Legal Talk 10: How Do I Protect Myself Against Losing My IP?
 
Your company is growing, but you haven't hired a lawyer yet. You’re too busy actually getting the company together, you say. 

But my last comment on the design agency owning the copyright in your logo panicked you. You ask if I can expand on this point. Yes, I can. 

The point I made last time is that if anyone is working for you, such as a consultant, web developer, freelancer or design agency, then you need to have an IP assignment in place. This is an IP transfer which legally transfers the IP in the work they are doing for you, to you. 

“Why is this important?” You say. Well: 

1. Company Value: IP is an asset. Generally, the more IP your company has the more it will be valued at. However, if you don't have any IP then of course your company value is typically going to be less. 

2. Ownership Rights: If you own the IP then you can take legal action against people infringing your IP. But, if you don't own the IP (because you didn’t get an IP assignment from your design agency), then the infringing party will often say as a defence that you don't own the IP anyway because the design agency does.

3. Investment: Investors investing in your company will want to see a lot of IP in the company and the paperwork to prove what IP the company owns. No paperwork and some questionable IP rights will mean that investors may value your company less, invest less or not invest at all.

To repeat, therefore, the key takeaway whenever you hire other people to do work for you such as consultants, freelancers and web developers, is to make sure you own the IP in the work that they create for you and have some paperwork in place to make sure that this is the case.

“Very interesting”, you say.
 
“Anything else?” I say. No? Well in that case I'll leave you with this link with further useful information: https://www.gov.uk/intellectual-property-an-overview.
 
Until next time then.
 
Best wishes


Jimmy Desai
Your Legal Coach

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​© 2019. Coaching Law Limited. All rights reserved. 

Legal Talk 9: What's Copyright and How Does it Help Me and My Business? 

So, your marketing people have been on the phone to you again. They are banging on about designs and suddenly they start mentioning copyright this and copyright that and your mind just goes into a foggy copyright blur and you wish you knew what they were talking about.

You set up a quick meeting for us. ​You can read hundreds of books on copyright but the bare essentials are (in my humble opinion) the following:

1. Copyright arises when you create a literary work (such as, by way of example, a drawing, a picture, a logo, a novel and even computer code). It arises automatically in the UK and doesn't need to be registered. The quality of what can be copyrighted is actually very low and so in some cases just a few scribbles or a fairly basic logo can be copyrighted, for example, the Nike tick. For more information on what copyright is, I found this resource particularly good: https://www.bbc.co.uk/copyrightaware/what-is.

2. Copyright means that once you have, say, your logo, then you will have copyright in it and what this means is that others should not copy what you have done otherwise they will be infringing your copyright.

3. Key thing to watch here is that if a design agency is creating the logo for you then (in the absence of any contract or written agreement specifying otherwise), they will own the copyright in your logo, even if you have paid them!

Oh no you say. You don't think you have any written agreement with the design agency!!!
 
I say that you just need some kind of paperwork confirming that once you have paid them then all the rights (including copyright and all other intellectual property rights) that relate to the logo belong to you. You dash in a panic to go and sort this out.

Looking forward to seeing you again.

Yours truly

Jimmy Desai
Your Legal Coach

​P.S. Don't forget to subscribe and get even more exclusive content and legal insight. As always, this legal talk and all the legal talks are subject to our disclaimer, which you can find here.

​© 2019. Coaching Law Limited. All rights reserved.

Another Whatsapp message from you pings onto my phone and I'm glad to hear from you. I click in eagerly to see what's new. 

Branding is still on your mind. This time you just want to find out more about trade marks. 

Okay, so you have applied for your trade mark on the internet but you're getting a bit confused. 

You say: 

"Hey Legal Coach, even if I did decide to register my trade mark, what does this trade mark give me once it is actually registered anyway?" 

Well, in short: 

1. The Compensation Effect: It gives you the right to claim against people who are using your trade mark in a confusingly similar way to what you are using your trade mark for.

2. The Deterrent Effect:  What you hope is that once your trade mark is registered and they see the ® next to it then this will act as a deterrent re: them trying to copy your brand. You don't actually want to sue them because it takes a lot of time and costs a lot of money so hopefully the deterrent will work!

3. TM and  ® (Be Careful!): Once your trade mark is registered (and only once its registered) you can start using the ® next to your trade mark.  The reason that you must only use the ® only once your trade mark is registered is that to do so otherwise is a criminal offence in the UK! And so obviously that is not good because this doesn't really have any synergy with starting and growing your Tech business. 

What you can do whilst you applying for your trade mark is use the TM mark next to it just to show people that you think (in your opinion) that you have some rights to your trade mark although the rights using TM are far less (and far more debatable) than getting your trade mark registered and then using the  ® symbol next to it. 

4. Getting Investment: Oh, and one other thing. When you are going for investment you are bound to be asked the normal Investor type Dragon's Den like question of "What have you done to protect your IP?".

In my view, this question is normally asked to show how clever the questioner is. 

BUT, and obviously, the questioner probably has the money and might be an investor so you can't really quiz them on their detailed knowledge of IP.

So if you reply by saying "I have done nothing to protect my IP" then they can say something like "I'm Out" in a kind of dramatic and theatre like way  and particularly if the cameras are rolling or if they have an audience like fellow investors and analysts etc. 

So, applying for some trade marks to protect your brand not only helps to protect your brand once those trade marks are registered but it also gives you some kind of answer to the IP question which can normally expect.

