered trade mark, it is now possible to apply to register almost anything as a trade mark including sounds, holograms and moving images.

There are however certain requirements that the sign must fulfil before it qualifies for registered protection. Those requirements are generally defined in relation to the goods or services for which you are seeking protection and exist to ensure that your chosen sign is capable of acting as a badge of origin, and to protect traders from unfair trade mark registrations which would block normal, everyday use.

Top considerations are to ensure that your chosen trade mark is not descriptive or non-distinctive in respect of your target market. By this, we mean, the sign may not simply describe the goods or services concerned, and must not be indicative of a feature of the goods or services, for example the quality, quantity or intended purpose of the products. Examples here would be the word CLEAN for use in respect of soap products, or WARM for use in respect of jumpers; not only would a registrations for these types of words prevent legitimate use within the trade, but members of the public are unlikely to view these types of words as indicating origin, and are much more likely to view them as simple descriptors.

There are numerous other considerations relating to commonly used language, the nature of goods themselves, public policy and morality, misleading nature, and protected emblems. If you are unsure about your chosen trade mark, you should consult an IP specialist who will be able to advise you further.

Conduct a trade mark search to check availability

As well as objections based around the sign itself, consideration must also be had for whether or not your chosen sign conflicts with any other third party right already in existence. Is your chosen sign identical or closely similar to an earlier sign in respect of identical or similar goods and services? Whilst the UK office will not prohibit the registration of such a sign, third parties may raise objections to your application on these grounds, and successful oppositions will prevent the registration of your chosen sign, and may result in further legal action.

Taking the time to consider all of these factors at the outset will ensure that you choose a trade mark which is both capable of, and free for, registration.

How to register a trade mark in the UK

How you go about the trade mark registration process is likely to have a direct impact on the success or failure of the application. You should always seek advice before proceeding with an application – a good trade mark attorney will be able to guide you through the maze of the requirements and will be able to discuss any potential problems of your chosen sign with you. He or she will be able to advise you on the correct coverage and scope of protection to ensure that you are actually getting the coverage that you think you are getting.

Your trade mark attorney will also be able to advise on any other issues which may arise, for example who designed your sign, and does this attract any copyright ownership issues, and whether any other form of protection, such as design protection, would help to solidify your rights. He or she will also be able to conduct trade mark searches of the relevant registers to ensure that your application will not meet with third party obstacles throughout the process. Furthermore, your attorney will be able to discuss additional territorial protection and the best routes for obtaining protection overseas. Read our recent guide for tips and recommendations on how to choose the right advisor for you.

The UK trade mark application process

The registration process in the UK is relatively simple and cost effective. Once your application has been filed at the UKIPO containing all required details, the application will face examination to determine its acceptability for registration, followed by a publication period during which others may file opposition against the application if they believe your trade mark should not be registered.

Provided you have taken the advice of a trade mark attorney prior to filing, you should not meet any problems at these stages, or you will at least be aware of the potential for problems which your attorney would have discussed with you.

Provided no obstacles arise, or any obstacles are successfully overcome, your trade mark will progress through to registration, and the UKIPO will issue a trade mark registration certificate. You are then the proud owner of a trade mark registration, an incredibly powerful right that you can use to prevent unauthorised use of your trade mark.

Foreign protection of trade marks

We recommend you discuss the issue of foreign protection with your trade mark attorney as early as possible, he or she will be able to advise on the best possible course of action for securing protection in the additional geographical territories of interest to you. For example, you may wish to make use of the priority period – an international system which allows applicants to delay foreign filings for a period of six months, perhaps for the purpose of spreading the cost or for market research purposes – but which allows you to benefit from your original filing date.

In addition, your trade mark attorney will be able to advise on the most administratively concise and financially effective method of securing overseas protection. There are numerous international systems and methods for securing overseas rights, including foreign national applications, unitary systems such as the EU Trade Mark filing system, or pick and choose multi-filing systems, all of which have different benefits, and a good trade mark attorney will be an expert in them all.

Managing your trade mark effectively

Once registered, your UK trade mark will last for an initial period of 10 years, and is renewable for continuous 10 year periods upon payment of the appropriate renewal fee.

As well as making sure that you attend to payment of the renewal fee at the correct time, you will need to take good care of your trade mark registration; you will need to make good use of your trade mark to ensure that it does not become vulnerable to a non-use attack, and you will need to actively monitor both internal and external use of your trade mark to ensure that there is no unauthorized or infringing use of the sign, or that where the use is authorised, the sign is used in the correct manner, that the trade mark is not used in any offensive or inappropriate manner, and that your sign is always clearly used as a trade mark, indicating the origin of your products or services and not as a descriptor.

Establish your trade mark rules

It is important to monitor both the offline and online realms, including competitor and third party sites, and also social media usage. Your trade mark attorney will be able to provide further advice in respect of the correct use of trade marks, and will be able to advise on the preparation of suitable brand guidelines detailing the requirements for third party use of your trade mark.

How to use your registered trade mark

Once registered, you will have a valuable right that not only provides you with a solid starting point for preventing unauthorised use of your sign, but also provides you with a valuable item of property which can be dealt with in the same manner as a physical item of property – the registered trade mark will add significant value to your business, forming part of any future valuation, and can be traded, for example, licensed to third parties to generate income, or can be sold to third parties either independently, or as part of a larger business sale.

As long as you take good care of your trade mark registration, it will serve to protect and preserve your place in the marketplace, ensuring that your customers can enjoy and love your products and services for years to come, safe in the knowledge that they know what they are getting. It will provide you with a strong basis from which you can control and prevent the use of your trade mark, and will add value and status to your business. Obtaining a trade mark registration is well worth the minimal initial cost and effort, and most certainly ensures that you preserve your place in the market for years to come.

We create real IP value

Author Matt Sammon

Intellectual Property (IP) is everywhere – you can find it in your branding, your creations, your innovations and your products. The legal protection of intellectual property rights is split into four main categories: trade marks, patents, designs and copyright. The purpose of intellectual property is to encourage commerce and innovation by offering a method of protecting your identity and anything that you create.

But Intellectual Property can be a minefield of terminology and legalese. It’s a common misconception that you can obtain a patent for your trade mark, or that you can only enjoy copyright in something that has artistic merit. Here we guide you through how to identify your IP rights, and how to identify the correct legal protection, which in some cases may be multiple forms.

Identify what IP rights may exist

It is not possible to protect an idea or concept. It is only possible to protect the physical manifestation of that idea or concept. If you are only at the ideas stage, you will not be able to obtain any legal protection. That idea must be represented in a physical form, be that a product, an image, a logo, a poem etc. before you can enjoy the benefits of legal protection.

Once you understand the key differences between the four main types of intellectual property, and can distinguish between them, it becomes easier to identify which IP rights are relevant to you, and to understand how to exploit that IP right to your advantage. The key question to ask yourself is, what feature am I trying to protect?

Your product or service may attract a combination of protectable IP rights, some of which may surprise you. Your IP advisor will be able to discuss this with you in more detail, and will be able to provide recommendations for the most suitable or relevant type of IP for you. If you are yet to appoint an IP specialist for your brand please read our guidance on how to choose the best IP law firm for your brand.

Subsistence of IP rights

In order to attract the protection afforded by IP, your product or other work must first meet essential criteria. Failure to meet these essential criteria will render your product or work incapable of IP protection.

In each case, there are express restrictions on what can or cannot be protected, and your IP advisor will be able to discuss these restrictions with you. Below are key examples of the criteria for each type of intellectual property.

