One area of IP law that can catch companies out is in relation to making an unintentional threat to sue for infringement of IP, when only seeking to notify a third party about the IP. The law protects third parties, and especially third party's customers from unjustified threats. One of the downsides, of UK law is that an IP attorney instructed to communicate with a client's competitor over IP infringement, could find themselves on the wrong side of a counterclaim for making unjustified threats - which would then leave the attorney conflicted and unable to act further for their own client. This has tended to result in unclear communications.
I am pleased to report that on Sunday, UK law was improved to mitigate such issues, and to bring the law in relation to trade marks and designs into line with that for patents. These changes should make it easier for all to be able to notify third parties of the existence of IP rights and, when appropriate, for a sensible negotiations to take place. The issue of unjustified threats is not just one for UK law, and should be kept in mind when communicating with competitors in other countries.
As part of its role in raising awareness of good IP practice, the European Patent Office has recently prepared some very good case studies on company IP portfolios. Based on my experience, I particularly like this one on the Irish company Aerogen, which has aerosol drug delivery technology, and I recommend it to mid-size companies, and ambitious small companies`:
The case study explains that Aerogen has 14 patent families, other IP is not covered in detail.
Features of the case study that particularly resonated with me, based on similar situations, included:
I am frequently asked about the effect of the forthcoming Brexit on IP. IP is an important aspect of modern business and a significant aspect of the current UK/EU negotiations on Brexit. Luckily, the UK has an excellent, experienced team at the UKIPO guiding ministers on IP topics in those negotiations. Here's the need to know stuff.
Patents -little changes on Brexit. The "European" patent system has nothing to do the EU - it's been an example of successful wider European cooperation for the last forty years. So a "European" patent application can still result in protection in the UK after Brexit.
Trade Marks and Designs. In contrast to patents, there are EU systems for trade mark and design registrations. The main issue will be what effect will EU registrations have in the UK after Brexit. Most suspect that existing registrations will be allowed to be converted into UK national registrations. Use of trade marks in the EU should be assessed, as this may affect strategy..
Other rights like Supplementary Protection Certificates, Design Right, plant varieties and copyright will be affected in different ways. Please let me know if you want an update on a specific area.
At the weekend I was given a couple of bottles of beer from a microbrewery. It was lovely but I could n't help notice that the beer used a picture of a famous aircraft on the label - the name of that aircraft being the trade mark of another brewery. I felt it was worth repeating some comments on trade marks for start ups.
What is a trade mark? The value of registration
Most new companies will have a trade mark – which can be a word, logo or composite mark with a mixture of elements, or other sign which identifies its product or service offering to customers.
Trade marks are valuable assets of any business. Whilst rights arise under common law in the UK simply through use, the law encourages registration of trade marks, and the first company to file will usually end up with dominant rights. In practice, registered trade marks “trump” other rights like domain names and company names, so it’s worth getting registrations of key trade marks in place.
The registration of trade marks is one of the services that trade mark attorneys offer and can get the best protection for a start up. Costs vary according to the goods and/or services to be covered and where the application is filed. Just ask for an estimate.
A trade mark registration can be kept in force indefinitely through payment of renewal fees. UK trade mark registration no. 1 from 1876 – for the Bass beer red triangle label is still in force!
Choosing a trade mark
It’s worth spending the time and effort in choosing a good trade mark at the beginning. Developing good branding is a skilled job in its own right but registrability of trade marks often gives good pointers for success. Avoid descriptive terms, like “The Better App Company”, or “The Good Antenna Company” as they are not distinctive, and therefore difficult to register.
A classic branding strategy is to use a two syllable invented word, as such trade marks are inherently distinctive, and so should be straightforward to register. Examples include Nikon®, Sony® and Kodak®. Another strategy is to use a word which has nothing to do with the product/services. Examples include Lemonade™ for insurance; or Juice™ for recruitment services.
It goes without saying that a start up should avoid using other companies’ trade marks, although use of the same trade mark in a completely different field may not be objectionable as trade marks are registered for different classes of good and services. Looking at other companies’ registered trade marks in UK and elsewhere to eliminate candidate trade marks at a high level is pretty straightforward.
The UK register is at: https://www.ipo.gov.uk/tmtext.htm. For other markets look at https://www.tmdn.org/tmview/welcome. As rights in trade marks can be acquired simply through use, look at what trade marks are in use in the market place – through Google® and domain name searches. However, bear in mind that clearing trade marks for use, where judgement is needed in analysing complicated trade mark search reports, is a skilled job, and one which it is best to use a trade mark attorney for.
There’s lots that start ups can do to maximise the value of their trade marks, and minimise future problems, simply through good practice. They should always use their trade marks carefully in marketing in relation to the goods and not generically. Take care when using other companies’ trade marks. Identify registered trade marks as I have done above with the recognised symbol ® e.g. DAKTARI®. If a start up has a sign which it regards as a trade mark, then it should identify that sign with the recognised symbol – ™ – to warn off third parties e.g. MUGWUMP™