In this blog, Maria Lampert, Intellectual Property Expert at the Business & IP Centre London talks about the importance of intellectual property.
The other day I was doing some washing and had a look to see if my new slippers were washable. Surprisingly, as well as washing instructions, the inside label also said ‘UK Patent 2404564’. I say surprisingly because not many businesses put their registered IP details on their products and, as this particular company was Totes Isotoner Corp they may have just relied on their registered trade mark to deter would be infringers (they have 446 trade marks that designate the UK!).
Every business will have intellectual property (IP) of some form regardless of whether they offer products or services, with their trade mark, under which they sell those goods or services, being the most valuable. Branston Pickle for example was sold to a Japanese company, the Mizkan Group, in early 2013 for £92.5 million. Their only physical asset was the company’s factory in Bury St Edmunds where they employed just over 350 people. The majority of the money paid was for the goodwill built up under the brand; with the Mizhan boss quoted as saying “Branston Sweet Pickle is an iconic brand that has established a market leading position”.
Every business will have a trade mark of some sort whether they are a café or restaurant, a training or manufacturing company or any other form of business. So it is important to choose one that is easy to remember, to say and is not similar, visually or phonetically, to any other trade mark owned by another company operating in the same area of business. Care should also be taken to ensure the proposed trade mark is not slang or a swear word or any form of abuse in the language of any country with which the company intends to trade.
David Born, founder of Born Licensing, helps licence intellectual property for advertising and consumer products in entertainment such as film, TV or animation, “IP can be licensed in a variety of ways such as existing footage, custom animation, the likeness of a character, thematic elements, iconic phrases, on physical product or a combination of the above. We also assist with licensing toys and games, celebrity icons, emojis, video games, viral videos, publishing and theatre properties.”
What are the other types of registerable IP?
Registered designs protect the shape, configuration, pattern or ornamentation of an object basically the ‘outward look’ of the object. This form of IP is key to many industries including, fashion, jewellery, furniture, kitchen wares, etc.
Patents, on the other hand, protect how something works or the method of making it. For something to be patentable it has to be new, innovative and capable of being made or used in some kind of industry.
Going back to my Totes Isotoner slippers. Totes have French design number 966665-0001 design registration to protect its appearance and a patent GB2404564 to protect its ‘tufted foam insole and upper’. Protecting both design and functionality can be key to a products commercial success. It is not unusual for an item to be covered by more than one form of IP.
Other forms of registerable IP includes those David helps clients with, and has seen an increase in famous character advertising over the years, meaning permission has to be sought from the IP rights holders. “The most high profile example is the Moneysupermarket campaigns we worked on, in particularly the one that starred He-Man and Skeletor dancing to Dirty Dancing. This campaign licensed both the characters from IP owner Mattel as well as the Dirty Dancing dance from IP owner Lionsgate. We also helped Moneysupermarket license Action Man, Sindy and Thelma and Louise. There is a real appetite to license IP in advertising because it has proven to be hugely effective. It cuts through the clutter of the many advertisements we see on a daily basis and gets people talking. Each time a new Moneysupermarket campaign launched it was trending across the country on social media and one of the campaigns officially went viral after being viewed over 25 million in the first few days. This generates a great deal of earned media, which basically means that a lot of people are seeing the commercial on their own without the advertiser having to pay for advertising space. That is the jackpot in advertising!”
However, it’s not always an easy process, with both sides having ideas on the final product and creative differences, as David explains, “Sometimes the company licensing the IP assumes that a license gives them the right to do whatever they want with the IP. That certainly isn’t the case as there are always strict guidelines to follow and ultimately the IP Owner has the final say on how their IP is being used. They will have a brand assurance and approval process in place to ensure whatever goes to market is true to their brand and not detrimental in any way. Ultimately whoever is licensing the IP needs to remember that they are paying to borrow that IP for a time period and leverage the goodwill and awareness attached. It must be treated with respect and the IP as a whole will always be more important than that particular project.”
What about unregistered IP?
One form of unregistered IP which every company will have is copyright. Copyright is a free and instant legal right that grants the creator of an original work exclusive ownership rights and allows the rights holder to decide whether, and under what conditions, their original work may be used by others. Copyright lasts for a limited time after which the item falls into the public domain.
Within a business copyright will cover the company website, original articles or photographs, original software, flyers, menus, etc. basically anything which is an original literary, creative or artistic work. On the ‘flip side’, businesses should also ensure that they have the necessary written permission (includes email) to use any copyrighted material which they themselves have not created.
If you run a café, restaurant or catering business and you are using an age-old family recipe or a brand new one invented by yourself then you will have what is known as a trade secret. The only ways to protect a trade secret is either to keep the recipe secret from everyone and always make the item yourself or to have a non-disclosure clause built into your employees’ employment contracts.
Businesses should also take steps to protect the companies valuable ‘know-how’. That is information not necessarily included in a patent for example, but is practical knowledge that is needed to complete the manufacturing or production process. This would also be something covered by a clause in employment contracts.
Once you have your IP situation in hand, set up an IP Portfolio (either hardcopy or online) to hold all the relevant documents relating to all of the IP you own and/or license. Schedule regular times throughout the year for you or a member of your staff to go through your IP Portfolio and ensure everything is up-to-date, licenses renewed, renewal fees paid for trade marks, patents and registered designs, etc.
Finally, to all businesses I would say, if you have IP shout about it! It will show competitors and potential infringers that you are ‘IP aware’.
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