(i) Trade Marks

The chosen trade mark must have some distinctive character which establishes the sign as an indicator of origin rather than just a laudatory expression
The chosen trade mark must not exclusively describe a characteristic or feature of the goods or services in relation to which protection is sought
The chosen trade mark must be sufficiently different from previously existing trade marks in the same commercial sector to avoid confusion

(ii) Patents

The invention must be novel compared to anything else already in the public domain. It is therefore essential that any conversations surrounding the invention are conducted under cover of a Non Disclosure Agreement (NDA) as prior disclosure will be fatal to an application
The invention must have some technical effect and not just a visual or aesthetic effect
The invention must not be an obvious modification of something already in existence

(iii) Registered Designs

The design must be new compared to anything else already in the public domain, and therefore as with patents, prior disclosure of the design to the public will be fatal to an application
The design must be sufficiently different from any previous designs in existence such that a different overall impression is created
Protects 3D physical shape and configuration and also 2D designs, surface patterns and decoration, but does not protect technical function

(iv) Copyright

The work must be original and have been independently created
Copyright protection only exists in the physical manifestation of the work, and not in the idea of the work before it is fixed. for example, written down
The work does not have to be visually appealing to attract copyright protection, which can for example, subsist in block text or building designs

The process of IP protection

Once you have identified your IP, you should seek the available legal protection for your intellectual property rights wherever possible in order to provide you with a strong basis upon which to stop unauthorised use of your property.

Protecting copyright and unregistered designs

In the UK, copyright and unregistered design right arise automatically, and there is no official register for those types of IP rights. As there is no official register, those rights are not subject to an official examination process, and they are therefore generally viewed as weaker, and more difficult to assert than registered rights.

Protecting trade marks, design and registered designs

Trade marks, patents and registered designs all have an official registration system during which the product or work is examined by an official body to determine its eligibility for legal protection against the official criteria.

Trade marks, patents and registered designs are all territorial in nature, meaning that securing protection in the UK alone will not provide you with any protected IP rights beyond the UK. There are various methods for obtaining protection which are available to you, depending upon the geographical scope of the protection that you require.

Intellectual Property rights by territory

If you are only interested in UK protection, then you can simply file your application before the UKIPO which will grant you UK rights, applicable only in the UK.

Alternatively, there are various different methods and systems that you can use to protect your IP further afield, all of which have different advantages and disadvantages, and cost implications. We recommend appointing an experienced Trade Mark Attorney who can deliver expert IP protection services in each territory that you need it and help you strategically plan for business growth.

Some systems offer unitary protection in a particular area, for example an EU Trade Mark Application filed at the European Union Intellectual Property Office (EUIPO) will grant you EU-wide protection under one registration. Note that following expiry of the Brexit transition period, the UK will no longer be covered by this EU-wide system. Further guidance on how Brexit will impact on your IP can be found in our BREXIP series of blogs.

Other systems offer the facility to pick and choose the countries that you cover from a wide list of member countries, for example an International Trade Mark Registration filed at the World Intellectual Property Organisation (WIPO) which effectively results in a bundle of national rights maintained via a central administrative office.

There are various priority systems available to applicants of trade marks, patents and registered designs. You can take advantage of these systems to spread the cost of international filing programmes, and to test the market before seeking protection. Please consult your IP advisor for further guidance in this area.

The benefits of legal protection

When legally protected, your IP rights will acquire concrete value for your enterprise as they cannot be commercialized or used without your authorization. Obtaining legal protection for your IP rights essentially turns what is an intangible asset into a tangible one, creating a valuable, exclusive item of property that can be traded in the marketplace, licensed, bought and sold.

Enterprises are increasingly realizing the value of their IP assets, including them in accounts balance sheets. Investors and financial advisors are acknowledging the value of IP with increasingly high valuations. Depending upon their market sector, some enterprises are realizing that their protected IP is of higher value than any physical assets on their balance sheet. Some well-known brands even use their protected IP as a feature of their advertising, for example referencing the size of their patent portfolio in order to demonstrate the level of their innovation.

Type of IP and their key administrative features

We create real IP value

Author Matt Sammon

Intellectual Property protection is essential in creating and maintaining a successful business and, understanding how to protect your Intellectual Property should be top of your list as a business or brand owner. Pretty much every business, creates, owns and uses intellectual property (IP), whether they are aware of it or not and Intellectual Property theft can be very damaging, both in terms of lost revenue and harm to the reputation and goodwill of a business.

IP is a valuable asset that captures the essence of your business and its success and plays a key role in perpetuating that success. It can provide you with a significant commercial advantage and add value to the business. It allows you to control and benefit from the goodwill and reputation you have created to date and even add additional income streams to the business.

What do we mean when we talk about IP?

Intellectual Property is categorised into the below four key areas:

Trade Marks – trading names, product names, service names, logos, slogans, brand colours

Copyright – artistic works such as logos, advertisements, photos, musical works; literary works such as computer code, databases, training manuals, news articles, advertising copy, website content; sound recordings; typographical arrangements

Designs – The look and feel of your products, their parts and accessories

Patents – the right to prevent others from reproducing your inventions

Want to learn more about your Intellectual Property? Read our beginner’s guide to IP rights for everything you need to know. In this article, we are focused on how to protect your IP and our highly experienced Trade Mark Attorney’s are sharing their top 10 tips to keep your IP safe.

Common mistakes in IP Protection

You would not leave the office at night without locking the door because it’s full of valuable property, so why leave IP assets unprotected and vulnerable to IP theft? The main reasons IP remains unprotected are lack of time, lack of understanding or lack of good guidance.

Time – We would all like more time to run our business better, but it is often a case of having to prioritise. IP is a very valuable asset and to most businesses getting it wrong could be very damaging. Everything you do as a business gains recognition and goodwill in the name you trade under. Imagine having to change this after 18 months of trading because you didn’t check to see if anyone else owned the rights to it and/or you failed to protect it.

Understanding – IP is a complex area, but you don’t need to become an expert. What you do need to do is understand the value and the dangers. There are numerous free resources including the UK Intellectual Property Office and resources provided by IP Law firms such as Sonder & Clay.

Guidance – Your relationship with your IP advisor should be a prosperous long term relationship with both parties seeing the value, so take your time to find an advisor that understands you and your business, see our article on how to choose an IP law firm.

At Sonder IP, we want to empower all businesses to effectively protect and manage their IP. To help your brand, we’ve put together some top tips on how to address the issue of IP Protection and put in place some strategies to help you succeed:

Identify the protectable IP at an early stage and ask yourself can I use it?

First and foremost, protecting your IP should be about ensuring security for your business going forward. The first step is ensuring that you will not infringe 3^rd party rights by adopting your chosen brand name and securing protection to ensure you can invest in building a brand without fear of being forced to cease use of that brand. Therefore, a clearance search should be conducted for trade marks at the earliest practical opportunity.

In addition, you should identify work that attracts copyright protection, validate that they are original and that you own them and keep good records to demonstrate this.

If you design products, consider design protection. Design protection is often under-utilised. The design of your products can be the single biggest feature that secures sales so talk to your IP advisor about securing protection.

Any inventions that might attract patent protection need to be identified and discussed with a Patent Attorney BEFORE any public disclosure is made.

If you collaborate make sure IP ownership is clearly set out before collaboration begins

It is of course common for business to buy in support and expertise to assist with the design and development of brands, designing marketing material, training guides etc. This is a great way to move your business forward, but you need to be clear when engaging with third parties that you want all IP to be owned by your business and ensure that any contract reflects this and enable you to demonstrate that you own any IP generated.

