Intellectual property

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Intellectual Property

Although you can’t always see or touch IP, it’s no less of an asset – and the only way to maximise its return is by properly looking after it, says Sarah Miles of Nockolds Solicitors. Here are her five top tips on how to save money on your intellectual property… 

1. Do your research

Miles says: “Before you decide on a name for your new business and spend lots of money on branding, do an internet search, a Companies House search and a trademark search – to see what else is on the market and to establish whether the name you’ve picked is unique. If it’s not, then later down the line someone might approach you and say you’re infringing on their trademark – even if it’s not exactly the same it could be in the same category of products or services. If you do your research from the outset it can save a lot of money.”

2. Register your trademark

“Just because you’ve registered your business as a limited company with Companies House doesn’t mean your business is protected – or that you can stop companies with a registered trademark accusing you of infringement. Once you’ve carried out thorough research on whether a similar trademark exists, consider registering your own. The Intellectual Property Office website (ipo.gov.uk) is very useful. Again, if you want to save money, the key is to do the legwork at the outset.”

3. Make sure your company owns its IP

“Businesses often commission someone to design a logo or product for them, but this doesn’t mean they are automatically the owner of the work – or the IP rights. These rights have to be formally assigned. Innocent Drinks, for example, had just this problem with their logo. They didn’t correctly deal with the ownership of IP at the outset, the brand subsequently became successful, and when they came to register the logo as a trademark a third party piped up and said they didn’t own it and couldn’t exploit it. It took the company several years and numerous court cases to obtain ownership, which would have been avoided if they’d correctly assigned the IP rights in the beginning.”

4. Ensure your company, not the directors, owns the IP 

“When people launch a business they often set themselves up in a reverse order – they have their IP or their trademark, but don’t have an established company so the IP is registered in the name of one of the founders rather than the business. Once the business is incorporated and trading is going well, the IP will still belong to the individual, unless you have arranged for it to be registered to the company. It’s crucial that you get this in order, because later down the line there could be a disagreement between the company and the director who owns the IP. If you are looking to sell the business at any point, the transaction could cause further complications and may result in the buyer asking for additional seller warranties or indemnities.”

5. Use non-disclosure agreements

“An idea on its own doesn’t necessarily have any form of tangible IP protection. Businesses often find they have to talk about ideas if they need funding or to get another company on board. There are lots of reasons you may need to enter into discussions with third parties, but you can’t assume they will consider the conversations confidential. If you get the third party to sign a non-disclosure agreement it will allow you to be frank and open, but will provide some protection for you. They aren’t expensive contracts to have drawn up and it’s worth spending a little bit of money, so that you’re covered, rather than getting a few months down the line and arguing that they stole your idea.”

Sarah Miles is an associate solicitor at Nockolds Solicitors

For more information about protecting your intellectual property, visit nockolds.co.uk/for-your-business

@legal_expert

About author

Hannah Baker

Hannah Baker

Hannah Baker is deputy editor at Think Publishing. Previously she worked as a features writer and sub-editor for Director magazine

1 comment

  1. Christine Jennings 10 June, 2015 at 11:38 Reply

    Hello Hannah,

    An informative article.

    I would add ‘No1’ to avoid descriptive names for your trademark. In my experience too many businesses attempt to register a trademark which is a descriptive word or term and consequently leads to refusal. This will increase costs rather than reduce them.

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