Intellectual property

Our intellectual property solicitors advise businesses and individuals on how to manage, protect and exploit the intellectual property they have developed within brands, inventions, designs, know-how and literary, artistic and musical works.

Should these rights be infringed and you feel you need to start an intellectual property infringement dispute, we enforce them through commercial negotiation and agreement and, where appropriate, court proceedings.

Please call our IP lawyers for a no obligation consultation on 01926 886688

In many instances, the first step for our clients is working with us to identify the IP used and owned by their business and to see whether it is being used for profit. Intellectual property can be complex, many people think of it as merely innovative products and designs; however, it can be far more and include many aspects of your business, your brand name, logo and even your reputation in the marketplace.

It can even cover things such as your business plan, your specialist know-how and customer data. As we move further into a digital and technology led world the importance of IP for all business and individuals becomes more and more. We can provide IP audits for businesses from small start-ups and SMEs to large multinational organisations.

Protection of intellectual property rights

Intellectual property should be an important focus for any business from start-ups through to large corporations. All businesses face competition and will strive to do better than their competitors. A good awareness and the appropriate protection of intellectual property rights may enable a business lawfully to hold onto the advantage of being first to market or the reputation and quality of its goods and services.

Some IP rights arise automatically but others (and in particular stronger, more easily enforceable forms of protection) need to be registered at the appropriate Intellectual Property Office. If you do not register your rights then you may not have any legal redress or it may be more difficult to enforce your rights if others try to use your works, materials, products or inventions without your consent.

It is a concern for many business owners that the cost of protecting their IP is too high. However, this is usually only the case for global protection. The cost and the potential risk to your business can be substantially higher if you are not aware of your IP and how to protect it.

Protecting your intellectual property

There are several elements of intellectual property that may be protected. 

Trademarks

Protect many different forms of branding

Trademarks can protect many different forms of branding, whether business and product names, logos, shapes, sounds and even smells.  After identifying the branding that is important to your business, the first stage is to identify where you need your trade mark to be protected. This could be just in the UK, Europe or globally. If you do not register your branding as a trade mark in the relevant jurisdictions then it may be open to misuse by others. If this occurs, your only remedy under English law is to depend on the law of ‘passing off’ which can be difficult prove.

If you do not have a registered trade mark, you cannot use the ® symbol (and it is a criminal offence to do so in the UK) although you may use the ™ symbol with an unregistered trade mark.

Our solicitors can help you with the entire process, conducting searches to see if there are any conflicts with existing trademarks and registering your new trade mark in the most appropriate categories for your business.

Domain names are a related form of IP protection for branding which overlaps with trade marks registrations. It is generally easier to prevent cyber squatters from hijacking domain names which are more appropriate for your business if you have a trade mark registration. 

Copyright

Exists if your idea or creative activity is fixed

Copyright does not protect ideas or broad concepts. Copyright only exists if your idea or creative activity is fixed or recorded in some way, for example in written text, software code, drawings, photographs, sculptures, works of architecture and works of artistic craftsmanship, films, broadcasts, theatrical plays, music and songs. Copyright automatically arises upon the creation of a work if it is a type of work capable of protection. There is no system of registration. 

Patents

Protecting inventions

A patent needs to be registered by an inventor which gives them the right to stop anyone else from making, using or selling their invention without their permission. The potential availability of patent protection for your innovation can easily be lost if you disclose the working of the invention before filing a patent application.  

It is strongly advised that you work with a specialist lawyer and/or patent attorney to discuss any potentially patentable inventions and, if appropriate, to progress a patent application as this is a complex area of law. Patent applications all have to be filed with the relevant patent office or intellectual property offices. 

The monopoly rights provided by a successful patent application last for 20 years from the filing of the application. Like many areas of IP, patents are only valid in certain territories and so a patent registered in the UK, is only valid in the UK.

Design rights and product designs

Registering and protecting designs

Design protection is underused in the UK, possibly because of a lack of understanding on what can be protected. In the UK and Europe, design law protects the shape or outward appearance of a product. A basic form of unregistered protection arises automatically but designers can obtain a stronger form of protection  by registering and protecting their designs. 

