Intellectual Property

Intellectual Property has always been important, particularly in the advancement of business, however, given the surge in technological advances, Intellectual Property has never been more important.

Intellectual Property [or as they are more commonly known “Intellectual Property Rights” (IPR)] take many formats. As a business, you shouldn’t underestimate the significance of IPR – in many cases your IPR can become a valuable business asset. For example, certain IPR has the ability to be exploited to help raise further finance (from the Bank or other external investors) as opposed to potentially having to provide a Personal Guarantee; it can be licensed out (enabling you to receive a royalty) to a manufacturer or used under a franchise license.

Undoubtedly, all of which will assist your business.

Given the various formats that IPR can arrive at, it is important to ensure that your Rights are as protected as they can be [because not all IPR is registrable]. IPR is not restricted to the commonly known IPR such as Trade Marks or Patents or Copyright but could even extend to certain methodology / processes that you may use (in day to day business) or your customer information. Undoubtedly, it will also include your reputation – your standing amongst your contemporaries and your competitors.

Not only that, it is important to ensure that you are the legal and beneficial proprietor of the IPR. Certain presumptions may be affected by the nature of the relationship with the person you contracted with. To not have the correct rights and ownership in place may well be significantly more costly than taking the steps to acquire those rights in the first place.

Whatever the size of business you operate, it is necessary to take the steps to try and protect and maximise your IPR as much as possible. The failure to do so may well put you in a position where you find it difficult to utilise and/or claim entitlement to your own IPR.

Our team of IP lawyers understand the value and importance of Intellectual Property Rights and so, have devised a questionnaire that we take you through enabling us to understand the full extent of your business which in turn enables us to offer guidance and navigation through common [and no so common] pitfalls of modern day business transactions thereby maximising your business opportunities and hopefully, generating a further and additional revenue stream for your business.

Our experience includes:
  • Licensing / Assigning / Selling of Intellectual Property Rights;
  • Commercial Arrangements;
  • IP Audits;
  • Prosecution of Trade Marks before UK and EU Intellectual Property Offices;
  • Intellectual Property Litigation before the relevant Intellectual Property Tribunal, the Intellectual Property Enterprise Court and the High Court.

A trade mark is one of the most commonly known and recognised Intellectual Property Right (“IPR”).

A trade mark (whether registered or unregistered) is most commonly the business tool companies use to distinguish their goods and/or services from those of another business. Trade Marks can have exponential value [both financially and from a customer recognition basis] and so, it is important to ensure that the Mark your business uses is properly protected.

Although there is no obligation to register a Trade Mark (you are free to utilise the TM as a means of identifying your brand) the reality is that this is not enough. In circumstances where a competitor utilises a Mark that is similar to or identical to your own, the burden is on you, as brand owner, to satisfy the “trinity” threshold
needed in respect of any dispute.

Achieving trade mark registration assists in eliminating this requirement. A registration certificate provides the “prima facie” evidence needed for a dispute and should, in reality, minimise the need for expensive and lengthy formal proceedings.

We obviously always suggest that where possible, trade mark registration is achieved.

Trade Marks are defined by specifications. There is no set limit as to how many specifications a Mark can have but ideally, in order to properly benefit from the protection and to enhance the Mark’s reputation, it is advisable to seek protection [under the specifications] for goods / services that your Company offers. Additionally, it is advisable to seek protection for the future goods and/or services that your Company may offer. That of course, is a business decision for you to consider.

Whatever your decision in that regard, it is important to ensure that your protection [as gained from the specification] is neither too narrow [because the narrowness in itself may limit any ability to claim infringement] nor too broad [because it can make the Mark subject to challenge by a competitor and that challenge may result in your Mark being lost and your business losing the ability to utilise it].

If your Trade Mark is used correctly, it has the ability to be exploited (whether through licensing, franchising or being used as security for raising capital) and so, as a business owner and importantly, a brand owner, you should take the steps to ensure that the Mark is properly protected.

The team at ehl Commercial Law is able to undertake a full audit of your Marks which will enable us to advise on issues such as to whether or not a trade mark can (or should) be registered, conduct searches in UK and European jurisdictions [or act as Agents where alternative jurisdictions are required], advise on validity, infringement and third party rights, bring or defend revocation proceedings against registered trademarks, draft license agreements or even file and update existing registrative protection in order to assess current (and available) IPR strengths.

Against that, whilst no-one likes to be involved in a formal dispute, given the potential value of your Company’s IPR, due to the experience accumulated across the last 30 years, our team of lawyers are able to advise of pre-litigation strategy, tactics and means of resolving disputes [whether before the High Court, the Intellectual Property Enterprise Court, the Trade Mark Registry, the Court of Appeal and Supreme Court].

