Now is a good time to review your critical business arrangements such as IPs – what is in place, what is not in place and what you need to put in place going forward from .
Protecting Your IP Internationally
There are a number of key IP rights:
Trade Marks (TMs)
- These need to be registered in new jurisdictions.
- A TM is a key business asset for both the continuation of a business as well as its value.
- A TM can be a logo, a device, a tune, or even a smell.
- It’s expensive to TM world-wide, therefore you need to consider where you need to do it to protect existing markets as well as potentially new markets.
- Madrid Protocol Filing is an international filing procedure that allows you to make one application which could then be applied to different international markets without further applications.
- You can register country by country, or for instance in the EU one application covers the majority of member states.
- You may need a translation of your brand, such as in for China.
- Always get a thorough professional clearance search done on a market before becoming set on a new brand, or on registering an established brand in a new market.
Copyright
- The key thing is to maintain ownership.
- Place copyright notices on all information and communication.
- Copyright protection incudes websites, databases as well as technical information.
- A copyright is nonregistered, but it is enforced under the Berne Treaty.
- Where there are commercial agreements where licencing materials is involved it is important to ensure it is clear to all parties you retain copywrite, so ensure it is placed within your agreements with any partners.
- Copywrite does not need to be registered as it is an automatic right.
Designs
- Designs cover things like shape and appearance.
- There are unregistered and registered designs.
- Registering the designs offers the best protection. The Chinese for instance will only take any legal claim against design infringement if you can show registration in the UK or the EU, even if this is not in China.
Patents
- Patent protection can be sought in the UK or any other country or jurisdiction such as the EU patents.
- Ensure you enter into None Disclosure Agreements (NDA’s) in order to gain the right protection before you start to disclose information to anyone. This is critical.
- Gaining patent protection in markets is an expensive process, therefore it worth gaining strategic patent advice regarding jurisdiction prior to registering.
Make sure you police your IP as this will not be done for you, that is unless you pay for it to be done. Ensure no one else is copying you in the jurisdictions you are operating in and have protected. In China it is highly likely that if you have not registered your brand then someone else may well do this. The first person to register a brand in China is the one that has control of it. There is a watching service for your TMs using local TM offices which is well worth considering if you do not have anyone else on the ground within the jurisdiction.
Commercial Contracts
- It is vital to carry out multi-layers due diligence ahead of doing any business with partners.
- The contracts need to be formal legal agreements. Ideally draft contracts under UK jurisdiction as it is far easier and more cost effective for a UK company to bring legal action within UK courts. There is no translation required for a start for the UK company. It is not always possible, but where you can, do it.
- Make sure you have proper IP protection within all contracts.
- Limited access of usage on every element of your IP. Ensure you have the guide for IP use in place for those are authorised to use it in order to specify what they can use, how and where they can use it. This will reduce any confusion and help in any dispute.
Distribution / Agency Contracts
- Ensure you legally define the geographic area of any relationship.
- Ensure you legally limit the competing products any business partner is permitted to offer alongside your own products/services.
- When you put an agency agreement in place make sure it is in-line with agency rights within that jurisdiction. There are specific EU agency regulations. If you fall foul of these there can be indemnity and compensation terms under the EU regulations if you terminate an agreement. Sometimes it may seem you are not working on an agency basis with someone, but beware, your relationship might come under local legislation.
Licensing/Franchising
- It is important to prescribe the correct usage of all branding materials.
- Ensure they are protected within the local jurisdiction.
- If you enter into an agreement, make sure the protection is in place first, otherwise the distributor may well decide to register your brand themselves. If they can then have the product produced elsewhere if there is no patent protection, then they suddenly made a new market very difficult for you to enter. This would mean you would have to do so under a different brand.
Website Terms and Conditions as well as Sellers Agreements
- Consult with regional experts.
- Ensure there is product liability insurance in place.
- Check the data protection with international selling agreements.
- Check they key clauses.
Where to trade Internationally?
Is it worth operating centrally from the UK, or is it worth setting up in a different jurisdiction? Various considerations need to be taken into account such as tax.