If you commission work from a third party you will not own the copyright or design rights unless there is an agreement to the contrary. Dealing with ownership after the event can be costly and time consuming, so be clear from the outset to avoid misunderstandings and ensure you have clear title to any IP.

Register IP where the value is justified

Registering a trade mark is relatively inexpensive and can give you an indefinite monopoly to your chosen business, service and/or product names. It also serves as a notice to third parties to prevent them from adopting a confusingly similar name.

A trade mark registration is tangible evidence of your rights and enforcing a registered trade mark is far easier than enforcing goodwill in a business, so registration can save significant costs and greatly increase the chances of success in the event you find your business being impacted by use of a confusingly similar name. See what you can register as a trade mark here.

Registered designs are an under-utilised form of protection. If you have designed a product that is appealing to consumers you can protect that design to ensure that you have the exclusive right to manufacture and sell products made to that design, ensuring that only you benefit from the creativity and hard work that went into the design.

Patent protection can be hugely beneficial, but usually involves a significant investment. A decision on whether or not to secure registered IP is a business decision and there should be a cost/benefit analysis before committing funds to securing protection.

Register in key markets and the markets with the biggest growth potential

Trade Mark, Design and Patent registrations are strictly territorial. A registration in the UK will only give you protection in the UK. Therefore, it is important to consider your key markets and the markets where you anticipate future growth and consider securing protection.

You can use priority periods to spread the cost of expanding your IP portfolio without the risk of losing rights. The more countries in which you seek IP protection, the greater the cost. You should discuss options for overseas protection with your IP advisor and insist on a detailed budget proposal to ensure you know what you are getting into. You can then decide on a filing strategy to secure protection based on a detailed cost/benefit analysis.

Establish an IP protection policy and framework

Most businesses will continue to generate IP as they evolve, grow and diversify. Setting out a process for identifying IP, reporting creation to the relevant decision makers, clearing for use, taking a decision on what protection is appropriate and allotting budget for protection is good practice and ensures that you continue to protect key assets.

It is also important that any such policy includes engagement with third parties to ensure that where possible you retain ownership of IP important to the running and success of your business.

Educate key staff on IP protection

Many IP infringements arise due to a simple lack of understanding of what IP is and how and where you may risk infringing third party rights. An IP Policy and Framework will only be effective if your staff are aware of it, understand it and appreciate why it is there. This ensures that your staff know when and where they need to take advice before exposing the business to risk.

Monitor – make your IP work for you

Protecting your IP can ensure that many of the unique facets that contribute to your success are protected. However, in order to ensure that protection is effective you need to consider monitoring the activities of competitors to ensure that your brands remain distinctive and your designs are not copied.

There are a variety of tools available for monitoring Trade Mark Registries and competitor activity and your IP advisors can provide you with more detail on this.

Keep control

Your IP identifies you, your business and your reputation, so controlling how and when it is used is important. Consistency is key so adopt brand guidelines and make it clear to staff and third parties authorised to use your branding what is expected of them and make sure they adhere to your requirements.

If you licence the brand, then include quality control provisions to ensure your high standards are met and use by licensees does not cause any harm to your reputation and the value of your brand.

Maximize the value of your IP

Registered IP rights are an asset that can be mortgaged, licensed, bought and sold. Take the time to consider how you can maximise the value of your IP. It may be that it can be used to secure funding to invest in the business, be licensed to third parties to diversify your income stream or sold to realise a return on your investment.

You can also discuss with your accountant ways in which you can account for your IP in the company’s balance sheet or use your IP to benefit from favourable tax treatment. Maximising the value of your IP is fuelled by an innovative IP strategy, ensure that you collaborate with an experienced IP firm, such as Sonder IP, who are recognised for this style of IP service.

Don’t stand still, review and repeat

Plans change and often the business heads in a different direction. It is important that the IP strategy follows. The IP strategy serves many purposes including ensuring that the direction of travel for a business is safe and risks are identified and mitigated. It also ensures that your hard-won market position and competitive advantage are protected.

If you want your IP to keep working for you and generating value then you need to ensure that it stays relevant and serves its purpose. We recommend that you conduct an audit of your IP, at least once a year to identify where you need to adapt to continue making the most of your IP.

We create real IP value

Author Matt Sammon

Digital transformation is nothing new, but the challenges presented by Covid-19 have resulted in a clamour to embrace the digital world. For some it’s a natural progression of their business model, but for others its driven by a need to survive in challenging circumstances. Digital transformation might simply be necessary for a business to operate when social distancing is in place or may be a new way to reach customers and deliver goods and services. When a business undergoes a digital transformation, it will almost certainly give rise to Intellectual Property (IP) challenges.

What is digital transformation?

The Enterprisers Project define digital transformation as follows:

“Digital transformation is the integration of digital technology into all areas of a business, fundamentally changing how you operate and deliver value to customers. It’s also a cultural change that requires organizations to continually challenge the status quo, experiment, and get comfortable with failure”

The 4 Types of Digital Transformation

Digital transformation can be broken down into different areas. Andrew Annacone of TechNexus Venture Collaborative identified 4 types of Digital transformation:

Business Process – Reinventing existing processes, primarily to reduce cost, increase efficiency and quality
Business Model – Changes to the fundamental building blocks of a business to change how value is delivered within an industry
Domain transformation – Redefining products and services and opening up new markets
Cultural/Organisational transformation – redefining organisational mindsets, processes, talent and capabilities

3 digital transformation covid-19 trends

The current economic climate and challenges presented by Covid-19 have heightened attention on domain transformation and the delivery of goods and services. And when such fundamental changes are involved it is inevitable that Intellectual Property will play a role. To help brands like yours understand the full picture in this article we will cover 3 key trends in digital transformation and examine the impact, risks and rewards from an IP perspective.

1. The Rise of virtual events

More and more interactions are taking place digitally. The use of applications such as Zoom and Teams has increased dramatically, but what has been particularly exciting is the range of events that are being delivered online.

Business meetings and networking events have managed to transition online relatively easily but imagine having to deliver a global sporting event online! The World Triathlon Corporation, organisers of the famous IRONMAN events did just that. On 1 April 2020 they launched the IRONMAN VIRTUAL CLUB.

The IRONMAN VIRTUAL CLUB is a community that allows its members to track their training, complete challenges and compete in races. The club embraces existing technology providers, in particular, activity tracking devices such as those of Garmin, Fitbit and Nike+. They have also teamed up with Rouvy to incorporate augmented reality and enhance the IRONMAN experience. In addition to taking part, you can also watch the Pro Series where professional triathletes battle it out on virtual courses.

This is a dramatic change to how events have been delivered previously and has the potential to deliver well beyond the current restrictions on sporting events.

IP considerations for virtual events

Moving events online mean that they are accessible globally and the location of the customer base can expand significantly. Brand owners adopting this form of digital transformation need to consider their existing brand IP protection and whether it sufficiently covers this new customer base. In addition, it would be prudent to consider whether the existing protection covers the delivery of online events and any ancillary services that are now offered under the domain transformation.

Securing protection for trade marks can take a significant amount of time, which may not be available for a time critical transformation. Consequently, a good IP search strategy needs to be adopted to assess risks in a short timeframe and ensure that services can be provided within acceptable risk parameters.

The example we have here with IRONMAN VIRTUAL CLUB involves collaboration with other providers, such as Garmin and Rouvy. When there is collaboration like this you need to consider whether licences for use of third party brands or technology are appropriate and whether there is cost involved or a potential income stream to be exploited.

The advertising of a service involving multiple brands also needs to be considered carefully to ensure that there is no misrepresentation of the relationship between the brands and their respective services to avoid trade mark infringement. Often agreements are reached between the parties as to how to use each other’s brands, but agreement is not necessarily essential where you are using a third party brand to refer to the genuine product.