Additionally, through our international partnerships, we are also able to litigate / defend matters in the General Court of the European Union, the Court of Justice of the European Union, the respective Courts of Hungary, Slovakia, Slovenia, Austria, Washington DC and the US Federal Courts.

Copyright is one of the main (and commonly known) Intellectual Property Rights identified under UK law [meaning that its principles are acknowledged across the different jurisdictions of the UK].

Within the UK, it is a “non-registrable” right [meaning that there is no requirement to register it in order to obtain protection]. Copyright exists and protects “original creative works”. Creative works are effectively works that can be expressed in one of the following ways:

  • Literary;
  • Artistically;
  • Musically;
  • Dramatically;
  • Sound recordings, Film /Broadcasts; and
  • Typographical arrangement of published editions.

Applying the above against day to day business, the copyright protection your business has may well cover items such as the programming, layout and content of the website; any marketing / promotional materials, articles [blogs, vlogs, etc.], photographs that your business may use. In essence copyright “does not protect the idea itself but the expression of the idea”.

Given that it is an IPR that has no requirement for registration, it is necessary to utilise the © symbol on any original works [along with other enforcement steps] to try and evidence the creation and originality of the protected works.

Copyright protection (for original works) is favourable. Subject to the ‘element’ against which copyright protection applies, the duration may well be the lifetime of the author plus a further 70 years. However, it is important to ensure that your protection is clearly identified and capable of being enforced and so, as a business, you need to identify who actually owns the © in the works copyright is being claimed against.

The team at ehl Commercial Law is able to assist in all element of establishing what copyright protection your business may have, how to exploit the same efficiently as well as ensuring that it is properly protected. When disputes arise, given the potential value of your Company’s IPR, due to the experience accumulated across the last 30 years, our team of lawyers are able to advise of pre-litigation strategy, tactics and means of resolving disputes [whether before the High Court, the Intellectual Property Enterprise Court, the Copyright Tribunal, the Court of Appeal and Supreme Court].

Additionally, through our international partnerships, we are also able to litigate / defend matters in the General Court of the European Union, the Court of Justice of the European Union, the respective Courts of Hungary, Slovakia, Slovenia, Austria, Washington DC and the US Federal Courts.

Effectively, a Patent is a time restricted monopolistic protector of “technical advances” in respect of how things work, what those products may be, how that product may be made or even, its day to day implementation.Patents are territorial rights. This means that if you achieve a Patent in the UK, then the protection afforded to you (as Patent Owner) is restricted to the UK jurisdiction. If you want further jurisdictional protection, then respective patent applications must be made.

Obtaining a patent is both a costly and time consuming affair. In order to determine whether or not your “invention” qualifies for patent protection, it is necessary to consider the following:

  • Is the “invention” unique – specifically, is it entirely new and never been seen anywhere in the world [before the date of the Patent application];
  • Does it have the “inventive step” – is the invention the new stage that enhances something or is it obvious when comparable to what is already known by a person with knowledge and experience of the subject matter;
  • Can it be used industrially – does it have a practical form or a new material or an industrial process or operational method.

Patent cannot achieve “patented status” in circumstances where it is a discovery, a scientific or mathematical method, a business method or medical treatment.

The drafting of a Patent is very important. It takes considerable skill and knowledge and notwithstanding our own skills and knowledge, it is not something that we would undertake for you. Consequently, we have established a long standing and close relationship with a specialist Patent attorney practice. Due to this relationship, we act your agent ensuring that all matters are dealt with efficiently and effectively enabling us to assist you in exploiting your Patent.

Registered Designs offer a cost-efficient way of protecting Intellectual Property (in circumstances where a Registered Design is an appropriate form of Intellectual Property Rights). A registered design protects the external shape of a product (the aesthetics). The benefit of securing a registered Design is that it enables a proprietor (or a licensee) the ability to stop any competitor copying the external design of their product. This monopolistic right however is restricted to the proprietor’s geographical jurisdiction.

It is a monopolistic right that can last for a term of up to 25 years. Given the protection afforded pursuant to a Registered Design and the technicalities of making the application, notwithstanding our own skills and knowledge, it is not something we would undertake for you. Consequently, we have established a long standing and close relationship with a specialist Patent & Design Attorney practice. Due to this relationship, we act your agent ensuring that all matters are dealt with efficiently and effectively enabling us to assist you in exploiting your Registered Design.