Maria Peyman, Legal Director in Birketts’ Contentious IP team, led the webinar, covering all the key points to enable businesses to establish a strong legal basis from which to launch actions and defend actions.
Considerations that apply to all IP rights
Maria explained some considerations would always need to be made regarding IP rights, saying:
“You need to identify your intellectual property assets and which right best suits them – in particular you need to understand whether the right automatically arises, or whether it needs to be registered.
Seek advice, if necessary. At Birketts we carry out strategic IP reviews for clients all the time, but you have to have the conversation early because IP rights are the foundation from which your future ability to enforce and protect is likely to be based. You should take any proactive steps to protect your IP, as with patents, which must be protected before being publicly disclosed. Even if it's not something that needs to be registered, for example, copyright, then you need to consider your records and the preservation of information you should take account of.
You should also consider and regularly review the layers of protection that suits your business and assets; the IP rights for your first assets may not be sufficient for future assets. Regularly, review your assets and IP strategy, and take advice.”
Considerations which apply (primarily) to registered rights
Beyond the first key considerations, Maria also addressed the issues surrounding registered rights. Some intellectual property assets may benefit from multiple applications which may need to be renewed – all of which are impacted by a business’ budget.
Maria said: “Take the opportunity to get the registrations, even if it's the bare minimum you require, and have internal discussions about strategy and developments. Make sure all relevant staff understand non-disclosure, whether that’s your R&D, sales or marketing teams. Ensure that they're also aware of the obligations for non-disclosure during relevant periods as this is one of the simplest ways to avoid potentially damaging disclosure before registration applications are submitted.
You must make sure you pay your renewal fees as well – keep IP offices up to date with your contact details and consider creating a specific e-mail address, monitored by senior IP team members or senior staff, to avoid missing any renewal notifications.
Simply missing a renewal notice and payment is not good grounds in our experience to persuade the relevant office to exercise their discretion to reinstate the registration.”
There was more advice regarding trade marks, especially for those that might not be in use anymore.
Maria added: “Unlike with patents and registered designs, non-use of a mark, for example if a mark has been modernised or dropped out of use, could mean that the mark on the register is vulnerable to revocation due to the lack of use in the course of trade.
Small changes may not be such a problem, but substantial changes may mean you’re not getting the benefit of the protections by registration. So you need to be reviewing those marks when you review or tweak or modernize your brand logos.”
Maria said that the same vigilance was required when checking rights are registered to the correct entity. Businesses often grow from one person who registers an IP right into a company, at which point the rights need to be registered in the name of the company rather than the individual.
Considerations which apply (primarily) to unregistered rights
It is generally accepted that claims based on unregistered rights are harder to prove. As well as potential unregistered rights, Maria also looked at the ‘quasi’ IP rights that could become important factors. All of these rely on the evidence you can provide to prove your claim.
Maria said: “Effective record keeping is absolutely crucial to show the date of creation, who created it, and why you have the legal title. The passage of time can unfortunately result in lost evidence; members of staff may leave and take evidence with them and documents can be misplaced or not kept.
A central register of information, which employees update, is vital for substantiating an alleged infringement. This is as important for copyright as it is for unregistered designs. Unless there is a good audit trail, you are going to struggle to enforce those rights.”
Maria recommended making sure intellectual property rights are still valid, as unregistered community design rights only offer protection for 3 years, although UK unregistered design rights last longer (the earlier of either 10 years from date first sold or 15 years from creation).
In 2018, the Trade Secret Regulations came into effect, moving the quasi-IP rights of trade secrets out of common law and into legislation. A trade secret is a specific form of commercially valuable confidential information. There are some well-known examples of trade secrets such as the recipe for Coca-Cola, Irn-Bru and WD-40 – but it also includes the algorithms used by Google's proprietary searches. Some trade secrets can last for decades or even centuries.
To be considered a trade secret, the information must be kept a secret. This means hard copies must be secured, digital copies should be encrypted or password-protected, and the number of people able to access it must be limited.
Valuing trade secrets is very difficult, but this should not stop anyone taking infringement proceedings out against someone.
Maria added: “If, for example, an employee leaves and takes a trade secret with them, you will need to try and take out an injunction; you don’t want that information to ever be made public.”
Layers of protection
Some industries will often use more than one form than protection for the same IP, some of which are registered and others that are not.
Maria said: “You may want to consider registering a design right for protecting something like a digital image, for example a video game character or a graphic icon, something Apple are fond of using. These are cheap, easy to register and don’t have long investigative processes like some other registered rights.
The idea of layering IP protections, starting with copyright, then unregistered design rights, community registered design rights and also UK registered design rights, can offer much more protection than any one option."
Maria added: “This also applies to software. The source code of a program may be protected by copyright. Some developers may choose to include ‘comments’ or notes in their code. This is so, if a third party tries to copy the software, for example a licensee using it beyond an agreed period, or former employee copying the code and claims it as their own, the developer may be able to point to these comments/notes as proof that is has been copied.”
While this preparation is key, Maria warns that these IP rights will only be worthwhile if they are enforced and has a checklist of monitoring techniques:
- Standing searches – regularly check for new registered rights, such as trade marks and patents, and review is any affect your business, your IP assets and any rights you have
- ‘Neighbourhood watch’ – When you or your staff are at events like trade fairs, speak to customers, competitors and sales teams to find out what other businesses are doing
- Checking websites – If you won’t have regular in-person interactions or trade fairs, consider checking competitor websites for updates and take screenshots of anything you believe infringes your rights before it is removed from the website
- Secret shoppers – Others may be selling counterfeit products branded with your trade marks, so consider buying something you believe infringes so you can check the product in person
When considering steps to enforce intellectual property rights consideration should be given to the most effective forum.
If you become aware of an application for a registration which may impinge on a right you already have, consider opposing that application in the relevant Intellectual Property Office (IPO).
If you become aware of someone who is infringing your trade mark and they have secured a trade mark already, consider an invalidity action in the Intellectual Property Office (IPO). It's cheaper, quicker, and if your action was successful, the decision of the IPO may assist in any future infringement proceedings.
Takedown notices for websites can be cheap and time-effective. If somebody has registered a domain name that infringes your trade mark, consider using a Domain Name Dispute Resolution Service.
In the correct circumstances, the Company Names Tribunal can prove an effective and, comparatively, cheap forum. It does have limited application but is definitely worth considering.
The Intellectual Property Enterprise Court (IPEC), designed primarily for SMEs, has a capped-cost recovery system meaning the winning party is capped to recovering £50,000 in respect of its legal fees, it also adopts a managed approach to claims with the aim of keeping legal costs down and trying to get cases to trial within 12 months. It also has a specialist small claims track for claims of up to £10k but with the benefit of being able to grant final injunctions.
To watch the webinar in full, please visit Birketts’ YouTube page.
If you have queries on any of these topics or would like to know more about the services we offer, please contact our Technology and Intellectual Property Team.
Birketts’ upcoming webinars can be found on our Events pages.
To receive updates for any of Birketts’ other upcoming events, please register your interest.