In some jurisdictions it is not possible to run your own business or factory, in which case you will need a third party to set this up and operate it for you.
General Data Protection (GDPR)
- This is a legal requirement for businesses to let people know how their data is being used.
- There are big fines for businesses failing to store data correctly of around 2-4% of annual turnover or even more!
- Major databases have been deleted from companies with much valuable customer data lost where it was considered not possible to configure and store it safely, but don’t panic, seek advice.
- It is important to get the right consents and security measures in place.
- Be aware that other businesses will ask whether you are compliant, as they have a responsibility for the date they share with you.
- Two major points – you are responsible for data after it is shared with other people, and GDPR protects EU and UK citizens data world wide.
- GDPR must be written into contractual agreements, and you need to audit your partners to ensure they are taking care of that data.
- Countries with bad data protection regulation require regular particular attention.
Avoiding Brexit Breakdown
- Currently EU can super-cede UK law.
- Potential changes for TMs, patents, copyright and design rights.
- Contracts may also need to be updated when it comes to IP and data protection.
Trade Marks (TMs)
- TMs are territorial rights.
- You can register a TM as a UK mark or a European Community TM covering 20 countries, However, this will end with Brexit.
- It has been suggested that existing and pending TMs will be duplicated and carried over in the UK. New brands will however need UK and sperate EU TMs.
- A TM can be revoked for none-use if it has not been used in last 5 years. This could create an issue with a split UK/EU mark, so if it is only use in UK your EU mark might be revoked. It is therefore important to look at what you want to protect and where.
Designs
- There are two types of design protections – Registered Design Rights (RDRs) and Unregistered Design Rights (UDR’s)
- In the UK you have protection from UK design rights and EU design rights. The UK rights lasts for 25 years and the unregistered rights last for 15 years. In EU you have a registered right for 25 years and an unregistered right for 3 years.
- When Brexit happens, the UK will no longer be covered by EU RDRs or UDR’s.
- The UK rights are not as extensive as the EU rights in relation to the unregistered design rights cover the whole look of a product, texture and covering. The UK UDRs covers only the commercial aspect of a design, something that is novel.
Copyright
- Countries operate on a domestic law on copyright enforceable internationally by the Berne Treaty, where that is a country is a signatory.
- Copyrights protect expression of ideas, artist work – sound, recording, broadcasts. It is the expression, not the materials that is protected. A poem needs to be written down before it’s protected.
- Literally copyright is 70 years after the death of the author.
- The US is different, as copyright material must be registered, which can get complicated.
- The EU are keen to establish a union-wide right, but this seems a long way off.
Patents
- A product has to have an inventive step, not a compilation different elements already under patent or in the public domain.
- Legal protection for a new invention lasts up to 20 years.
- You can apply for a UK patent or an EU patent which covers up to 38 countries developed following the Patent Cooperation Treaty allows each country to inspect the same application information in order to reduce time and therefore cost.
- There are moves to try and establish a unified patent – leading eventually to the Unified Patent Court, which will alleviate the slow process. This is not an EU directive there Brexit will have no impact.
- Key to remember is that if disclosure of the patent is required, it is essential to have a confidentiality Agreement (NDA) signed by the party you are disclosing the patent to.
International Contracts and Terms
- Important to assertively and deal with the priorities involving IP and data protection first.
- Review all agreements where they refer to IP assets and personal data.
Data Protection
- Data Protection is the safeguarding of personal data in supplier agreements.
- It is important you have the ability to audit suppliers ability to comply.
- Watertight GDPR compliant agreements with companies outside the UK and EU.
Registered IPRs
- Review the registration status of registered IPRs if relied upon heavily to ensure their status remains after Brexit.
- Ensure agreements with partners in relation to this are updated to reflect any changes.
Agreements regarding data protection and registered IPRs with others must be on the basis of the laws of England and Wales, to be enforceble by a UK Ltd company.
The Law is always changing, therefore it is important to see law changes as an opportunity and not an inconvenience.