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Protecting Intellectual Property

Intellectual Property Protection

The purpose of this article is to give a brief overview of how you can protect your intellectual property.

When referring to intellectual property law the often used an analogy is tangible and intangible property. The ability to touch or hold an object (property) allows you to protect it without too much trouble. For example, a car (property) can be locked up inside a garage at your home meaning it is much harder for someone to steal it, money can be stored in a safe and some items of high importance can actually be hidden or disguised to avoid theft.

Intellectual property is different. You cannot build a fence around a logo or put your words (copyright) in a safe. If you publish your intellectual property works for exploitation you run the risk that someone will attempt to copy your works.

Before enforcing your intellectual property (“IP”) rights (protecting your rights) you need to establish that your rights have been infringed. This in itself can be a challenge. Consider this, if someone steals your car from your driveway you know its not there but if someone infringes your IP and reproduces your works on the other side of the world, how do you know your IP has been stolen (infringed)? It is perfectly possible for a business that owns IP to exploit the same profitably whilst another business in another area infringes that IP.

Josiah Hincks have been involved in IP disputes where the Claimant company has not realised its IP has been infringed for months and years because it has continued to trade profitably and it hasn’t noticed that another company has been using its IP.

Many people who have been involved in litigation may be aware that in order to make a successful claim through the courts you need to establish loss. For example, in breach of contract cases, the breach of contract may result in a party losing money, the party who has lost money as a result of the breach of contract may then claim for the amount of money it has lost. In IP disputes, the party who’s IP has been breached may not have lost any money, in these circumstances, can the company make a claim? The answer is yes. IP law is one of the few areas of law where the Claimant does not need to establish that it has suffered loss in order to make a successful claim.

So how do you protect your IP? The safest thing you can do to protect your IP is to never publish it, store your ideas in your head then no one can take them from you. However, this is not particularly appealing to most people who would rather exploit their inventions / IP for profit. How you protect your IP largely depends on what category of IP your works fall under i.e. Copyright (literary, musical and dramatic works), Patents (inventions), Designs and Trademarks (branding).

Many works can be registered such as logos (registered as trademarks) or inventions (patents), whilst this does not prevent someone infringing your IP it does allow you to enforce your rights more easily, not least if a trademark is infringed by adding it to a fake product, trading standards can bring an action against the infringer for manufacturing or importing counterfeit goods. Proof of authorship can also be hard to establish therefore if you have registered your work with the IPO or another registration authority then you may be in a stronger position to enforce your rights.

Let’s say for now that you have a logo for your business (Company A) that you have registered as a trademark with the Intellectual Property Office, you discover another business (Company B) is using your logo on its product, what do you do? The most common first step is to instruct a solicitor to draft and send a letter of claim to Company B that states it is using Company A’s logo without consent and it is to cease this immediately. The letter will be accompanied by an undertaking that states Company B will not use the mark or a similar mark again, that it will pay your legal costs and damages.

In practice, most companies refuse to sign the undertaking and will either stop using the mark in the hope you (Company A) does not pursue it for damages and costs or it will defend its position either by claiming it has a right to use the mark or it will challenge the validity of the mark. This is where disputes can become complex. The purpose of this article is not to tackle these complexities but to give a broad understanding on how you can protect your IP and how the system works.

If Company B does not cease and sign the undertaking then Company can issue a claim. The normal remedy sort is for injunctive relief (i.e. the court makes an order prohibiting Company B from using the mark) and damages for loss of profit or a notional royalty. The court may also order Company B to handover any materials that have the mark affixed to them, destroy any goods that have the mark fixed to them or make the company account for profit (i.e. if Company B has made £10,000.00 profit from infringing Company A’s mark it is required to hand this over to Company A).

As with many things in life, prevention is better than cure. If you can prevent someone from infringing your IP your risk of loss or damage to reputation is mitigated. How do you prevent someone infringing your IP? This is very difficult and there are no full proof strategies but there are some simple steps that you can take. Firstly, if you need to send your work to a third party for any reason have the third party enter into a ‘Non-disclosure Agreement’ (confidentiality agreement). This agreement seeks to prevent the third party from using the work for itself or disclosing it to a third party. If the third party breaches the agreement and you suffer a loss, the third party is in breach of contract. Secondly, keep a watchful eye on what people are attempting to register. The IPO publishes a journal of proposed new trademarks, if you see someone trying to register a mark that is similar or the same to yours, you can oppose the registration of the mark. Third, only work with reputable businesses.

It may be worth noting that if you are an individual or business that is thinking about using someone else’s IP without consent, you can be subject to both civil and CRIMINAL sanction. Do not think that because you operate a limited company you can hide behind the corporate veil, directors of companies who infringe IP rights are nearly always named as defendants when proceedings are issued.

Intellectual Property Law can be complex, knowing what to do to help protect and enforce your rights can be hard. For more information please get in touch today.