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4 ways you can legally protect your tech start-up

4 ways to legally protect a tech startup blog post image

Many new entrepreneurs are very secretive of their new business idea. Their thinking is that if they were to share a business idea with others, they risk being copied. This is sometimes an unfounded fear and it is worth understanding how your startup can be legally protected and what options you have.

Can an idea for a startup be protected?

An idea itself cannot be protected under any intellectual property right. However  expressions of an idea can be protected, for example when they are artistic in nature, copyright could subsist. Examples of this include a painting, a poem or a song. A business idea itself is not considered an artistic work. This is why it cannot be protected as a copyright, but once you start building the business, if it requires original coding then you  could be copyright protected. The name under which a startup proposes to trade could be registrable as a trade mark, as another example.  Similarly, if the business idea consists of producing an innovative product then there is a potential to file a patent.

In what ways can my startup be protected?

Use a nondisclosure agreement (NDA)In cases where the business idea itself cannot be protected by an intellectual property right, as is often the case, an NDA can be used to prevent others from sharing or benefitting from the idea. Developers, employees and any others you share your idea with can be bound by an NDA. An NDA is a legal contract between two people that states what information will be shared between them and what information will not be shared with other people.

Some entrepreneurs have a policy of getting everyone to sign an NDA including investors. Some investors consider this to be an unnecessary step so it is advisable that you remain flexible when dealing with investors. They come across a large number of ideas and their intention is not to copy the ideas, only to judge their suitability for investment.

Read our blog post on 7 ways to legally protect your mobile phone app 

Start building your business and obtain copyright protectionAs with many tech startups, you will have to code it, which could attract copyright protection. If you are getting developers to do the work, then you can and should ask them to assign the copyright to you. Copyright protection arises automatically  in most countries and it is important to keep all records evidencing creation/authorship so that the copyright can be verified.

It is worth mentioning that open source frameworks and platforms (WordPress, Drupal etc.) are copyright of their creators and are available under specific creative licenses. If you to build any part of your startup using such open source tools, you will not be protected under copyright laws.

File a patent application if possibleA patent protects new inventions. In the UK and the EU, computer software programs are generally not patentable. There are exceptions to this rule, but you have to create a new method or process to obtain a patent. A software app or part of it may fulfil the necessary requirements to obtain patent protection. It is best to get advice from a patent attorney who can advise you on whether your tech startup is patentable.

If you are creating a new innovative product, then a patent is absolutely necessary so that you can financially exploit your product and stop others from making unauthorised use of it.

Register a trade mark for your brandIt is incredibly common to see the names and brands of successful startup ventures being used by others. Identical or similar names are considered trade mark infringement in certain circumstances and registering these as trade marks, assuming they fulfil the requirement of distinctiveness. A trade mark will make it easier to stop copycats in the markets you have filed your trade mark in. You can trade mark your name, logo, slogan and even a specific design. This is one important method of making sure your tech startup is protected from being copied by others. Especially your branding.

Having a tech startup can be hard work. Knowing how you can protect it is important. After all, you want to benefit from your hard work and not have to worry about being copied.

If you need help or advice about intellectual property (IP) protection for your startup, please contact us on 0207 791 9050 or email us on trademarks@freemanharris.co.uk

What should you do if someone is using your copyrighted work?

What to do if your work is copied by others blog post image.

A commonly asked question is what should I do If you ever come across your work being used by another company or person without your permission. It has become increasingly common, due to ease of access on the internet, that original works are copied by others. Read below to see what can be done in such a case.

What are your options if your work is being copied?

If you find that your work is being copied, you should first identify the type of work it is. Different types of intellectual property (IP) have different protection, which is why you need to be clear on the legal route that needs to be taken. There are two types of IP which are commonly copied, copyrights and trade mark. As these have different methods and modes of protection, your legal actions will differ as a result.

We discuss both type of IP and what to do if your work is being copied as follows:

Copyright Any original creative or intellectual work such as paintings, writing or videos falls under copyright protection. You automatically obtain copyright protection when you create an original piece of work. However, you need to research if your work is indeed protected through copyright by reading the Copyright, Designs and Patents Act 1988.

If your work has been used without permission, you need to investigate what the purpose of the use is. If your work has been used without permission for non-commercial research, private study, teaching for example, it is potentially covered under exceptions to copyrights. In this case, you can politely ask the third party to credit or remove your work if you do not like its use.

