Adopting a rigorous, systematic approach that is tailored to a business’s needs is a good general rule of thumb for intellectual property protection.
There is often either a misconception or an assumed level of knowledge around intellectual property protection. It is often not as complex as it seems but it does need to be approached methodically – clocking up huge legal bills is easy, which may not have been necessary if you had the right level of understanding. This is where it helps to get a grasp on the basics.
Sometimes it is a surprise to businesses what needs to (or can be) given intellectual property protection. For example, a product or element of a product may seem mundane, but from a legal perspective, it may be capable of patent protection. An everyday example is the plastic cup lid used by high-street coffee shop chains, which has over the years been heavily protected with registered and unregistered IP rights allowing lid manufacturers to secure and maintain significant market shares.
It is very easy to spend money on obtaining registered rights, when in reality, some of the best intellectual protection on offer is free and can be secured without any registration formalities. Copyright for example is, in many jurisdictions, an unregistered right which effectively arises automatically on the creation of a work. However, it should be remembered that legal costs may mount when it comes to enforcing those rights, particularly if there is a cross-border element.
This is in part why it’s important to have an established IP portfolio (to include a central record of both registered and unregistered rights) in place or at a minimum, to have reached an informed decision as to the level of intellectual property protection which is required. Bosses can save money in the longer term by having the right protection in place – giving them the proper ammunition to police and exploit their creative endeavours.
An IP portfolio that a business builds will often reflect its wider approach to commerce. A more rigorous and aggressive approach to protection and exploitation is likely to be taken if business owners have a clear exit plan and need to maximise the value of their business within a given timeframe. The same is true of cut-throat sectors, such as the toy and infant product industry, where there is significant investment in new product development and a reliance on trusted brands. This requires leading players to have extensive protection – such firms spend big and enforce even bigger.
If bosses fail to take preventative steps then they don’t put themselves in a position to take advantage of opportunities, such as exclusive distribution and/or licensing deals, as they arise. Failure by a business to keep its house in order can often encourage the competition to capitalise on this lack of protection to obtain a commercial advantage. If a business has taken time to identify its rights and build an IP portfolio, then it should be in a strong position to swiftly combat threats.
There are also international discrepancies to consider, such as the differences between IP protection in the EU and outside of it. There is presently a significant degree of harmonisation in terms of IP law across the EU. By way of example, the EU trade mark allows a UK business to obtain pan-EU protection through a single application process. In light of Brexit there is now a sizeable question mark over those legacy trademark registrations and what will happen next. We anticipate that steps will be taken to maintain an equivalent level of protection for existing trade mark owners, but it’s not clear at this stage how this will be implemented.
The current unified approach across the EU doesn’t translate further afield. The majority of major UK law firms should have a good understanding of well-trodden export markets (US, China, India) but more esoteric territories less so. That said, if a business involves its lawyers then they should be able to tap into a network of trusted local advisors in the relevant territories.
There is no one size fits all approach: understanding your market position, your five-year plan and appetite for confrontation and deals are all key. As an initial step a 30-minute conversation with a lawyer is often free and can often give a bit of focus and highlight legal avenues that may not have been noticed.
David Thompson is a partner at Michelmores