2. Diversification of sports broadcasting

Broadcasting in general has long been moving towards a digital delivery platform with the likes of Netflix and Amazon Prime. Digital platforms and Amazon Prime in particular, have begun to move into the world of live sports broadcasting. Use of a digital platform gives the user more freedom to choose and the current cessation of sporting events caused by Covid-19 and the restriction on attendance may give a significant boost to the digital platforms.

For example, the Premier League licenses broadcasting rights to Sky and BT Sport and the deal includes provisions to limit the number of games televised live and the time that they can be shown to protect attendances at matches and the experience it brings. However, for now those restrictions no longer have any benefit for the Premier League or the clubs.

As widely reported in the media the government requested that at least some of the remaining fixtures be broadcast on free to air channels forcing the Premier League to renegotiate with their existing media partners BT Sport and Sky. Subsequently, the BBC has announced that they will be showing a number of live matches.

IP considerations for sports broadcasting rights

The deal is no doubt complex, but at the centre of it are the rights to broadcast, an intellectual property right which has been licensed for a significant amount of money. The Premier League, Sky and BT Sport have had to re-evaluate the benefits of their existing licensing deals and look at how best to move forward given the current restrictions. It is of course in their interest that the Premier League remains a valuable commodity with supporter engagement. Undergoing a digital transformation to utilise digital platforms has clear advantages in terms of ease of access and reaching a wider audience.

Its not all about broadcasting rights, brand no doubt plays a part. Refusing to let fans access games would have been very harmful to the brand image and equity of the right holders.

Just because a license relating to Intellectual Property rights has been agreed it does not mean you have to live with it. It is always worth reviewing and discussing your existing agreements to see if they are still effective and to see if they can be altered for the benefit of both parties. This should be part of a regular IP audit that is conducted by your IP advisor.

3. Innovative/Exciting brand collaborations

Digital transformation can of course be a costly exercise and take time. One way to reduce both initial cost and speed of execution is to collaborate with existing technology. Some brand collaborations are obvious and easy to execute, for example, many restaurants are currently unable to accept customers on their premises and lack the infrastructure for deliver so they opt to work with Deliveroo, Uber Eats or other delivery providers. The model is tried and tested, and they can sign up to standardised agreements over use of each other’s respective brands.

Other brand collaborations have been a little more surprising but no less successful. The live music industry is facing a difficult time due to Covid-19. Whilst artists are able to broadcast live on channels such as YouTube or Facebook, one collaboration that caught our eye was that of Travis Scott and Fortnite.

Bringing together a hugely popular avatar-based game and a famous artist has clear benefits for both parties. Fortnite are able to deliver an immersive platform that goes far beyond video performance along with a very large fan base of their own, whereas Travis Scott brings his own fanbase and brand value to the collaboration. The result is a new audience for each collaborator and an enhanced reputation for thinking outside the box to deliver for fans. It also opens up new revenue streams, the Travis Scott ‘skin’ is currently available for 1,500 V-Bucks within Fortnite, once you have completed the requisite challenges.

Whilst the Travis Scott Fortnite concert was not the first in game concert the increase in viewing figures, estimated in excess of 12 million, no doubt owes something to the lack of live music available, but collaborations of this nature are by no means limited to a world without live music. Being able to reach a global audience as a way to capitalise on your brand value it a well-trodden path, but currently the digital world offers the quickest and most cost effective route for doing so.

IP considerations for brand collaborations

The Travis Scott and Fortnite collaboration brings together two well known brands, each with the aim of enhancing their own brand and benefitting from new revenue streams. Consequently, a detailed collaboration agreement clearly defining how each brand is controlled and represented will be required. Whilst there are many benefits to collaboration, there are also risks so you need to ensure that adequate controls are in place to minimize the risk of damage to your brand.

In addition, you do need to ensure that you are free to licence your brand in the relevant territory. It’s also a good opportunity to review the scope of your IP protection, both geographically and in relation to the goods and services covered to ensure you get the most from any such agreement. You should also try and anticipate how the collaboration, or other such collaborations might develop to give you an adequate opportunity to secure the necessary rights.

4 key digital transformation and IP challenges

The reason for many brands in embarking on digital transformation is the ability to reach a wider audience in the shortest most efficient way possible. As a brand owner please consider the following IP challenges you are likely to face:

Speed of implementation – The product or service will often move much more quickly than the IP protection mechanisms. Make sure you carefully assess and understand the risks to your brands IP rights before proceeding.
The global audience – Reaching a global audience is a wonderful thing, but this does mean that you are now dealing with a multitude of different laws and regulations. Make sure you carefully assess what your key markets are and focus the most resource on these to ensure an appropriate level of IP protection.
Moving into the unknown – Not all digital transformation goes exactly as planned. Often new opportunities will arise in the process and the direction of travel can change. Make sure you review your IP protection strategies as the project develops to ensure they are fit for purpose.
Collaboration – is both exciting and can bring about huge benefits quickly and easily. Make sure you take time to think about whether collaboration is right for your business and work hard to develop and understanding an agreement that protects your brand value and safeguards your business long term.

Above all, select an IP advisor that will work collaboratively with you so that you can maximise the potential of the digital transformation strategy that is right to grow your brand.

We create real IP value

Author Matt Sammon

The term Chartered Trade Mark Attorney is often misunderstood, and there is a lack of readily available information surrounding the role, qualifications and the benefits that a good Trade Mark Attorney can bring to your brand. In this article we discuss what a Trade Mark Attorney is, the role that we have, and the way to identify a good Trade Mark Attorney.

What is a Trade Mark Attorney?

In short, a Chartered Trade Mark Attorney is a specialised legal practitioner in the areas of trade marks, copyright and designs, which collectively fall under the umbrella of Intellectual Property.

A Trade Mark Attorney is not a Solicitor, although some do qualify as both. Most Trade Mark Attorneys and Solicitors will have a law degree, but from there, the similarities end.

There are a number of different qualification routes for a Solicitor, however currently the most common route will be to undertake the Legal Practice Course (LPC), and then undertake a two year training contract, during which they will generally take four “seats” in different departments which may, or may not, include Intellectual Property. (Although it should be noted that the solicitor qualification route is undergoing a dramatic change with the introduction of the SQE in the not too distant future).

In contrast, following graduation, a Trade Mark Attorney specialises in three of the four key areas of Intellectual Property – trade marks, copyright and designs – right from the start, and does not focus on any other area of the law. Trade Mark Attorneys undertake two specialised post-graduate qualifications in Intellectual Property law and Intellectual Property practice, and all experience that they gain during the training process is solely in respect of these three key areas of Intellectual Property.

A practicing Trade Mark Attorney is regulated by the Intellectual Property Regulation Board (IPReg) and not the Solicitors Regulation Authority (SRA). In 2016, the Institute of Trade Mark Attorneys was awarded a Royal Charter, enabling Trade Mark Attorneys to use the title “Chartered Trade Mark Attorney”, demonstrating the specialised expertise, trust, skill and quality of service Trade Mark Attorneys provide.

What does a Trade Mark Attorney do?

A Trade Mark Attorney will advise you on all aspect of trade marks, copyright and designs. We will help you to formulate an Intellectual Property strategy, we will identify potential areas for protection, we will assist you in the protection of your Intellectual Property, and we will help you to defend your rights and legal position against third parties where required.