If another business or person uses your copyright protected work for sales, promotion or any other commercial purpose, it could be infringement of your copyright. The formal process of stopping them starts with contacting them to ask that they cease the use of your copyright. This is done through a cease and desist letter. If the third party refuses to do so, you can escalate the matter by suing them for infringement. This can be a lengthy process and requires a large amount of evidence from you.

As part of the copyright infringement process, you can seek damages if you suffered financially as a result of use of your copyright. Alternatively, you can seek accounts of profits if the other party had financially benefited from your copyright. An example of this is if someone sold merchandise reproducing a drawing you created.

In cases where you are not the creator of the work, and the work was created for you for e.g. a photography project, you need to acquire copyright of the work by getting the creator to sign over the rights to you.

Please note that an idea cannot be protected as a copyright. It is the expression of the idea that is protected so if you had an idea for a book and you shared it with someone who copied it, then you cannot claim copyright infringement. If someone copied the book you wrote, then it could be considered as copyright infringement.

Trademark – A trade mark is a sign which distinguishes your goods or services from those of your competitors. It can be a name, logo, slogan, shape or even a smell. Companies or people who have not registered their trade mark still have limited protection which is more difficult and costly to enforce the if they registered their trade mark.

Benefits of registering a trade mark:

  • Easier to enforce your trade marks protection
  • Secure exclusivity to use your name or logo for specific goods or services
  • Have the ability to license your trade mark

If you find that another company or person is using your trade mark without permission, you will follow the same process as outlined for copyright above. You contact the party to ask them to stop the use of your mark. This is done through a cease and desist letter. If they do not comply, the matter can be escalated in court through a trade mark infringement case.

You can claim damages or accounts of profits if they financially benefited from your trademark. Damages are claimed if you suffered a loss as a result of the trade mark infringement while accounts of profit are used to claim part of the profits made as a result of use of your trade mark.

As stated above if you do not have a trade mark registration, it is costly and time consuming to enforce your unregistered trade mark. You will have to prove that you have gained goodwill in the market through use, the use of your mark constitutes misrepresentation and that your bran has suffered damage.

This post gives you a brief overview of the process that you have to follow, but each case is different which is why you should consult with an IP solicitor. We can help you in such circumstances so contact us on trademark@freemanharris.co.uk or call 020 7791 9050.

How to use your trade mark after registration?

A common question that we get asked is how should a trade mark be used once you have obtained registration. Luckily, there are guidelines available for this, and I’ll summarise them in this post.

Imagine a customer looking to buy a new pair of sunglasses. She finds the section for her favourite brand only to notice that the font in their logo is different. This can cause confusion and might end up costing the company a sale. Incorrect use of a trade mark can also jeopardise its validity and protection against copycats.

Having and following guidelines for trade mark usage are essential in building a brand. After all, you’d want strong brand recognition. Most importantly, proper use of a trade mark will protect it from unlawful use. So how should you use a trade mark?

A logo trade mark and its consistent use

The colour, format, font and placement of a logo is very important for branding. If your logo was filed with a specific colour scheme, then it should always be used in those colours. When providing your trade mark to a third party, you should provide the colour specification (pantone). You should also create and provide brand guidelines on the way your trade mark should be used and printed to everyone using your branding.

The image from University of East Anglia below displays how their logo should be used.

university-east-anglia-logo-guidelines

Using the ® icon in advertising and labelling

The ® icon is used to alert the public that a sign is a protected mark and discourage others from using it. Although not compulsory, you should use it in advertisements and labels because of the wider visibility that these receive. Using it will deter copycats from taking advantage of a trade mark.

A trade mark is an adjective

A trade mark is an adjective so it cannot be expressed as a noun or or verb. An example of this is as follows:

Correct: I had a coffee from Starbucks in the morning.

Incorrect: I had a Starbucks in the morning.

I’ll use another brand to illustrate the point. Ray-Ban would need to be used as follows:

Correct: Buy the latest Ray-Ban sunglasses on sale now!

Incorrect: Latest Ray-Bans are on sale now!

Incorrect use of a trade mark combined with its common use can make it genericised. In this case, a trade mark become so common that they lose their value as a trade mark. This was the case with trade marks such as Hoover, Aspirin and Kleenex. A trade mark being genericised is more common for very well known brands than lesser known ones.

Further guidelines for trade mark use

For greater impact, the trade mark can be distinguished using italic, bold or capitalised letters. It’s also common to monitor the use of your trade marks by third parties. If you license or franchise your brand, it is necessary to keep an eye on how others are using it. Finally, there should be a regular review of your trade marks to see if they need to be registered, licensed or renewed.