If you do have some answers to that IP question (which you know is coming) where you say: "Yes, we have thought of that and done X, Y and Z to protect our IP" then you kind of look like the smartest person in the room or at least shows you know some stuff. This might then help you on your way to getting investment (or a least not stalling investment talks). 

Hope this helps, but if you want a bit more info on the area, I recommend starting here: https://www.marcaria.com/ws/en/articles/the-importance-of-trademarks-in-business.

Best wishes

​
Jimmy Desai
​Your Legal Coach

P.S. Don't forget to subscribe and get even more exclusive content and legal insight. As always, this legal talk and all the legal talks are subject to our disclaimer, which you can find here.

​© 2019. Coaching Law Limited. All rights reserved.

Legal Talk 7: What Are Trade Marks?

​I'm gazing out of the window watching hordes of people clamber around Holborn station. I check my phone. You've messaged me. You are with some marketing people and they are on about branding, logos and trade marks.

You say, “Hey Legal Coach, can you just give me a few bullet points on trade marks? It would really help.”

Okay, here goes:

Firstly, to get some really good info about applying for a trade mark go to the www.ipo.gov.uk website​. You can apply for a trade mark online at this website; it's actually quite easy. Normally you would go to a lawyer or trade mark agent to apply for trade marks for you, but if you are pressed into doing this on the cheap and can't afford to pay someone, then here are some tips:
 
1. You can only apply for a trade mark if it is NOT generic. What I mean is that you can't apply for the trade mark ‘bananas’ for a business that sells bananas. Otherwise, if you were to get this trade mark registered then no one could use the word ‘bananas’ when selling bananas, without your consent.

2. You need to think of a word that is quite novel or new that no one really uses for your kind of service or goods. Famous examples that other people have applied for and registered include: Orange (for phones), SONY (made up word registered for electronic goods), KODAK (for film), Skype (made up word) and Monsoon (for clothes). 

3. If you think of a logo then this is likely to not be generic because it is not likely that anyone else out there regularly uses your new logo in ordinary day to day activities and conversation.

4. Note that there is something called the Nice classification, which is a list of 45 categories (or classes). You can choose to register your trade mark in your chosen categories. For example, class 9 is for electronic goods, class 16 is for paper goods, class 28 is for toys and so on. Classes 1-34 are for goods, and classes 34-45 are for services. You could register your brand in lots of classes but the more classes you register it in, the more it will cost you. So, you have to be discriminating as to which classes you want your trade mark to be classified by.

​https://www.wipo.int/classifications/nice/nclpub/en/fr/20190101/classheadings/?explanatory_notes=show&lang=en&menulang=en

5. Normally, trade mark fees are a few hundred pounds to apply for. If the Trade Mark Office think your brand is generally OK (i.e. you are not trying to register the word ‘bananas’ for your business that sells bananas) then it will publish your application, leaving it open for others to oppose your application, if they like. If no one opposes your application then it should be registered in the UK in around 4 - 6 months, typically. However, once it is registered, it then becomes effective from the date you first applied for it. 

Does this all make sense? I sure hope so. For further information from a source I thought was great, check this out: https://www.bl.uk/business-and-ip-centre/articles/what-is-a-trade-mark.

Yours truly,

Jimmy Desai
Your Legal Coach

​P.S. Don't forget to subscribe and get even more exclusive content and legal insight. As always, this legal talk and all the legal talks are subject to our disclaimer, which you can find here.

​© 2019. Coaching Law Limited. All rights reserved.

Legal Talk 6: What Can I Do Legally to Protect My Ideas?

It's the first day of Spring! 

Things are moving fast for you, but you are a bit confused about this whole IP thing.
 
So, what is it about? I just have a few minutes, but here is a quick summary. 

IP stands for intellectual property. Think of it as the law treating ideas as property. So, just like property, such as a house, you can sell IP, rent IP or get a mortgage against IP.

Every business is based around its ideas and hence its IP is really important. It therefore goes without saying that you really need to have some understanding of what IP is about. 

The phrase ‘intellectual property’, is actually an umbrella term used to describe a lot of different rights. IP rights include patents, trade marks, design rights and copyrights to name but a few. The problem is that each different IP right has different rules that apply to it, so the whole thing can get very confusing. For example, patents generally provide protection for 20 years (with no renewal), whereas trade marks provide protection for 10 years (but can be renewed for subsequent 10 year periods indefinitely). Here's a further article I enjoyed to add to your growing knowledge: https://businessadvice.co.uk/business-development/business-planning/how-can-i-protect-a-new-business-idea-from-being-stolen/.

Let's just focus on trade marks for the time being. They are normally used to identify and protect your branding, for example, Sony, Nike and Amazon are good examples of trade marks. Sometimes the terms trade mark and brand are used interchangeably. Although when you speak with lawyers, they usually talk about trade marks because that is how these things are referred to in the law. The normal way of protecting your brand/trade mark is by registering a trade mark to help you protect your brand. The process for registering your trade mark (aka brand) is quite straight forward. Go to www.ipo.gov.uk for a really useful guide as to how to go about registering your trade mark/brand.  

Do call me with any questions. 

Yours truly,

Jimmy Desai
Your Legal Coach
​
P.S. Don't forget to subscribe and get even more exclusive content and legal insight. As always, this legal talk and all the legal talks are subject to our disclaimer, which you can find here.

​© 2019. Coaching Law Limited. All rights reserved.