In the UK, Trade Mark Attorneys are qualified to represent you before the UK Intellectual Property Office, the European Union Intellectual Property Office and the World Intellectual Property Organisation in respect of trade marks, copyright and design matters. We are experts at navigating the various different protection systems throughout the world, and are qualified to litigate in the courts on your behalf, although many will also engage the services of experienced litigators in this process.

Where does a Trade Mark Attorney work?

You can find a Trade Mark Attorney in lots of different places. Some will work in private practice for specialised Intellectual Property firms, whereas others may be employed in full service law firms within the Intellectual Property department.

Trade Mark Attorneys in private practice will work with a vast array of different clients in different commercial sectors from fashion, retail and FMCG to banking, gaming, pharmaceuticals and automotive. Trade Mark Attorneys in full service law firms will commonly advise on the Intellectual Property aspects of larger commercial deals within the corporate and commercial teams.

Trade Mark Attorneys can also work inhouse, typically for brand heavy organisations, where they will fulfil the same role, but in a more specific commercial area.

Trade Mark Attorneys will work with a wide range of different departments within an organization. We will deal with marketing teams who are developing new brands and marketing campaigns, slogans and straplines, we will deal with management teams to formulate Intellectual Property strategies, and we will deal with legal departments to assist in the legal clearance, protection and preservation of their Intellectual Property.

Do I really need a Trade Mark Attorney?

Trade Mark Attorneys are highly specialised, and have an in-depth knowledge of the complex systems that make up the worldwide network of Intellectual Property protection.

A good Trade Mark Attorney will be able to discuss your needs with you at the outset, and will be able to make recommendations based on their knowledge and experience to guide you in the best direction. A good Trade Mark Attorney will be able to identify ways and means of improving your Intellectual Property protection, and will be able to advise on best practice in Intellectual Property strategy.

Taking the time to discuss your needs with a Trade Mark Attorney in advance of taking action will arm you with best possible knowledge and strategy for your brand, whether you are a start-up, an established brand, or an international corporation.

How should I choose my Trade Mark Attorney?

Take a look at our earlier blog on choosing your Intellectual Property firm which will guide you towards the right IP solution or services for your brand.

Your Trade Mark Attorney should take the time to discuss your needs with you and to understand your business and your aims. A good Trade Mark Attorney will identify the issues that are specific to you, and will be able to advise you accordingly. For example, a tech start up will have very different needs for meeting their vision and strategy for their brand compared to, for example, an established retail enterprise looking to expand or develop their service offering, or looking to conduct an Intellectual Property audit.

Finding an affordable Trade Mark Attorney

A good Trade Mark Attorney will understand your budget and will be able to advise you on the most suitable methods of protection to fit within your strategy and your budget. Pricing should always be transparent and clear, and should meet your needs. Your Trade Mark Attorney should be willing to discuss various different pricing models with you to ensure that you select the best option available to you – in current commercial settings, hourly-rate billing is very rarely the best fit for you as the client.

At Sonder & Clay, we take a refreshing approach to fees and provide straightforward, strategic IP advice that is tailored to each of our client’s business needs and goals. When comparing Trade Mark Attorneys consider them from a value for money perspective rather than solely cost, cheap is not always effective and, expensive doesn’t always mean quality.

When you have found a good Trade Mark Attorney, they will quickly become your first telephone call when a new brand, marketing campaign or commercial offering is being considered, and they will embed themselves in your internal teams, becoming a trusted advisor whose advice is indispensable when considering Intellectual Property strategy and in the preservation of your rights. A good Trade Mark Attorney will become a great asset to your brand for a very long time.

We create real IP value

Author Matt Sammon

When it comes to Intellectual Property, design rights and registered design protection are commonly underutilised and undervalued. It is not only possible, but very cost effective to secure design protection and doing so can give your business a valuable IP right and ensure a significant commercial advantage on which to propel your business forward.

For many businesses its second nature to protect their trade marks or inventions but in our experience more time and consideration should be directed to considering and securing design protection. Many businesses put a great deal of time and energy into designing attractive products that will attract customers, so why not protect that investment. In this article, our IP specialists discuss the importance of design rights and how your brand can protect its design(s).

What does design protection cover?

Design protection allows you to secure protection for the look and appearance of a product. In the UK and the European Union a design is defined as:

‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’

This is a very broad definition and in layman terms it means the look and feel of your product can be protected. Designs can be both 2 or 3 dimensional and might typically include:

The shape of a product or its packaging such as a unique tyre tread, the shape and contours of a phone, the shape of a bottle
The pattern applied to a product, such as a wallpaper design, textile pattern, decorative phone cases

There are certain aspects that are excluded from protection, which include:

Aspects of a design that are not visible during normal use of a product
Designs that are solely dictated by technical function
Designs that must be reproduced in their exact forms and dimensions in order to permit the product to be connected to or placed in, around or against another product so that either product may perform its function

In addition, in order to qualify for protection a design must be ‘new’ and have ‘individual character.’ To meet these criteria a design has to be different from designs that currently exist in the marketplace, which includes your own designs.

Whilst a design has to be ‘new’ in order to qualify for protection, there is a grace period for UK and EU design applications which means that you potentially have up to 12 months to file a design application after you first put that design into the public domain. However, it is best practice to file a design application before you make the design public so that you are protected from day one, a specialist IP firm like Sonder & Clay can support you with your application.

How can you get design protection?

There are 2 types of design protection in the UK and EU:

Unregistered design right
Registered design protection

Unregistered design right

Unregistered design right arises automatically when a new design is created and the right is owned by the creator, or in the case where an employee creates a design in the course of their employment, the employer.

Unregistered design right is not a strict monopoly right but does afford protection against direct copying of your design. If your design has been copied and the copy ‘does not create a different overall impression on the informed user,’ then there may be a case for unregistered design right infringement meaning that you can take action to prevent the continued copying of that design.

UK unregistered design right will last for 15 years from the creation of the design, or 10 years from when the design is first marketed, whichever is the shorter.

EU unregistered design right will last for 3 years from creation. However, it is important to note that once the Brexit transition period ends on 1 January 2021 EU unregistered design right protection will no longer be valid in the UK. EU unregistered design right protection that exists before 1 January 2021 will continue to be protected for the remainder of its term by an equivalent UK right.

As there is no formal registration process the main benefit of unregistered design right protection is the fact that there is no cost involved, however, it is important to keep good records of when and where a design was created and by whom in order to evidence ownership.

Registered Design Protection

Unlike unregistered design right, securing registered design protection provides you with a strict monopoly right. This gives you the right to prevent use or reproduction of any design which ‘does not create a different overall impression on the informed user.’

In addition, registered design protection can last for longer, a total of 25 years, although renewal fees are payable every 5 years.

A longer lasting monopoly right is clearly superior to unregistered design protection, the only downside being that there is a cost involved in securing protection. However, both the UK Intellectual Property Office and the EU Intellectual Property Office allow the filing of ‘multiple’ design applications for a reduced filing fee. This means that you can secure protection for several designs in a single application.

If you plan your filing carefully you can secure valuable protection and minimize the costs.

Failure to secure registered design protection can result in a much shorter period of protection and a weaker right limited to direct copying, so we would advise you to discuss any new designs with your IP advisors to devise the most appropriate protection strategy to suit the commercial importance of the design and your budget for protection.

Recommendations

Focus on protecting what is most valuable to the business and what will give you the greatest commercial advantage. This can be hard to navigate when confronted by the different types of IP protection afforded by designs, copyright, trade marks and patents.

It’s important to identify what aspects of a product or service are unique to your business and discuss the most appropriate form of protection with you IP advisors. Don’t be afraid to discuss budgets for IP protection to allow your advisor to develop a suitable strategy that utilises the different forms of design protection, both registered and unregistered, to make sure that you are in the best position possible to defend your rights and ensure maximum commercial gain.

