Licencing,Trade Mark Registation & Trade Secrets

Intellectual Property Solicitors

 

Brand, reputation and intellectual property – our nationwide intellectual property lawyers help you manage risk and maximise value from IP.

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IP – Copyright, Trade Marks,

Trade Secrets

When it comes to choosing an intellectual property lawyer, you’ll probably want someone who is fast moving, responsive, creative and knows their stuff.

At Your Business Lawyer, our IP lawyers specialise in advising small and medium sized business with their intellectual property matters. As our client you’ll get

  • Excellent advice – both legal and commercial
  • Fast and responsive – deals over the line as quickly as possible
  • Plain English – limiting jargon and legalese
  • Convenience – we’re digital, so there’s no traipsing into a boardroom office for constant meetings
  • Fxed fees – so you know exactly what you’re paying in advance.

What's Intellectual Property (IP)?

IP is all about the creation of the mind – copryright, trademarks, designs, patents. 

Trade Secrets

Sometimes information cannot be protected by registration, but your business doesn’t want employees leaving with confidential information to use at a competitor.  

What is a Trade Mark?

Let’s start with what a trademark is.

A trade mark is a way a business can protect its brand  – usually a name or words a motto or a logo. However, you can also register sounds, colours and shapes – although they are harder to register.

There’s a few steps to trademark registration. Firstly, the trademark needs to comply with the requirements of the Trade Mark Act 1994. We’ll advise you whether it does or not.

Trade Marks can either be in Word form or a Logo Form. For example:

Words – Nike, Addidas, Puma

Logos:

A trademark may consist of:

  • Words (for example, KODAK for cameras or JAGUAR for cars).
  • Slogans (for example, JUST DO IT for Nike sportswear).
  • Designs (for example, a harp for Guinness stout).
  • Letters (for example, RBS in respect of banking services).
  • Numerals (for example, 501 jeans).
  • Internet domain names (for example, amazon.com).
  • The shape of goods or their packaging (for example, the shape of a Coca Cola bottle, registration of which was denied by the House of Lords under the 1938 Act, or the triangular shape of Toblerone chocolate).
  • Smells (for example, Sumitomo Rubber Industries’ registration of a floral fragrance reminiscent of roses as applied to tyres).
  • Sounds (for example, the Intel four-note musical jingle).
  • Colours (for example, Heinz’s registration of the colour turquoise for use on tins of baked beans).
  • Gestures (for example, Asda has registered a double-tap on a jeans or skirt back pocket as a trade mark).
  • Moving digital images (for example, the Intel “leap ahead” animated logo).

Any sign which can be represented graphically is potentially registerable as a trade mark.

Why register a trade mark?

Registration of trade marks allows the brand owner to protect itself against competition.

Without registration, one must rely upon common law of passing off, which are more difficult, more expensive and time-consuming to run.

Upon registration, the owner gets a statutory right to the exclusive use of the trademark in connection with the goods or services it is registered in (called classes).

Registration of a trademark gives the owner the right to sue for trade mark infringement if any person uses:

  • an identical sign for identical goods
  • an identical sign for similar goods
  • a similar sign for identical goods
  • and in some cases, a similar sign for similar goods.

In order to be registerable as a trade mark, the mark must be:

  • distinctive – that is capable of distinguishing itself from other brands
  • able to be graphically represented,
  • can be a 3d shape as long as it is not the function of the object or a container
  • cannot be merely descriptive
  • cannot be deceptive (e.g calling something Gold if it is made of aluminum)
  • cannot be a common surname or geographical name
  • cannot be a national flag
  • must not be similar to an earlier registered trademark

There is a risk, then, that if you seek to register a very simple logo with a icon and name, that it might not be registerable as it would not be distinctive or novel.

How do you register a trade mark?

The expert trademark lawyers at Your Business Lawyer can help your business with trademark registration in the UK.

An application to the UK Intellectual Property Office (IPO) needs to be made. They the “examine” the application to ensure it meets the statutory requirements mentioned above. If they consider it does, then they will publish the trademark for a period of opposition to allow other trademark owners to contest the registeration. After the opposition period, if unopposed, the trademark will finally be registered and a registration certificate provided.

When registering a trade mark, you need to specify what goods and/or services the trademark will be used for. There are 45 different classes of goods and services and it is important to get this all right. Each class has hundreds of sub-classes. For example, you might be a business coach who also sells books and teaches online, and therefore that could be three different classes.

You probably will not be able to register in all 45 classes even if you wanted to. You’d need to demonstrate a real intention to trade goods/services in each class and moreover, if a trademark is used over a five year period, then registration could be invalidated and cancelled for no use.

Our trade mark registration lawyers can help from just £500 plus VAT (plus registration fees).

 

One big advantage of owning a registered trademark is to stop others from using it. So what happens if some does start using your trademark – known as trade mark infringement – and what can you do?

Trade mark infringement occurs where a registered trade mark is used in the course of trade without the proprietor’s consent in any of the following circumstanceS:

  • The sign used by the infringer is identical with the registered trade mark and is used in relation to goods or services which are identical with those for which the trade mark is registered;
  • The sign used by the infringer:
    • is identical to the trade mark but used on similar goods;
    • or is similar to the trademark but used on identical goods;
      • And in both case the mark causes confusion 
  • The sign used by the infringer is identical or similar and used on any goods, where the registered mark has a reputation and the infringer takes unfair advantage of that reputation. 

Letter of Claim / Letter Before Action

If your businesses faces any of the above – whether as trade mark owner or alleged infringer – then you need expert trade mark solicitor advice. The trademark infringement specialists at Your Business Lawyer can help.

If you need to stop someone from using your trademark, the first step will be an urgently written letter setting out the claim – detailing the trademark, the infringement and the next steps. Sometimes you might want to seek damages. Sometimes you might just want them to stop.