If you would like further information about use of your trade mark, please contact us on 020 7791 9050 or email us at trademark@freemanharris.co.uk.

The difference between the trade mark symbols ® and ™

Difference between trade mark symbols

Trade mark filers are often not familiar with the symbols that need to be used with their mark. There are two commonly used trade mark symbols, the TM and the letter R in a circle ®.

What do these trade mark symbols mean?

The TM symbol is used for unregistered marks to inform the public that the word, logo or slogan in question is being claimed as a trade mark. You do not need a trade mark registration to use this symbol with your branding. Use of this symbol is not a guarantee that the mark will be protected by trade mark laws of the country the company trades in. Some companies use the TM symbol while their trade mark application is being processed.

The ® symbol is used to indicate that a mark is registered and provides a legal notice of ownership of a name, logo or slogan. The symbol warns other competitors that the trade mark is registered, and often has a dissuasive role. Any infringement will be considered a breach of trade mark laws.

When to use these symbols?

The TM symbol can be used anytime. The purpose is to inform the public that the company claims the branding as a trade mark. This is useful in dissuading others from copying the mark in the market.

The ® symbol can only be used in the countries where you have successfully registered your trade mark with the relevant trade mark office. In the UK, use of the ® symbol prior to registration is a criminal offence and is discouraged.

Where should these symbols be placed?

It’s common practice to place the symbol on the upper right corner of a mark in superscript. It is also acceptable to place it in the lower right corner if it’s not aesthetically pleasing on the top of the mark. There are no guidelines about the placement of the symbols but it’s strictly advised to follow the normal convention. The symbols cannot be placed on the left, top of bottom of the mark.

If you have any questions about this matter, please contact us and we’ll be happy to help.

N.B: Use of the TM and ® symbols is optional. Names, logo or slogan without the ® symbol isn’t an indication of a brand not being registered as a trade mark.

So, what happens to the EU trade mark if Brexit happens?

EU and UK flag, what happens to trade marks in case of Brexit

The upcoming European Union (EU) referendum is, as expected, dominating the news. The financial markets have been reacted badly to a strong possibility of a British exit, or Brexit, from the EU. There are a lot of questions that have been raised over various matters relating to this ‘Brexit’. What will happen to trade, travel and in our specific case trade marks if Britain decides to leave the EU.

As many others have stated, there is great uncertainty in regards to what will happen post Brexit. We are also not clear of the exact changes that will occur, but we can speculate like all others have or are doing so.

One thing is for certain, a vote for Brexit will have significant implications for trade marks. In this post, we’ll try to answer the questions which you might have albeit speculatively.

Would EU trade marks still apply to the UK?

In simple words, no.

However, post Brexit, there will a long period of negotiation in which the British government would negotiate all matters with the EU. Either party might provide new legislations to continue the protection of existing EU trade marks in the UK, but that all depends on the negotiations that will be undertaken. If there are no new legislations provided, then all companies trading in the UK would be required to file a national application. That is if they only had a EU trade mark.

It is understood that the provisions and regulations provided by the EU Intellectual Property Office (IPO) will no longer be in effect so any new EU trade mark applications will not cover UK.

Can UK trade mark attorneys represent clients before the EU IPO?

Again, that would be a no.

The Institute of Trade Mark Attorney (ITMA) has suggested that a large amount the EU trade mark and design registration work will be moved to mainland Europe from the UK. The following effects have been listed:

  • UK-based trade mark practitioners would be unlikely to file EU Trade Marks/EU designs because they would be unable to represent clients before the EU Intellectual Property Office, unless the UK was to join the European Economic Area.
  • Over time UK trade mark and design law would diverge from EU law

A change in the law and removal of EU trade mark courts from the UK would most likely be the end of EU IPO work for UK based trade mark law firms and attorneys.

Will there be any changes to the cost?

Apart from the increase in costs of filing a UK and an EU trade mark separately, the costs ought to remain the same for the UK and EU trade mark.

The same rules would apply to design registration in the EU.

As stated above, we are speculating the changes that might occur as a result of a Brexit. There is a great deal of uncertainty, which is making everyone jittery. ITMA has stated that this will have a negative effect on trade mark attorneys in the UK and the process would become more complex. However, there might be an increase in UK trade mark filings post a brexit, which could help ease the long term negative impact.

Jose Mourinho’s Trade Mark: Can Companies Own a Name

Jose Mourinho and his trademark with Chelsea

During the recent announcement of Jose Mourinho being signed as the manager of Manchester United, it was revealed that his name is a trade mark owned by Chelsea. This was reported to be a stumbling block which delayed the signing. This raises the question on whether a company can own a person’s name as a trade mark.