We create real IP value

Author Rachel Nicholls

As IP specialists, it always surprises us that many businesses do not seem aware of the financial and commercial value of their Intellectual Property, and whereas every business has a business strategy, many do not include a dedicated IP strategy. This can often leave IP as simply an expense on the balance sheet, when in actual fact with a proper IP strategy in place, your IP can deliver a real return on investment, providing a framework for the use and exploitation of your IP.

According to a 2017 Intellectual Property Office (IPO) report, Hidden Value: A study of the UK IP valuation market, Intellectual Property (IP) makes up a significant proportion of a business’ value. Quoting research by the Brookings Institute and Ocean Tomo, the report states that more than 80% of enterprise value attributed by the stock market is based around intangible assets, and that in 2011, the UK market sector invested £137.5bn in intangible assets compared to £89.8bn in tangible assets; of this, £65.6bn – around half of intangible assets – is thought to have actual or potential protection through the use of formal intellectual property rights.

What is IP strategy?

An IP strategy is simply a considered plan for the acquisition of intellectual property, the protection of IP, including monitoring and enforcement, and a system for leveraging the most value possible from existing Intellectual Property assets through exploitation. An IP strategy should be consistent with the goals and aims of your business, and as your IP is a business asset, the value of that asset can only be determined and measured against investment through the use of a defined IP strategy.

Companies with an active IP strategy will consistently outperform their competitors, and yet many companies do not measure the performance of their IP against competitors or market leaders. Failure to have an adequate IP strategy in place can leave your business unprotected, with a much lower business value than it could achieve.

Your IP is a valuable business asset

The recent IPO report identified that in today’s “knowledge-based, innovation-driven economy, intangibles such as IP are accounting for an increasing majority of company value”. According to the report, approximately 70% of a typical company’s worth lies in intangible assets, and this percentage is steadily increasing. However, the report offers a stark warning that “although the contribution made by intangible assets is now widely acknowledged, prior research by the Intellectual Property Office and others has suggested that this value is still not visible to many business managers, raising concerns that the costs of innovation are not being appropriately balanced by a clear appreciation of the returns it produces”

Who is responsible for IP strategy?

Taking the time to put in place an effective IP strategy, involving every part of your business will overcome this problem. Involving all meaningful parts of your business, along with relevant decision makers, into the development of your IP strategy will ensure that everyone within the business is on board with the strategy, and knows the value that the strategy will have for the business. Your IP strategy should involve and consider all aspects of your business from design and marketing teams, to legal teams, to financial teams, decision makers, board members and those who hold the budgets. This is the only way that your IP strategy can really support and enhance your business goals.

4 key benefits of an effective IP strategy

Business valuation and ROI – An effective IP strategy ensures that your IP adds to the value of your business. With more and more balance sheets including intangible assets, your IP will add significant value to your business provided that resources are put to the best use and your IP strategy is enforced. Protecting IP can sometimes seem an expensive process, however an effective IP strategy will ensure that only necessary costs are incurred, and that the value of the resulting IP rights significantly outweighs the cost, bringing an effective return on investment.

Tip! For a measurable return on investment and value analysis, consider your business structure – it may be worth setting up an IP holding company which will own your IP but licence its use back to the active entity. This way, the value of your IP assets, by way of licence fees and royalty payments is reflected on the balance sheet of the IP holding company and also on the balance sheet of the active trading company.

Safety – Your IP strategy will ensure that your valuable assets are preserved and maintained. Your strategy will identify protections required, and will set out monitoring and enforcement protocols to ensure that not only is your IP protected, but funds are directed in the best way. An effective IP strategy, wherein new IP is detected, cleared and protected, also ensures that you are able to trade safely without fear of third party conflict, thereby protecting your other product and brand expenses and investment.

Consistency – Ensuring that you have an IP strategy in place, and communicating that strategy throughout the business, ensures consistency in approach and the handling of IP. It means that there is no wasted expense on unnecessary protection, but that all valuable IP is identified and protected, and the entire business has a consistent and joined up approach to IP.

Business goals – A good IP strategy should use your valuable intangible assets to support and meet the business goals. If your IP strategy does not support business goals, then it is difficult to demonstrate the value of the IP. Indeed, if the resulting IP does not assist your business in reaching your business goals, then it may be that the IP acquisition was not worth the expense, making IP simply an expense rather than an asset.

How to develop an effective IP strategy

The purpose of your IP strategy is to enhance your business goals and should be devised in collaboration by a specialist in innovative IP strategies. Before you appoint an IP specialist please consider the below distinct steps:

Observation – In order to identify the impact that your corporate IP strategy can have on the realisation of your business strategy, it is worth observing external trends. Consider your market and understand the impact of IP on that market. Look at technological advances that are relevant to your market and consider the needs of your particular consumer or those whom you wish to target. What are your competitors doing with their IP in order to meet those needs and targets?

Goals – Next assess your business goals and identify how your IP can enhance your business strategy. For example, if you are looking to increase market share, how can your IP help you to do this? Do you intend to branch out into different market sectors, or are you considering collaborations, brand ambassadors or maybe you are considering adapting your service delivery model, perhaps to take more advantage of the online and digital sectors? For further inspiration, take a look at our recent blog on digital transformation and the impact this is having on IP here.

Evaluation – In this stage you need to understand how IP can add value to the process of meeting your goals. Take the time to conduct an IP audit, which will go a long way to revealing where your IP may need some work in order to support your business strategy.

Protection – Following your IP audit, you can determine whether your IP protection is sufficient for the purposes of your IP and business strategies. It is likely that you will have identified areas requiring some work – take the time to find a good IP specialist who understands your business and goals. Read our guidance here on choosing an IP firm that is right for you. A chartered trade mark attorney can advise in detail on your IP strategy and the methods for obtaining the right kind of protection for your IP. Your IP advisor should always ensure that your IP protection adds more value than cost to your business, and supports your IP and business strategies.

Exploitation – Your IP strategy doesn’t stop when you have secured your IP protection. On the contrary, it is only once you have secured your IP that you can then move into realising the return on investment that you have made. An IP exploitation strategy enables you to enhance your business goals. For example, consider whether the licensing of your IP could add significantly to your income streams, and whether your IP can be exploited through collaborations and brand ambassadors. Now that you have your brand strategy in place your IP will consistently add value to your business, and will ultimately add to the bottom line when looking for investors or maybe purchasers.

Defence – There is only value in securing IP if part of your strategy is to defend those rights. Failure to prepare a defensive IP strategy will ultimately render your IP strategy ineffective in terms of adding value and return on investment. It is important to monitor your IP and ensure unauthorised use is not left untackled. Ensure that effective monitoring strategies are in place and communicated throughout the business.

Evolution – Your IP strategy, just like your business strategy, should not stand still. A solid foundation for your IP will ensure that your IP is equipped to adapt and evolve with your IP strategy and business goals. Continue to conduct regular IP audits, and continue to discuss your business goals with your IP advisor who will be able to point out where your strategy may need to adapt to meet your changing goals. Ensure that your IP strategy is communicated throughout the business, and make it part of your onboarding protocol for new staff in relevant teams. Ensuring that you have continued buy in from all aspects of the business will ensure that your IP strategy is as effective as possible.

