Intellectual property (IP) FAQS
For many of the issues discussed below, ideally you should instruct an IP lawyer to assist you to get the best result for your business. Venture Adventures' Jon Moorhouse is a commercial intellectual property lawyer with 20 years' experience and would be delighted to assist you. Just click on the big red button below to ask for help.
Q1: A seller on an internet marketplace is selling products with a design that looks the same as mine. What can I do to stop them?
A: All the established online service providers (internet marketplaces and social media) offer a ‘take-down’ process. Search on their site to find the tool and to submit a complaint. You will usually need to show that you are the owner of the intellectual property rights in the relevant design (most (copyright, design right or trade mark rights), and that the other seller’s product infringes your rights. The seller may be given an opportunity to respond, and the marketplace service provider will decide whether to remove the other seller’s product from its listing, and perhaps take stronger action against a repeat offender (such as freezing their account or closing their shop altogether).
Q2: Someone is using my business name/logo to sell their own products: how can I stop them?
A: If you have registered your name or logo as a trade mark, you may be able to bring a claim for trade mark infringement if they are using the same name/logo on the same types of products, or even on similar products, although you would then have to show their is a likelihood that consumers would confuse or associate the other person's products with your business or products.
If you do no have a registered trade mark, you may be able to claim they are 'passing off' their products as coming from you: you would need to show that that your business has 'goodwill', that the other person has misrepresented to customers that his or her products came from you, and that you suffered loss as a result.
See Trade Marks for more information.
Q3. Someone has accused me of infringing their trade mark but I am just using my own business name to sell my products and services: what can I do?
A: Look into it further before agreeing to any demands to stop using your own business name. You should check whether they have a registered trade mark: if so, is it just the name in any style, or is it perhaps registered as a stylised word or logo? Also, what goods or services it is registered for? Even if how you use your business name looks the same as or similar to their registered trade mark, and their mark is registered for the same or similar products and services to those you are selling - if you were using your name before the filing or other priority date of their trade mark, you may be OK to continue using your name in the way you are now.
If they don't have a registered trade mark, they would need to show you are passing off your products and services to customers as coming from the other person. They would need to show that that their business has 'goodwill', that you have misrepresented to customers that your products/services came from them, and that they suffered loss as a result. A lot to prove.
See Trade Marks for more information.
Q4: I have been contacted by the internet marketplace I sell on, asking me to stop using one of my original designs because someone says I have copied their design. What should I do?
A: All the established internet marketplaces offer a ‘take-down’ process. You may have been contacted to offer a response to a claim the other person has brought. If so, use this opportunity to explain why you think the other person does not have relevant copyright or design rights in the design in question, or why you think your products are not infringing copyright or design right they may have. See the answer to Q1 for more details on a similar scenario and Online Copying for more information.
Q5: I want to share my idea with a potential investor, but I am worried they will just take it – what can I do?
A: Try to keep key technical inventions or designs, or business concepts, secret until you are clear how you are going to protect them. Once an invention is shared publicly without any secrecy obligations, it may be too late to patent it in most countries, and you would need to act within a certain period of time to seek registered design protection. If you want to protect your idea as a trade secret, then clearly you need to keep it confidential.
Share with care: ideally only share non-confidential details and keep the secret sauce to yourself. If you need to share, only do so under a non-disclosure agreement ('NDA') that clearly sets out what information is to be kept secret, what the recipient can (and can't) do with it and who they can share it with, and for how long. Even then, only share if you believe the recipient will actually comply with the NDA. Mark all materials 'confidential.'
You may find many investors, such as venture capitalists, refuse to sign NDAs. If so: only share information you are happy to be in the public domain, for example great test results for your product/method/software, but not the details of your invention or concept itself.
See Trade Secrets & Confidentiality for more information.
Q6: How can i protect my software?
A: You should keep the coding secret if possible, protecting it as a trade secret. If you need to share the coding, assuming you created the software yourself you will automatically have copyright in the coding as recorded. Consider including deliberate errors or red herrings so that later you can show someone else copied your code rather than writing it themselves. If you can show the software creates an inventive technical effect, rather than just being an abstract programme, you may also be able to obtain patent protection on the idea.
Q7: How can I maximise the value in my intellectual property rights?
A: IP assets can be extremely valuable and help to differentiate your business an to attract partners, investors and so on. You need to have good IP strategy that supports your broader business objectives. Seek to register the right IP rights in the right countries at the right time, with a view to market trends and what competitors are doing. You will need to consider when and where to 'enforce' your IP rights (bring claims against infringers) and whether you want to maintain an exclusive market position or to license your IP rights or offer franchises to others.
See IP Rights in Practice for more on this and how to manage it in practice.