The history of Jose Mourinho’s trade mark

Chelsea Football Club filed ‘Jose Mourinho’ as a trade mark in 2005 under various classes. This was a first where a managers name was registered as a trade mark. The popularity and marketability of Jose Mourinho was the reason why they decided to obtain the trade mark. The football manager has been successful in carving out a brand for himself.

Can a company own the trade mark instead of the person?

The owner of the trade mark is the entity that has filed for it to be registered. In this specific case, Chelsea Football Club filed for the trade mark and they would have obtained permission from Jose Mourinho himself. The name is a commercial entity which can be used for trade purposes and that is why it was protected. If a company has the relevant permission, it can file a trade mark and count it as one of their IP assets. From Jose’s perspective, the better way would have been to file a trade mark himself and license it to Chelsea.

Licensing a trade mark instead

A person or company would be better off by obtaining a trade mark and then licensing it out to another party. This is something that would be negotiated by Jose Mourinho’s legal team, but they will have to cover the costs of the transfer as well as potential loss of earnings. Without the permission of the trade mark owner, Manchested United would not be able to use the name on their merchandise or any commercial activity in general.

This is a unique situation, and the parties involved would be able to find solution primarily because of the clout of these Football clubs. They can afford to spend money on legal fees and/or licensing fees to use the trade mark. For smaller companies or ones not so financially able, the whole process would be costly and challenging.

The Chinese Trade Mark Saga – Facebook Wins Trade Mark Case

Facebook wins trademark case in China

While Apple Inc lost its trade mark case in China, Facebook has made headway by winning their trade mark case for its own brand name. A Chinese vegetable oil and potato chips maker called Zhongshan Pearl River registered ‘face book’ in 2014, but the courts in China have revoked the trade mark.

Why did Facebook win while Apple lost its case?

Although Facebook is blocked in China, it is still accessed by a large number of Chinese web users through VPN (Virtual Private Networks). Under Chinese trade mark laws, a global brand has to prove that its trade mark is also well known in China. In Apple’s case, the court decided that the ‘iPhone’ trade mark wasn’t well known, in China, when it was filed by the company.

Proving recognition

Facebook’s founder has been leading a charm offensive to woo Chinese government officials to allow Facebook to operate in China. The brand has been popular in the country for a while and as stated above, it has a sizable user base in the country. This has allowed Facebook to revoke the trade mark filed by the Chinese company.

The Supreme People’s Court decided that Zhongshan Pearl River had “violated moral principles” with “obvious intention to duplicate and copy from another high-profile trade mark”. Very aptly worded judgement from the Supreme People’s Court.

Attention! Changes to Copyright Law Coming Into Practice from July 2016

Changes to copyright law for artistic work

Generally, a copyright protects musical, dramatic, literary and artistic works. Copyright protection is given to these types of works for a period of 70 years after the death of their creator. This rule comes with an exception!

According to section 52 CDPA, the current period of protection for artistic works (excluding films) which have been industrially manufactured (i.e. works of which more than 50 copies were made) and marketed for sale is limited to 25 years. This means that anyone can make copies of such works without infringing copyright once the period of 25 years from when the articles were first marketed has expired.

However, following the Case C-169/08 Flos v Semeraro, the UK government considered that section 52 was not compatible with the EU Copyright Term Directive and passed legislation to repeal that section. This means that the period of copyright protection for mass-produced artistic works will be extended to the lifetime of the creator plus 70 years.

Originally this repeal was meant to have a transitional period of 5 years, coming into effect in April 2020. However, the government conducted a new consultation late 2015 and concluded that this period was excessive.

It has therefore been decided that instead, the repeal will now occur on 28 July 2016, with the transition period ending on 28 January 2017.

What does this mean for businesses, organisations and individuals?

Well, from 28 July 2016, no new copies of affected artistic works may be made or imported unless:

  1. they were contracted before the publication of the consultation document at 16.30 on 28 October 2015;
  2. permission has been granted by the rights holder; or
  3. an exception to copyright applies under the CDPA 1988.

And from 28 January 2017, no replicas or unauthorised copies created in reliance on s.52 should be dealt with. By this date, unless an exception to copyright under the CDPA 1988 applies, all of these items must be depleted (sold or destroyed) or must have received authorisation by the rights holders.

Furthermore, it has to be noted by those affected businesses, organisations and individuals that the change has retrospective effect and industrially exploited artistic works whose copyright protection had expired under the 25 year rule will have copyright protection ‘restored’.