4 major risks to your brand

Brand’s that don’t have an effective IP strategy in place are likely to be vulnerable to the following risks:

Unnecessary expense: The lack of an effective IP strategy can mean that funds are being directed to the wrong place, either in the form of inappropriate IP protection, or expensive enforcement actions which do not support the business goals. This can result in IP being simply a cost rather than a valuable asset.
Lack of consistency: Your IP strategy will ensure consistency across the business in terms of the handling of, and dealing in, your IP. Without an effective IP strategy, the business will suffer from lack of consistency, resulting in a scattergun approach to protection and enforcement.
Loss of market position: Market leaders always have a handle on their IP strategy, and the protection and enforcement strategies are widely communicated throughout the business, consumers and competitors. A lack of IP strategy weakens your market position and allows a higher level of competition.
Loss of business value: An effective IP strategy will add value to your business. An ineffective or non-existent IP strategy will mean that you will find it difficult to establish the return on investment, and your IP will not therefore strengthen the value of your business. Failure to identify and protect valuable IP assets will result in competitors taking advantage, or worse, taking the market lead ahead of you.

We create real IP value

Author Matt Sammon

When brand owners or businesses consider their IP and the laws that protect it they typically just think of the four pillars of intellectual property: trade marks, copyright, patents and designs. Whilst these are the core areas of protection for your intellectual property, there are other IP laws that come into play, sitting alongside these key areas, and knowledge of these other areas can strengthen your IP strategy and your position as an IP owner.

In this article we are going to look at the following areas of Intellectual Property law and examine the role they play for businesses like yours:

Comparative advertising
Parallel imports and exhaustion of rights
Database rights
Fair Dealing in Copyright works

Comparative Advertising

What is it? Comparative Advertising is essentially when one company uses another company’s trade mark, most likely a direct competitor, as a barometer against which to measure their own goods or services in terms of one or more features, for example quality, price or availability.

How is comparative advertising used?

This issue therefore feeds into broader trade mark infringement matters. This use may either be explicit, for example when supermarkets advertise the cost of their “typical” basket as being cheaper than one of their named competitors. Or alternatively, the use may be by implication, for example when the competitor is not expressly named, but it is clear from the terminology or references used who is being referred to.

Comparative advertising is permitted in the UK, and you cannot complain about the use just because you do not want anyone else to compare their products with your own. Likewise, your competitors cannot complain if you want to make such comparisons. It is, afterall, a basic advertising need to be able to claim that your product is better/cheaper/more efficient than a competitor.

However, there are numerous standards that an advert must comply with in order to be considered acceptable comparative advertising, and failure to stick within these standards can land companies in deep water.

Lidl vs Tesco Typical Basket Price Comparison Campaign

For example, in a recent dispute between Lidl and Tesco, Lidl compared their “typical basket” of own label products with a “typical basket” of branded products on offer by Tesco. Particularly amusing was that Lidl had included within their basket an own label fizzy wine, and “compared” that with a bottle of Moet Champagne in the Tesco basket. Unsurprisingly, this was not viewed by the Advertising Standards Authority (ASA) as a fair comparison, who understood why Tesco had been concerned by the comparison. Although Lidl had included some small print in the advertisement suggesting that Tesco may have some alternative unbranded products available, this was deemed insufficient.

In order to avoid falling foul of comparative advertising provisions, the advert in question must adhere to some basic principles:-

The advert SHOULD make a “like for like” comparison: the goods or services being compared must meet the same needs or must be intended for the same purpose
The advert SHOULD objectively compare at least one material, relevant, viable and representative feature – for example, the advert should contain up to date price information and should state the date of the price comparison
The advert SHOULD be based on, and supported by, verifiable data – the information contained within the advert must be sufficient for the consumer to be able to make a proper comparison, and verify that data should they choose to do so
The advert SHOULD NOT mislead the consumer
The advert SHOULD NOT discredit or denigrate the trade marks, trade names, other distinguishing marks, goods, services or activities or other circumstances of any competitor
The advert SHOULD NOT take advantage of the reputation of a trade mark or create confusion with a competitor

If you intend to use a competitor’s trade mark in your own advertising, we recommend that you seek advice from your trade mark attorney who will be able to advise the best way to do this.

Exhaustion of Rights and Parallel Imports

What is it? Exhaustion of rights refers to a specific limitation on your IP rights. Essentially, you are able to control the first sale of your trade marked goods within a particular economic area, but after those goods have been put on the market, you lose the right to control the resale or further commercial exploitation of those goods within that same economic area. An economic area may be an individual country, or it may be a collection of countries, for example the European Economic Area (EEA).

A parallel import is a non-counterfeit, genuine trade marked product which has been put on the market by the trade mark owner, or with his consent, and has then been imported to a different country without the brand owner’s consent. Whether or not a parallel import is permitted depends upon whether not the rights of the trade mark owner have been exhausted.

The issue of exhaustion of rights and parallel imports has always been a particularly contentious matter. IP owners with an interest in protecting their trade marks find themselves locked in battle against those who believe that parallel trade is good for consumers because it enables competition.. They are also of the view that government controls and exchange rates are beneficial to parallel trade, which leads to lower profits which in turn does not encourage investment in crucial research and development, particularly in the incredibly costly pharmaceuticals sector.

How does this issue affect brand owners in the UK and Europe?

Pre-Brexit

Before Brexit, the UK was a member of the EEA, meaning that the UK and the rest of the EEA member countries made up one economic area. Through its membership of the EEA, the UK enjoyed a reciprocal arrangement with all EEA member countries in respect of exhaustion of rights and therefore parallel imports.

If a trade mark owner placed genuine goods on the marketplace in the UK, he had exhausted his rights in the entire EEA, and could not prevent the parallel import of those goods into any other EEA country. Likewise, if genuine goods were put on the marketplace in France for example, the trade mark owner had exhausted his rights throughout the entire EEA, and could not prevent the parallel import of those goods into the UK.

Post-Brexit

In The Intellectual Property (Exhaustion of Rights)(EU exit) Regulations 2019, the government has indicated that the present EEA exhaustion system will be retained to the extent possible.

This essentially maintains the status quo in the UK, but has no impact on the position in the EEA, unless the UK can reach a separate deal with the EU on the issue.

Therefore, post-Brexit, if a trade mark owner places genuine goods on the marketplace in France, the UK will honour the principal of EEA-wide exhaustion, and the rights owner will not therefore be able to take action against the import of those genuine goods into the UK.

In contrast, the EEA countries will not be required to honour EEA-wide exhaustion for goods coming from the UK, and as such, where genuine goods are put on the market in the UK, the rights owner will not be deemed to have exhausted his rights in the EEA, and may take action against the parallel import of those genuine goods into France, or any other EEA country.

As the issue of EEA exhaustion of rights is changing post-Brexit, it is important for brand owners and parallel importers to consider their position in the UK and EEA to ensure that they do not fall into the trap of continuing to do something which could now be prohibited.

There are some specific exceptions to the principal of exhaustion of rights, in particular where the condition of the goods has been changed or impaired. If you believe that you have been impacted by this issue, get in touch with your trade mark attorney who will be able to advise you further.

Database Rights

What are they? Under the Copyright and Rights in Databases Regulations 1997, the term “database” is defined as “a collection of independent works, data or other materials which are arranged in a systematic or methodical way and are individually accessible by electronic or other means.” This is a broad definition, and applies to all manner of traditional mailing lists, directories and encyclopaedias and also databases in electronic versions.

How can database rights be used?

Database rights are automatically generated rights, and there is no formal application or protection route. Database rights go hand in hand with copyright protection.

Database Rights enable the owner to prevent the unauthorised extraction (the transfer of the contents to another medium by any means or form) or re-utilisation (making the contents of a database available to the public by any means) of all or a substantial part of the contents of the protected database.