Q8: I have a patent covering my invention - so i have an exclusive right to use my invention for the lifetime of the patent, right?
A: Actually wrong. A patent is indeed an exclusive right - a right to prevent anyone else doing what is covered by the claims in your patent. However, there may well be another patent owned by someone else that covers a particular product or method that you need to use in order to use your own patented invention. In that case, you would potentially be infringing their patent and you would need to get a licence, or work around the other patent, or seek to have it declared invalid.
See Patents for more information.
Q9: Can I use a famous person’s image in my design?
A: Be careful with this, and it may be simpler to avoid doing so altogether. Although there is no specific image right as such in the UK, there may be claims the celebrity could make under passing off (for unregistered trade marks, with goodwill in their image), or privacy and breach of confidence.
Q10: Is it OK to buy materials or products bearing signature patterns or well-known branding, and use or ‘upcycle’ them to make new products for me to sell?
A: You should check the purchase terms and conditions very carefully to see if you have permission to do this. You may find you only have a right to use the materials or products for domestic, non-commercial use only. As soon as you sell products using images for which copyright and design rights are held by someone else, or sell products that include someone else's trade marks, you could be infringing their rights even if you have effectively made a new product. Larger companies will manage their branding and merchandising programmes carefully and may act swiftly to try to stop your sales.
Q11: Where can I register copyright in my designs and business name?
A: You can't register copyright in most countries. It will arise automatically in written or artistic/design works, but this needs to be longer than just a name. You may also benefit from unregistered design rights that also arise automatically and may have the option to apply for registered design right if the design is novel and creates a different 'overall impression' on 'informed users.' You could apply for a UK or EU registered design (the latter covering the whole EU area), and maybe even for other countries outside the EU, using a streamlined procedures. See Know Your IP Rights to understand which IP rights may apply, and Copyright and Design Rights for more information.
For your business name, this won't be protected by copyright but you can apply to register this as a trade mark in the UK, the EU or most other countries (there is no such thing as a single, global trade mark right), provided it is distinctive, not descriptive of the goods or services you are selling and meets further registration criteria. You could also consider registering it as trading name at Companies House even if you do not have a registered company (see Trading Structure for more on this).
Q12: Can I trade mark my business name?
A: Maybe. See the answer to Q11 for more information. If your business operates as a registered company, you will not automatically be able to register your company name as a trade mark just because you have registered the name at Companies House
Q13: How can I check if a phrase or name has been trade marked?
A: You can use the Intellectual Property Office's trade mark search function that you can find via the government website www.gov.uk. However, it may be advisable to engage an IP attorney to assist, to carry out a tailored search and to interpret the results in order to achieve the best outcome for you business.
Q14: Someone who started following me on Instagram has posted images of designs on Instagram that are the same as mine. Can I stop them?
A: Please see our answer to Q1 above.
Q15: Can I use materials I find on the internet?
Q16: Who owns the IP rights in a new creation or invention?
Don’t assume that just because you pay someone to create or design something for you, that you own the rights in the end product. If you commission a freelancer or contractor, they will own the rights in what they create unless you expressly include an assignment to you in the contract – otherwise all you will get is a licence to use what you paid for, but no guaranteed exclusive control.
The situation is different for employees. The employer will own IP rights in whatever an employee creates in the course of his or her employment duties. However, it is still worthwhile expressly including a provision in the employment contract to ensure all rights are assigned to your business.
So, in the case of an invention, an employee inventor will own the initial right to file a patent application but as a matter of law, backed up by an appropriate employment contract, this right is assigned to the employer. The employing company would then usually be the party named as the applicant on the patent application. However, all the contributing inventors usually need to be named, and again it is good practice to include obligations on the employee to sign all documents and do all things necessary to assist with the patent application – as well as an obligation on the employee to keep the idea secret to avoid destroying its ‘novelty’ for patenting purposes.
If you enter into a R&D or creative collaboration with one or more other parties, you need to make sure you are clear on the ownership and use rights in relation to any initial ideas or IP brought in at the start of the project AND in relation to whatever is created in the project.
You may think joint ownership of any resulting IP might be a fair approach, but this will depend on the respective contributions of IP, funding and personnel from each party and in any event joint ownership is not always easy to manage in practice. In most countries, you need all the other co-owners’ consent before you can assign or license the IP to anyone else, and you need to agree on what patents to file, with what claims or claim amendments, in which countries, and so on. It is often easier to agree that one party will own the IP and grant the other parties a suitably broad licence to use whatever IP rights are obtained.
Finally, something often overlooked by businesses starting up is the need for IP owned by one or more of the founders to be assigned to the company set up for the business. Investors will want all these loose ends to be tied up before they commit funds.