To explain what is meant by “restored”, here is an example: an artistic work was created by person “A” in 1985. More than 50 copies were manufactured and sold by “A” in that same year. “A” died in 2015.

Under Section 52, this artistic work would have had copyright protection until 2010. But following the change in law, that same work would be protected until 2085.

What to do now?

Following the change in the law, anybody who have copied artistic works should assess if any changes to their business models and product ranges have to be made, especially if they were relying on section 52. Some minor or substantial changes might have to be implemented in order to avoid being in a situation of copyright infringement.

To assist affected individuals, organisations and businesses, the IPO has prepared Guidance, which is very useful to obtain general information on the repeal of section 52 and its consequences. However, it does not provide legal advice which means that independent legal advice should be sought, if required.

Should you wish more information on copyright or any other IP protection in the UK or the European Union, the TrademarkHub team can assist you and your business with protecting, exploiting and enforcing your intellectual property rights. Please do not hesitate to get in touch.

Registering your brand name

Registering your brand name

Registering a brand name can mean two different things. It can be either incorporating your company or registering your trade mark, which would be your brand. The latter is the more common understanding of the sentence ‘registering your brand’.

How do you register your brand?

If by this you mean you are looking to incorporate your company, then you need to visit the Companies House website and follow the process online to form your company. You can use company formation services if you are not comfortable with completing the process yourself. We’d recommend our friends Company Incorporations if you need help with this process.

On the other hand if you want to register your trade mark, then you would have to go through the following steps:

  1. Identify what it is that you want to trade mark. Is it your name, your logo, your slogan or anything unique about your service or product.
  2. Search to see if your trade mark is available. A trade mark has to be unique and original. Registering a trade mark gives you monopoly over its use in relation to specific goods and services. If an identical or similar trade mark exists, it is possible that you may have difficulty in registering it. To find out if your trade mark is available you can conduct a trade mark search in the relevant countries register.
  3. Research and understand the classes you will have to file your trade mark under. Trade mark are registered under classes, which identify specific goods and services. You can learn more about trade mark classes in our post here.
  4. Once you have gone through the above, you should file the trade mark application with the appropriate organisation. Trade marks are territorial so they need to be filed with the relevant countries trade mark offices.

The trade mark process is more complex than incorporating a company. The process can take a few months to complete. In the UK, the trade mark process can last between 4 to 6 months. If you are not comfortable with going through the process yourself, we can help you register your trade mark through one of the three affordable packages that we offer.

If you haven’t yet started your company then registering your brand would be both incorporating your company and getting your trade mark registered. If you have a company, then it would be registering your trade mark.

Learning from Apple’s trade mark issues in China

Apple's trademark issues with 'iPhone' in China

Apple Inc, the tech giant, recently lost a court battle over the use of the word ‘iPhone’ on leather goods in China. A local company called Xintong Tiandi will continue to have the legal right to use ‘iPhone’ on leather goods. As expected, Apple wasn’t happy with the decision and will be requesting a retrial in the Supreme People’s Court. As this trade mark battle continues, what lessons can be learned from this episode?

The trade mark system in China

The Chinese trade mark system is considered to be complex and murky. Trade marks can be filed on a ‘first to file’ basis instead of ‘first to use’ basis. What this means is that any company that files a trade mark first has an opportunity to obtain the registration. A trade mark search in the Chinese Trade Mark Office website shows 247 different results for ‘iPhone’ under different trade mark classes. Most of these are from local companies.

‘iPhone’ trade mark history in China

Apple filed a trade mark application for the word ‘iPhone’ in 2002, but only for computer hardware and software. The registration was granted in 2013. Xintong Tiandi had filed for its ‘iPhone’ trade mark in 2007 when the iPhone went on sale globally. The court decided that trade mark wasn’t popular and synonymous with Apple in China until 2009 when it was introduced in the country. Based on this, they lost the case.

Learning from Apple’s trade mark issues

Apple previously had an issue with their trade mark ‘iPad’, which they bought from the wrong company. It is common to find ‘trade mark trolls’ in China. Companies looking to expand into China might find that their trade mark is already registered. The most effective method of overcoming this issues is to file your trade mark as soon as possible. Had Apple filed ‘iPhone’ under multiple classes it would not have been in the situation it is in today.

Apple will continue to pursue this case because of its financial strength and a strong case, but most small to medium sized businesses would not be in the position to do so. As stated, the best advice is to protect your brand as soon as you create it.