IP strategy

There is currently no legal requirement in the UK to apply for registered IP rights when starting a business or launching new products and services. However, filing applications for some IP rights after you have sold or marketed your goods/services may weaken the strength of these rights and can sometimes render them completely invalid.

Even if you do not wish to file applications for your own registered IP, it is advisable to investigate whether or not your business activities would conflict with the existing IP rights of others. This investigation is typically aided by performing various IP searches, commonly called ‘freedom to operate’ searches. Ideally, these searches should be performed before starting your new commercial activities. The results of an IP search can never provide you with a 100% guarantee that there are no existing conflicting rights or that you will not have any future IP conflicts with third parties. However they will often highlight potential issues that may require attention before you commence trading. Such searches can also help make the process of applying for your own registered IP rights more efficient and cost effective.

Dealing with some of these issues at a later stage may be more expensive and, in some circumstances, may have a negative impact on your business.

Before you start trading, it is a good idea to search for any existing registered trade mark rights, with which your company name may be in conflict, in the countries where you intend to trade. Ideally this should be done before you finalise your company name and start generating marketing material because the results of a search can, in some circumstances, require you to change or modify your proposed company name to avoid legal conflicts.

Checking that your proposed company name is available at ‘Companies House’ does not indicate whether it infringes another company’s registered trade mark. The consideration of existing registered trade mark rights is also applicable to any brands, logos or any other graphically represented ‘sign’ that you use in the course of trade to distinguish your goods and services from others.

If your business name, product name or ‘sign’ is identical or confusingly similar to one or more existing registered trade marks that cover identical or similar goods/services, then the holders of those existing rights may have the power to stop you using that ‘sign’ in the countries where the existing rights are held. The companies holding the existing rights may exercise this power regardless of whether or not you have registered the appropriate domain name.

If you think this may be an issue, it is worth requesting a registered trade mark search and opinion from one of our trade mark attorneys.

You may also wish to consider registering your own trade marks to help stop competitors using your business and/or brand names. Again, our trade mark attorneys can advise on these matters.

Aside from the possible trade mark issues discussed above, it is worth considering whether or not there is any likelihood that the look of your new product will be in conflict with existing design rights. There are several different types of design right, including registered and unregistered rights, but all protect the appearance of a product that can result from its shape, contours and colours.

If your new product is identical in appearance to a valid registered design in a country you are trading in, then the holder of that registered design has the power to stop you making products incorporating that design in that country. Even if you modify your design very slightly so that it is no longer ‘identical’, the holder of the registered design may still have the power to stop you if your product does not create a different ‘overall impression’ to the ‘informed user’ of the product when compared to the registered design.

If you think this may be an issue, it is worth contacting one of our design attorneys. It is also worth noting that certain shapes, for example bottles of well-known soft drink manufacturers, or car grills of well-known car manufacturers, can also be protected by registered trade mark rights, which in principle can be in force indefinitely.

Furthermore, if you believe that you are free to use your design, you may also wish to investigate whether the technical functionality of your product is in conflict with any existing patent rights. This is discussed in the next section below.

You may also wish to consider registering your own designs to help prevent competitors marketing and selling products that are identical, or similar, to the design of your own products. Again, our design attorneys can advise on these matters.

If your new business involves making, selling or otherwise dealing with physical products or industrial processes then you should consider whether or not any of your business activities conflict with the existing patent rights of others.

Whereas a registered design protects the way a product looks, a patent protects how it functions. In some circumstances, patents can protect software-related inventions. Patents protect industrially applicable inventions and may cover both inventive products and inventive processes.

If your new product or industrial process is covered by the claims of an existing patent, then the holder of that right has the legal power to stop you in the country where the patent is granted.

If you think this may be an issue, it is worth contacting one of our patent attorneys. You may also wish to consider filing your own patent applications for the inventions you develop or own to help prevent competitors from using your invention. Again, our patent attorneys can advise on these matters.

An IP audit is a review of the intellectual property of a company or other legal entity. The audit identifies registered and unregistered rights that the company holds, and identifies particular IP-related issues that may require further consideration. These issues can vary from ownership problems, contractual implications, conflicting IP rights and areas of your business that might benefit from IP protection. The output of an IP audit typically comes in the form of a report accompanied by recommended actions.

IP audits can provide a company with valuable insight into some of the risks they may be facing by performing certain types of business activities. They may also spot particular areas of weakness or strength in the company’s business activities that can be bolstered or commercially exploited.

Even if a company is fully aware of all of its registered IP, or if they do not have any registered IP at all, an IP audit could still be very worthwhile. In many cases, companies are not aware of all the IP they actually have. Some IP rights, for example UK copyright and UK unregistered design rights, exist automatically and can be used as part of business negotiations or in helping to prevent competitors from copying your products. In other cases, companies may be under the impression that they own certain IP rights when in fact they do not. Sometimes a company that is using pictures, text or other materials in literature or marketing materials may not realise that these works are owned by third parties, who may in turn stop the company using them or make a claim against the business.

An IP audit can be tailored to your company’s needs, either focusing on particular aspects or addressing the business as a whole. They can vary in cost depending on the time taken to complete the audit and the level of detail you require. Typically, for example, an IP audit for an SME can cost between £2500 and £5000+ ex VAT, the variation in cost depending primarily on the issues found and the extent of the audit. If desired, Beck Greener can work to a specified IP audit budget and can focus on the areas of IP that are most important to you.