Intellectual Property Law
We are here to give advice and assistance on the protection and development of your intellectual property rights and assets, either in contentious or transactional matters.
Our expertise includes:
- Entertainment law
- Sports Law
- Licensing, brand acquisition and sale
- Trade Marks and Passing-off
- Registered and Unregistered designs
- Confidential information and know-how
- Copyrights and Database rights
- Data Protection
- Freedom of Information
Being in the public eye can be daunting, however we are here to guide and advise you in navigating the best path, this includes advice on:
Print and broadcasting media: advertising models, author agreements. Reputation management of companies and individuals, book publishing agreement, pre-publication advice.
Visual Art and Design: fine art, royalties, moral rights.
Unfounded accusations can cause enormous distress, but with our assistance we can help you take the appropriate action.
Defamation occurs when defamatory words or writing have caused or are likely to cause serious harm to the reputation of a person or company.
Thus a business or individual can seek to protect their reputation by taking legal action for defamation.
The issue of privacy has become of great importance in recent years particularly if you come under public scrutiny, more so if the matter concerns one’s private life or company information.
Privacy is where information or conduct should be kept private by an individual or company. Privacy actions have been successful where private and confidential information is disclosed in breach of a duty of confidence established by way of a contract or relationship.
Licensing, brand acquisition and sale
For some businesses Licensing is a very economic market entry strategy and also a means by which to expand a business. We are able to advise on software licensing agreements for acquisition or disposal, video games development, technology licenses, production agreements, SMS content and websites, including the licensing of trademarks and trade names.
Franchising is the granting of a licence by one person (the franchisor) to another (the franchisee), which entitles the franchisee to trade as their own businesses under the brand of the franchisor, following a proven business model. Most commonly they are seen in the consumer retail sector. From the franchisor’s point of view, franchising is a way that a business can be rapidly expanded using the capital and efforts of franchisees whilst the know-how and goodwill are retained by the franchisor. From the franchisee’s point of view, a good franchise comes with a guaranteed brand name, know-how, systems and a ready-made customer base that makes running a successful business much easier. There are around 40,000 franchise outlets in the UK and franchise agreements are long and complex documents. We can help you set up a franchise as franchisor if your business model would benefit from it; or guide you through the pitfalls of signing that franchise agreement if you are thinking about becoming a franchisee.
Trade Marks and Passing-off
A trade mark is a “brand” that indicates the owner of goods or services and is expressed in words, slogans, logos, domain names, shapes and packaging of goods. If the trade mark is registered, the owner has the exclusive right to use the mark, which can last indefinitely, subject to renewal every 10 years. The mark may apply territorially for the UK only or for Europe (a community trade mark CTM) and for many other countries throughout the world.
If you have a trade mark which is not registered, it’s referred to as an unregistered trade mark. The owner can protect his unregistered trade mark by bringing an action against an infringer for “Passing-off”, which is not as strong or as easy a claim. So it’s better to have a registered mark.
Depending on your type of business and the markets and territories in which you intend to trade, we can advise you accordingly. We have many years of experience of advising clients in this area of the law.
Registered and Unregistered designs
Design rights – protects the appearance of the whole or part of a product resulting from the features and the design of the shape or configuration (whether internal or external) of the whole or part of an article.
The designer is the first owner of the design. Registration is through the UK Intellectual Property Office or in Europe via the OHIM.
Registered designs essential feature is to protect both three-dimensional and two-dimensional designs and registration gives
- Up to 25 year monopoly
- For the whole or part of a product – lines, contours, shape, texture or materials.
- The design should have some novelty and individual Character
Unregistered designs – UK unregistered design rights give the owner the right to protect the appearance of three-dimensional functional products against unauthorised copying or dealing in infringing copies
- Automatically arising upon creation of the design;
- Duration can last up to 15 years;
- Weaker than registered design right
In addition to UK unregistered design right there is the European Community Unregistered Design right.
The Unregistered Community Design gives the owner the right to prevent any unauthorised copying or dealing in infringing copies throughout the European Union. The right arises automatically when the goods are first made available to the public in the Community and, although it is slightly wider in scope than the UK one, lasts for only three years.
Breach of design right is a very useful tool when competitors copy your products (or obtain grey imports from China or similar non-EU manufacturing centres) as it applies automatically to very many manufactured products. If you think a competitor may be copying your product, then don’t hesitate to ring our dispute resolution team.
Confidental information and know-how
Confidential information plays a crucial part in the transfer of knowledge. It can be the most valuable asset of any business. It is therefore important to identify such information and mark it and store it securely.
Know-how can be referred to as ‘closely held’ information in relation to inventions, formulas, designs, drawings, procedures and methods, together with accumulated skills and experience in the hands of an individual or company which may offer a competitive advantage. Know-how is a ‘private intellectual property’ and may be transferred by way of license.
If you are about to have discussions with others about buying or investing in your business or the possible entry into joint ventures or other long-term commercial agreements, you should always make sure the other side is made aware of the confidential nature of the information being shared and have them sign a non-disclosure agreement (NDA). We can assist in the negotiation and drafting of the terms of the NDA.
Copyright and Database Rights
These are similarly rights that arise automatically on creation of works by qualifying persons and last for many decades (usually 70 years after the death of the creator). Generally the copyright of a work vests in its maker, unless that person is creating the work in the course of his or her employment, in which case it will belong to his employer. If you sub-contract out your software coding, website or graphic design, photography, creation of advertising copy or translation of brochures etc. it is critical to make sure that you get assignment of any copyright to you – or you will at best be left with a licence to use but no ownership of the right. Database rights are an additional right (very similar to copyright) and are used when the works comprised in a database are not sufficiently original to engage copyright protection but nevertheless reflect significant work being put into the database (the most famous examples are TV schedules and football fixtures).
Our business team often acts in the licensing of such rights whilst our dispute resolution team is experienced in both their enforcement and defence of allegation of breach of them.
Inventing things is great, particularly when it helps others, but it’s even more rewarding if your invention can earn you money. If it can earn money, then it is best to get that invention patented, so that you can defend it from copying (whether intentional or accidental).
To be granted a patent, your invention must be all of the following:
- something that can be made or used;
- new; and
- have an inventive step – not just a simple modification to something that already exists.
Not every invention is patentable and expense can be a huge hurdle to getting your invention patented, so ensure that your invention is not excluded from been patented.
Our team can refer you to the appropriate specialist patent attorney to help you get your invention patented as well as dealing with patent licensing and enforcement actions.
Data Protection and Freedom of Information
These are very complex and much misunderstood areas of law. Data Protection Law affects virtually every business in the UK and, with the growth of data held and increasing connectivity and access to it, compliance with the law is recognised as being of increasing importance in many business sectors.
Freedom of Information is a similar area that needs to be understood by any supplier to public bodies.
Our commercial team can help you navigate the minefield of compliance and make sure that your agreements and processes legally enable you to use the data you need in the way you want to.