10 November, 2023
Securing the necessary Intellectual Property (IP) protections should be a priority for any business considering exploring international trade - particularly given up to 80% of a company's value lies in its IP.
Failing to take the appropriate steps to safeguard a brand's IP can incur unnecessary costs, delays and, in some cases, could curtal expansion plans completely.
Forbes Solicitors' Daniel Fletcher outlines the steps companies should take to protect their IP before pressing ahead with plans to trade overseas, preventing the likelihood of products, branding or services being copied or imitated.
It's important to remember that IP rights are territorial, which means a brand or business is only protected in the country where they were granted or registered. Businesses must register their rights abroad in order to ensure that brands are protected in the markets they want to trade in.
Registration requirements do vary by country so it's advisable to secure professional advice to navigate the process, ensuring that design rights, patents and trademarks are all covered. This will prevent any avoidable mistakes - for example, copyright is not a registered right, but instead arises automatically on creation or publication as per the Copyright, Designs and Patents Act 1998.
Trademark registration covers both words and logos and is the most widely used form of IP protection, providing businesses with exclusivity over the mark in question. It prevents attempts by a third party to trade under a similar name, strapline or logo, and avoids similar marks being registered. Registration should be completed at the earliest opportunity before trading in a new market - businesses will need to apply to the trademark office in each company they wish to operate in.
Businesses should remember to trademark products in countries where products are manufactured, whether they're sold there or not.
When it comes to patents, their purpose is to prevent third parties from making, selling or using an invention in the UK - as with trademarks, it's important to make the necessary applications for cover in each overseas market a company will be trading in.
To protect a patent in Europe, businesses can apply through the European Patent Office (EPO). It's possible to apply for protection in individual countries in Europe by applying to the national patent office in each relevant country. A full list of all International IP Offices is held by the World Intellectual Property Organisation (WIPO) however, it's a complicated process so businesses are advised to take legal advice.
Copyright protection is slightly more straightforward and is largely in line with the UK process due to several international treaties. This means that, where a piece of copyrighted work belonging to an individual or business based in the UK falls under the scope of one of the treaties, it will automatically be protected in each of the countries signed up to the agreement.
It's important for businesses to perform the necessary checks in good time in order to establish what may or may not be protected in overseas markets.
It is important to take legal advice when trading in overseas markets. There are some rules which, if applicable, can make life far more straightforward when it comes to securing the necessary IP rights - legal experts will be familiar with these and will advise accordingly. For example, if a business filed a trademark or design in the UK during the last six months, they fall within a 'priority period', allowing them to file in most other countries and back-date the date of protection to match the UK right. For patents, the period is slightly longer, allowing up to one year.
As a final layer of protection, I'd recommend businesses consider taking out IP insurance - at least until a business establishes itself in new markets, overcoming any initial hurdles.
An experienced legal advisor will support businesses throughout the process, ensuring that they're dotting the Is and crossing the Ts to prevent errors and, crucially, giving brands the very best chance of success as they embrace new and exciting opportunities offered by International Trade.
For more information contact Daniel Fletcher in our International department via email or phone on 0333 207 1145. Alternatively send any question through to Forbes Solicitors via our online Contact Form.
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