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Brexit and my IP

Our clients frequently ask us about the consequences of Brexit (the UK’s departure from the EU) for their intellectual property (“IP”), including for their trade marks and designs. In the first of a series of articles, we outline the possible consequences of Brexit for your IP rights generally and for your trade marks, in particular.

Brexit and my Trade marks

Any person or company owning an EU Trademark (EUTM) should review its position in light of the UK’s departure from the EU in March 2019. Although the current proposal is that EUTM filings will split in two parts – a separate UK filing as well as an EUTM right covering the remaining 27 member states – in the event of a co-called “no-deal” Brexit, EUTMs would cease to have effect in the UK after 29 March 2019. Unless you already have a separate UK registration, a no-deal Brexit would mean an immediate loss of protection after this date.

Sufficient use of EUTMs

Another aspect of this relates to the “use” requirement for trade marks. To remain validly registered, an EUTM must be used in the EU for at least some of the protected products or services. There is some legal uncertainty as to what this means exactly but it seems reasonable to assume that use in the UK or in the UK + another EU state (e.g. Ireland) would be enough to defend an EUTM from a non-use attack. However, after the UK leaves the EU, a business may suddenly find that it does not have sufficient use of its EUTM elsewhere in the EU to meet the legal use requirement. In such a case, EU-wide protection could be lost.

Registered Community Design (RCDs)

A Registered Community Design (RCD) provides design protection across the EU. The types of designs which can be protected are very wide-ranging. It includes cars, toys, household appliances and, for example, decoration applied to such items of clothing and fashion items. After the UK leaves the EU, however, an RCD will no longer be enforceable in the UK. If a business designs and markets any product – from fashion to household furniture – it will need to know how to protect the designs in the UK after Brexit.

Domain names: .eu designation

If you are the company owner of .eu domain names, you should review your domain name portfolio to make sure that it is Brexit-proof. After Brexit, it is not clear whether a UK company will be allowed to own a .eu domain name. Businesses and companies with .eu domain names should review their domain names and decide whether to transfer ownership into an entity situated within the European Economic Area (the EEA currently comprises the EU, Iceland, Norway, and Liechtenstein).

Contracts

The precise impact of Brexit on contracts is likely to be dealt with in the UK/EU Brexit withdrawal agreements. In relation to IP, traders will need to know what effect Brexit will have on their IP licences and agreements. For example, what happens where an existing licence covers “the territory of the EU”? After Brexit, will that be deemed to include or exclude the UK? If a settlement agreement with a competitor provides that they agree to do one thing or not do another thing “in the EU”, will they be allowed to do that in the UK post-Brexit? It will be important too to make sure that any agreements or licences which are negotiated in the period leading up to March 2019 deal with the effect of the UK’s departure from the EU.

Acting now

The UKIPO has reported a substantial rise in the number of UK trade mark filings since the referendum in June 2016. Traders are acting now to protect their intellectual property (IP) rights rather than passively awaiting the outcome of the Brexit talks.

While it is of course hoped that the Brexit withdrawal settlement will make provision for the re-registration of European Union Trade Marks (EUTMs) and of Registered Community Designs (RCDs) before the UKIPO, the fact is that if the UK and EU should fail to reach agreement, all EUTMs and all RCDs would automatically cease to have effect in the UK after 29 March 2019. Given the potential loss of protection of EUTMs or RCDs in the UK, we are advising clients to ensure that they do not suffer any gap in protection after 29 March 2018. The best way to achieve this is to ensure you have separate UK national registration of your trade marks and designs and, at the least, UK national registration of your key brands.

Here at the Trademark Hub, we have a wealth of experience in helping the full spectrum of brand owners – from sole traders and SMEs through to multinationals – to search, protect, and enforce their brands and designs both in the UK, in Europe, and around the world. We are always happy to answer your questions, including working with you to protect your IP against the effects of Brexit, with or without a UK/EU Brexit deal.

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.

A Startup’s Guide to Copyrights, Trade Marks & Patents

A guide to trademarks, patents and copyrights for startups

As a growing number of people start their own businesses, they have to understand the basics of various matters which will affect their business. One area that needs to be understood by entrepreneurs is intellectual property (IP). In this post, we’ll be defining the difference between copyright, patents and trade marks and how important they can be!  Read on for a basic overview regarding what protection you might need to consider for your company and products.

Copyright

A copyright is one form of intellectual property rights and it protects the expression of ideas. These include (but not limited to) architecture, art, books, computer software, music, and photographs.

An important aspect to note however is that while copyrights protect the expression of ideas, they do not protect the ideas or concepts themselves.  For instance a copyright can protect a particular photograph of a tiger, but other people may still create their own photographs of the same type of tiger.

Sometimes there is a requirement that the work is “an original work of authorship”, so titles, facts, phrases etc. typically can’t be eligible for copyright. However, there are some unique circumstances which allow this, so it is worth checking with a lawyer who specialises in IP.

Here in the United Kingdom there is no copyright registration procedure and therefore businesses can include the “©” symbol or the word “Copyright” with all materials it distributes. They should also include the year of first publication, the name of the owner, and the language “All rights reserved.”

When it comes to using third-party photos, music, or writings on website, marketing materials, etc. It is advised that you should find out if the piece of work can be reused for commercial or personal purposes. If it isn’t, then you could be subject to copyright infringement from the owner of the original piece of work.

Trade Marks

As you would have read from our other blog posts, a trade mark is a sign which distinguishes your companies products or services from its competitors. It can be a word, symbol, logos, slogans that identify the source of goods and/or services.

One of the most important aspects of a trade mark is that it adds consumer confidence in a product or service by association. Everyone recognises the trade mark symbol and therefore it acts as a great marketing tool.  Once you have a registered trade mark you can use the appropriate trade mark symbol ® next to your brand name.

As a startup you should look into protecting your brand early by registering your key trade marks. The cost of not protecting your brand can be very high, so getting a trade mark in the right stage of your startup is essential. In the UK and EU, trade mark registration can be done online and there are a number of trade mark packages available to choose from. Trade marks need to be filed in the appropriate classification, which can be a complicated process for most and is the reason why you should use a trade mark attorney to register your application.

Patents

It is extremely important for startups and businesses to understand the function of patents and how they fit into their business.

Not every startup business will warrant the need to build a patent portfolio, and patents are not easy to register. Briefly, patents protect your original inventions from your key competitors, and they also help you reduce the risk of being exposed to assertions of patent infringement by competitors and third parties.

An invention that hasn’t been introduced in the market is worthy of a patent application. In the UK, a website cannot be patented even if it offers a new function. If you feel you have a distinctively different website or app, then you should consider speaking to an IP attorney.

Patents are the most expensive and time consuming of all the types of IP. A patent gives you the exclusive right to make, use or sell an invention, meaning that it can exclude a competitor from making or selling the patented invention.

Patents have many additional benefits including helping to attract investors.  Plus, the filing of a patent application will enable the company to advertise “patent pending” along with its product or service, so it will help with investors, consumers etc.

Conclusion

So that should hopefully explain a little bit more about the ways you can protect your ideas, work and business, but do check out our infographic on copyrights, trade marks, patents and designs for a quick summary and FreemanHarris are on hand to help you if you have any questions.