As the owner of a database, you should consider whether you are better placed relying on copyright protection and its subsistence and infringement requirements or whether database rights may provide the protection that you are looking for, as there are some key differences in the protection provided.

For example whereas copyright protection requires originality, database rights require “substantial investment” in terms of quantity, quality, or both, which can be financial, human or technological. Whereas copyright protection lasts for the life of the author plus 70 years, database rights last for 15 years from the end of the year in which the making of the database was completed (with some exceptions around the issue of publication and substantial alteration of the database).

Crucially for many consumers, a copyright work that has been commissioned will belong to the commissioned party unless there is an agreement to the contrary. In contrast, where a database is commissions, the commissioner will usually be deemed to be the owner.

Fair Dealing in Copyright works

What is it? Copyright is an automatically arising right in the UK meaning that it has no formal application or protection route. Copyright subsists in the physical manifestation of an original, independently created work, although that work does not need to be visually appealing.

Copyright protection entitles the owner to prevent the unauthorised copying of the whole, or a substantial part, of the copyright work.

How is fair dealing in copyright works used?

The concept of fair usage in UK copyright law is a framework designed to allow the lawful use or reproduction of work without having to seek permission from the copyright owner(s) or creator(s) or infringing their interest. Fair use law applies to musical, dramatic, artistic, literary and typographical works too. However, it does not cover the copyright of printed music.

Although a formal definition of fair dealing does not exist in legislation, the UK Intellectual Property Office (UKIPO) identifies the following factors which should be taken into consideration:-

Has the use of the work impacted negatively on the market for the original work? A clear example here would be if the owner of the copyright work has lost potential revenue as a result of the use of their work, which would clearly fall outside fair use
Was it reasonable and necessary to use the amount of work that was taken? If more of the copyright work has been used than was necessary, it is unlikely to be viewed as fair use, for example reproducing an entire poem for the purposes of referring to only one line from that poem

The Copyright, Designs and Patents Act 1988 lists some express examples where fair dealing is likely to apply, for example personal use, private study, text and data analysis, critique or review, quotation, reporting of current news events, and parody, caricature and pastiche. Most of these examples carry provisos, for example, the use must not be for commercial use, or there must be a sufficient acknowledgement where appropriate, or the extent of the use is no more than is required for the specific purpose.

Your trade mark attorney will be able to discuss your proposed use with you and will be able to advise what permissions you may require. Likewise, as the rights holder, your trade mark attorney will be able to advise on provisions that you should put in place to preserve your rights and ensure that your copyright work is not inappropriately used under the guise of fair dealing.

We create real IP value

Author Matt Sammon

Trade Marks and Copyright are both types of Intellectual Property that are important and valuable to most businesses. Trade Mark law and Copyright law differ significantly, but both serve to protect the assets of your business.

In this article, we’ll look at Trade Marks vs Copyright to understand what they have in common, how they differ and how you can best utilise each for the benefit of your business.

What is a trade mark?

A trade mark is a badge of origin and is used to identify the goods or services supplied to the consumer. More commonly this is the name of a business or product, but also includes logos, sounds, colours and moving images. For more information on what you can register as a trade mark see our earlier blog.

What is copyright?

Copyright protects the expression of your ideas. It does not protect the idea itself but does protect the physical manifestation of that idea. Copyright can protect artistic works, literary works, sound recordings, films, photographs and typographical arrangements.

Typically, copyright will subsist in your website content, marketing materials, advertisements, contracts, artwork, packaging design, logos and instruction manuals.

What are the main differences between trade marks and copyright?

1. How to get protection

In order to benefit from trade mark protection you need to formally register your trade mark via the Intellectual Property Office. Trade Mark rights are territorial in nature so you need to register in each country in which you desire protection.

The process will take 4 months in the UK and may take up to several years in other countries, during which the trade mark will be examined to ensure it complies with the law as to what can be protected, and in some countries the trade mark will be assessed against existing registrations. However, once registered a trade mark can provide protection indefinitely, provided that you renew the registration periodically (typically every 10 years).

Copyright protection arises automatically and there is no registration system in most countries (China being a notable exception). To ensure you can benefit from copyright protection it is important to keep good records of when work is created and who it is created by and be able to prove these points.

2. Scope of protection

Registered trade mark protection provides you with a monopoly right, meaning that you can prevent others registering or using a trade mark that is confusingly similar, even if they are aware of your trade mark. This provides a powerful tool to ensure that your trade mark remains distinctive in the marketplace and can give you a significant commercial advantage.

Copyright is not a strict monopoly right and will only protect you against those that directly copy your work. If they come up with a similar work independently then you may not be able to take any action to prevent their use of that work.

3. Ownership

In the UK, the first to file a trade mark application with the UK Intellectual Property Office will be the owner of the rights granted in that mark, although if you have significant prior use of a mark you can potentially challenge a registration. The key point is that it is important to file an application as soon as possible for any trade mark that you want to own.

Copyright ownership rests with the author of the work in question, unless there is an agreement to the contrary, except where the work is created by an employee in the course of their employment, in which case the employer will be the owner of the copyright.

It is important to note here that if you use an outside agency, such as a design agency or freelancer then they will own the copyright unless there is an agreement to the contrary, so where you commission work it is important to ensure that ownership of any copyright is properly assigned to you.

4. What does it cost?

There is a cost to registering your trade mark(s). Each Intellectual Property Office will charge a fee for registration and it is advisable to seek the assistance of a Chartered Trade Mark Attorney who can help you secure registration and show you how to use it to your competitive advantage.

You will also be required to pay fees to maintain a trade mark registration, typically every 10 years.

If you would like an estimate for registering trade marks then please do contact us so that our team of IP specialists can advise you on the best way forward to protect your brand.

As copyright arises automatically, there is no cost to copyright protection in most countries. However, you do need to be able to prove that you are the owner of the copyright, so again, it is important to keep good records of when the work was created and who created it.

5. How long does protection last?

The period of protection for trade marks depends upon the country in which your trade mark is registered, but for the majority of countries the initial period of protection is 10 years. You can then renew the trade mark and ultimately benefit from indefinite protection, although some countries, such as the USA, will require you to prove that a trade mark has been put to genuine use in order to maintain your registration.

The period by which you are protected by copyright depends on the type of work created, but typically lasts for 70 years from the end of the year in which the author dies. After this the work will become open source.

How do major brands use trade marks and copyright?

Smart brands and businesses whatever their size protect their trade marks and copyright, and they use them to their competitive advantage in their respective market places. Apple and Cadbury are a couple of the world’s biggest and most successful brands with an extensive portfolio of products that need protecting to stop others from copying and profiting from them. Let’s look at how they do this in more detail.

Apple’s use of trade marks vs copyright

What are their trade marks? APPLE, iPhone & . Some of the icons may also be protected by trade mark registrations

What is their Copyright? Operating software, icons, instruction manual, wallpaper &

Cadbury’s use of trade marks vs copyright

What are their trade marks? Cadburys, Dairy Milk, the colour purple (pantone 2865c) &

What is their Copyright? Overall packaging design, Cadburys font &

NB: The Fairtrade logo is not owned by Cadburys, but is used as a registered certification trade mark, for which permission is required.

The difference between copyright and trade marks for brands

Both trade marks and copyright can provide valuable rights to protect your business and it is important to consider the scope of protection, cost and length of protection and value when considering which is the most appropriate. Often, a blend of both is required and protecting your businesses valuable IP assets is an important step towards achieving long term business success.

At Sonder IP, our Chartered Trade Mark Attorneys are experts at reviewing your IP and providing guidance on what to protect and how to protect it.

We create real IP value