We’d normally ask the infringer to enter into undertakings agreeing to stop – the American’s call the letters a “Cease and Desist” letter but in the UK we don’t really call them that.

If you’ve received such a letter, then you’ll need advice too – should you concede and sign the undertakings or do you need to fight the claim? Your Business Lawyer’s expert trade mark dispute lawyers will help.  

Trade Secrets / Confidential Information / Restrictive Covenants

Not everything can be protected by registered intellectual property, and yet your business’s trade secrets, confidential information and know-how, is crucially important to protect. 

You have to give access to this information to your employees, consultants, workers etc. But how do you stop them from misusing the confidential information. 

It happens a lot; a key person leaves your business, joins a competitor and takes information, contacts, clients. 

What you need is an expert trade secrets lawyer like some of the team at Your Business Lawyer. 

We can help: 

  • Draft robust contracts of employment or consultancy contracts, which contain strong but enforceable restrictive covenants
  • Draft confidentiality agreements with suppliers or customers (NDAs, non-disclosure agreements etc) .
  • Look to litigate where someone has mis-used your confidential information or acted in breach of a restrictive covenant. 

What are restrictive covenants? Are restrictive covenants enforceable? 

A restrictive covenant is an agreement (usually in a contract of employment or other contract or agreement) in which one party agrees not to do certain things post-termination.

The law on restrictive covenants is complex and specialist advice is required. 

Restrictive covenants, if not drafted properly, can be void and unenforceable in Court – they need to protect a businesses legitimate interest, be limited and reasonable in their scope (time/duration, geography, clients/customers etc)

But done properly, a restrictive covenant can help stop the flow of confidential information, know how and business. 

There’s a number of types of restrictions commonly seen, including: 

  • Non-solicitation covenants – the employee cannot solicit or approach existing customers
  • Non-dealing covenants – the employee cannot have any dealings with the specific customers
  • Non-poaching and non-employment covenants – the customer/supplier cannot poach your staff or employ them
  • Non-competition covenants – the employee cannot join a business or set up one in competition with your business
  • Geographical restrictions – the cannot work within a specific geographical area or radius of your business premises. 
Once you’ve registered your IP – whether that is a trademark, design right or patent – the next stage in your business’s evolution may well be IP exploitation and commercialisation. In simple terms, letting someone use your IP for profit.

Intellectual Property such as patents, trade marks, copyrights and design rights, subject to certain protections for the owner of the right. That owner enjoys certain exclusive rights to use and exploit the IP as an asset, but can benefit from permitting licensees to use it while keeping overall control and ownership for itself.
The most common benefit to the licensor is payment, in the form of so-called royalties calculated as a percentage of net profits, but income is not always the main goal. Licence agreements vary based on many factors, including the types of IP being licensed and the context in which the licence arises. Common IPlicensing contexts include:
  • Generating revenue through commercial exploitation of IP.
  • Expanding a business (geographically, or into new product lines).
  • Settling infringement claims.
  • Selling a business or assets, where the vendor continues to need the IP for its retained business.

Whatever the deal, Your Business Lawyers can help you with expertly written contracts and agreements such as:

 

Copyright in the UK generally exists automatically – and there is no standardised way of registering your work. 

However, it is still an important aspect of IP for a number of small and medium sized businesses. 

How can Your Business Lawyer help with Copyright?

We typically get involved in copyright infringement and disputes. 

If you’re looking to exploit your business’s copyrighted materials, then Your Business Lawyer can help you sell, licence or franchise your copyright – putting in place all the proper agreements to maximise protection while giving you the commercial flexibility required to get the right deal. 

You may have received a letter of claim/letter before action (also known as a cease and desist letter) from another law firm. You’ve used some copyrighted material – a website, a photo, or other content – and are now being threatened with legal proceedings. One of Your Business Lawyers can help. 

Recent copyright matters include: 

– unauthorised use of privacy policy on a website

– copying whole website

– use of a US Basketballer’s name on products sold online

– copying of franchise-style manuals

 

At Your Business Lawyer, we like to try where ever possible to agree fixed fees, or capped fees, for each matter. We find that this gives our clients better certainty than an hourly rate. Of course, there may be times where additional work is required or the deal changes, and we will always discuss and agree variations to the original fee. All fees are subject to Nexa Law’s terms of business, which will be provided prior to engagement.

Trademark Registration: From £500 plus VAT

Trade Mark Infringement claims: £1500 plus vat upwards

Typical hourly rate: £350 plus VAT

Why do you need an Intellectual Property Solicitor?

Put simply, it’s complex and you need a specialist. If you’ve invested into your IP, you’ll want to protect it.

You’ll want fast, robust, knowledgable lawyers fighting your corner.

Do you need a trademark registered? We can help register your UK trademark. 

Are you looking to stop someone using or copying your brand? Get in touch today. 

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    From Our Founder

    Why Choose Your Business Lawyer?

    Hello, I’m Steven Mather the founder of Your Business Lawyer.

    I’m passionate about providing excellent service to my clients. I’ve been doing it since I qualified in 2008, through a route which saw me become partner of Leicestershire based firm by age of 28, be featured in The Times as Lawyer of the Week, be a runner up for Solicitor of the Year and more besides,

    I love working with small and medium sized businesses and the team of consultant solicitors I’ve assembled have huge expertise and experience in providing excellent service to clients.

    It’s not just me saying it though, take a look at our client reviews – 5 stars all round.

    But if you’re still unsure, pick up the phone or drop me a message and let’s have a free no obligation chat about your requirements and why I think Your Business Lawyer will be the best choice.

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    Your Business Lawyer
    Nexa Law @WeWork
    5th Floor
    10 York Road
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    SE1 7ND

    Office: 020 7504 7071