In order to protect a design it must be an original and new product, whose shape is not determined by its function or the need to fit or match other products. 

Our solicitors can help you ensure you understand how your design is protected before you launch it to your market. Applications to register product designs should be made before launch or, at the latest, within 12 months of the launch or first marketing. 

Dealing with intellectual property infringements

“Infringement is a legal term for an act that means breaking a law”: Intellectual Property Office

Intellectual property rights will be infringed when a creation or work which is protected by law is used, copied or exploited without the consent of the creator, designer, inventor or owner. It is vital to take early advice from a specialist solicitor as soon as you become aware of a potential infringement or that you may be infringing someone else’s intellectual property rights.

If infringement occurs there are several remedies may be available from the Courts, or within settlement terms, including:

  1. an injunction to prevent future infringement;
  2. compensation for the infringing activity based either on the loss suffered by the owner or the profits made by the infringer;
  3. destruction or delivery up of the infringing materials or articles; and
  4. publication of the judgment in relevant trade press.

Trademark infringements

Permission of the registered trademark owner

Subject to some exceptions, trademark infringement occurs when a third party, without the permission or consent of the registered trademark owner uses the mark in the course of trade or business. 

Copyright infringements

Copyright is a valuable asset

Copyright infringement takes place when a third party uses any of the exclusive rights of the copyright owner without their consent. Copyright is a valuable commercial asset. 

Patent infringements

Patents Act 1977

Patent infringement occurs where a person that does any of the acts listed in the Patents Act 1977 including making, using or selling the invention without permission or consent of the patent owner.

Design right and registered design infringements

Criminal intellectual property infringements

The deliberate infringement of trade marks, copyright and designs can be a criminal offence as well as a civil law matter, enforceable in the UK by Trading Standards. These are more commonly known as “IP crime” or “counterfeiting” and “piracy”.

Dealing with intellectual property portfolios

Just like other forms of property, IP rights can be bought and sold, or licensed to third parties. Our solicitors can help with the drafting of assignment, licence or mortgage documentation as well as the management of your IP portfolios and registration of UK and EU trade marks.  

In corporate mergers and acquisitions it is vital to ensure that the purchaser understands and is acquiring all of the IP rights which go with the target business.

Our IP solicitors

Our team of intellectual property specialists are led by Rhys Jarman who is well regarded by clients for his experience and approach to the protection and enforcement of intellectual property rights and technology disputes: "In my experience the business benefits derived from engagement with Rhys always exceed the cost."

His cases include the resolution of a dispute between songwriters and performers of a song which had been used without permission in a film globally released in cinemas, by way of a payment of a substantial royalty to our clients.

We have particular recent experience in these sectors:

Media, entertainment and creative

Copyright infringements

  • We have advised music producers and DVD distributors on various matters including trade mark and copyright infringements, clearance of photographic works, PRS & PPL licensing and related issues.
  • We acted in numerous disputes relating to photographic copyright including claims brought by professional photographers and internationally renowned businesses in the Intellectual Property Enterprise Court (formerly the Patents County Court).
  • We have also advised on copyright issues in an Edwardian polar explorer’s memoirs and other books as well as celebrity image rights.

Branding, trademarks and domain names

Trademark infringement

  • We have acted for applicants and opponents in trade mark oppositions in the Intellectual Property Office and the High Court.
  • We have acted in proceedings in the Intellectual Property Enterprise Court relating to an alleged trademark infringement involving Google AdWords.
  • We have advised on various domain name disputes, including the published WIPO panelist decision in redspottedhankie.com.

Technology

Ownership of intellectual property

  • We have acted for a software games business in a dispute in the High Court over the ownership of intellectual property rights in a gaming application.
  • We have advised various mobile application developers on issues including copyright, trademarks and branding, patentability and software licence terms.
  • We have acted in High Court proceedings for an international software house in a claim involving confidential information, database right, copyright and trade mark infringement against a former employee and his new employer.

Our reported IP cases

If you'd like a no obligation discussion with our intellectual property solicitors please give us a call on 01926 886688

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