Maximising the value of your hidden Intellectual Property assets

I will admit to being an avid fan of Antiques Roadshow®, one of the most popular and long running television programmes produced by the BBC.

The format follows antique experts and appraisers as they travel throughout the United Kingdom reviewing and assessing the value of antiques brought in by locals where the show is airing.

The prospective location of the show is advertised well in advance by the BBC; thereby allowing locals in the area to trawl through their attics, lockups and garages to root out those forgotten assets for an assessment of value by one of the Antiques Roadshow® assessors.

I myself find it particularly gratifying when an assessor values an asset for more than the holder originally thought it was worth.

Like long lost and valuable antiques, the hidden value of Intellectual Property often gets overlooked by businesses. Many businesses do not even realise that they have valuable Intellectual Property assets in the first place.

So what precisely is ‘Intellectual Property’?

In a nutshell, Intellectual Property is the sum of all the intangible assets your business owns. It can encompass:

• Trade Marks – e.g. brands, logos, slogans, advertising jingles
• Patents – .i.e. technical inventions.
• Copyright – e.g. written material like website text, manuals, music or artwork.
• Designs – the aesthetic appearance of any products your business manufacturers.
• Domain names – the url addresses that drive business to you via email and/or a website.
• Trade Secrets – confidential information such as a recipe, customer lists or a way of doing something which you would not want revealed to the outside world.

All of the above are collectively known as Intellectual Property Rights (IPRs) and are fully protectable in law.

In Ireland, Industrial Designs, Patents and Trade Marks can be protected through registration with the Patents Office in Kilkenny.

A registration grants exclusivity in the relevant IPR and makes it much easier to stop unauthorised use by others. In some instances, it may even be possible to protect the goodwill and reputation you have established under business.

Unlike tangible assets of a business, (e.g. plant and machinery), the value of IPRs does not diminish over time.

On the contrary, IPRs can actually add to the overall value of your business. Also, IPRs can be used, not just by your own business, but also by others with your permission as part of an overall monetisation strategy.

IPRs can also be particularly useful for businesses wishing to secure loan or investment capital as the law actually allows for security interests to be registered against patents, trade marks and designs.

As the value of an IPR does not diminish in time, a savvy investor and/or financier will see your IPR as having a relatively low risk profile with a positive return attribute.

Failure to properly identify and exploit your valuable IPR could result in a significant lost opportunity to your business.

More seriously, failure to identify and protect your IPR may actually result in serious financial loss to your business.

So, how can you tell if your business has protectable Intellectual Property and what steps can you take to protect and monetize such rights?

By having an ‘IP Audit’ conducted of your business by an Intellectual Property lawyer, your IPRs can be readily identified and then assessed for the most effective method of protection and monetisation.

Niall Tierney

Niall Tierney is a Legal Brand Consultant to Fuzion Communications and an IP Lawyer located in Dublin, Ireland,  Managing Director of TIERNEY IP, a specialist law firm which assists and advises businesses in clearing, protecting, enforcing and monetising trade marks, designs and other Intellectual Property rights.

New Business or Brand Name – Check first before you launch!

 

I am perhaps betraying my age here, but when I was a young boy, I sang along enthusiastically to the ‘Safe, Cross, Code’ song, which was part of a road safety campaign on Irish TV fronted by ‘Judge’, a puppet dog with a patched eye.

The mantra of the road safety campaign was always to look left and right before you cross the road. The same rule applies when choosing a new name for your new business or launching a new branded product to the market. Always check first to ensure that your new business name or brand is not being used by somebody else.

Very often, many start-ups make the mistake in believing that a positive search result of the Companies and/or Business Name registers means they are free to trade under their desired name. This can be a fatal and very expensive mistake to make.

Only a comprehensive ‘Freedom to Operate’ search of the Trade Marks Registers in the territory where you propose to trade can provide you with a comprehensive risk assessment of whether you are free to operate under your desired business name.

The very same applies when you want to launch a new branded product to the market. You need to ensure that your proposed brand, in whatever forms it takes, be it a word or logo, does not clash with identical or similar existing brands already in the marketplace in your industry sector.

Why, you may ask, is it actually necessary to do a Trade Mark search?

The reason lies in the fact that a trade mark is a sign which distinguishes the goods and/or services of one trader from those of its competitors.

When a trade mark is registered in the territory where a trader operates or proposes to operate, it gives the trader a legally enforceable right to stop others from using, without consent, identical and similar signs in relation to goods and services which are identical or similar to those of the trader’s trade mark registration. You therefore need to be aware of these legally enforceable rights.

Undertaking and analysing trade mark and design searches is a highly specialised skill which only a Trade Mark and Design attorney with years of experience and knowledge of ‘risk of confusion’ law can provide.

Doing ‘DIY’ online searches runs the serious risk that the owner of an identical or confusingly similar trademark that you have not discovered will come out of the woodwork and sue you. You may either have to abandon your plans or incur significant expenditure in contesting a legal challenge from the owner of that earlier trademark.

In some cases, a legal challenge may result in the holder of an earlier trade mark obtaining a temporary injunction from the courts prohibiting you from trading under your chosen name or brand. This could be disastrous, particularly if you have already spent time and money in developing your brand. You may also be faced with the prospect of having to pay the earlier trade mark owner’s legal costs should they win in court against you.

In Ireland, a further complicating factor is that not all earlier rights may actually be on the Trade Marks register.

Ireland is a ‘First to Use’ country which means that the owner of an earlier brand may have sufficiently strong unregistered rights to sue you for ‘Passing Off‘. Passing Off is an action which protects the goodwill and reputation built up under a brand name. Additional non-trade mark register searches will therefore need to be carried out and analysed to provide you with a robust and comprehensive risk assessment.

I have many years of experience in undertaking ‘Freedom-to-Operate’ and Trade Mark clearance searches, having assisted some of the world’s largest companies in clearing their most important brands.

In a recent instruction, l assisted and advised an Irish based software company to clear its trading name in Ireland, the European Union and the United States. Also, in a complex instruction a number of years ago, I advised a large multi-national FMCG corporation to clear a brand for use throughout the European Union.

The brand I cleared is now highly successful and one of the leading pet snack food brands on the market. In both cases, it would have been highly risky for my clients to operate and launch their new brands without first undertaking a comprehensive trade mark search program.

The process is quite straight forward and relatively inexpensive, so its always much better to be sure before committing big budgets.

So…can you remember that song?

Niall Tierney

Niall Tierney is a Legal Brand Consultant to Fuzion Communications and an IP Lawyer located in Dublin, Ireland,  Managing Director of TIERNEY IP, a specialist law firm which assists and advises businesses in clearing, protecting, enforcing and monetising trade marks, designs and other Intellectual Property rights.

 

Spinners, Patents, Trade Marks and protecting your most valuable assets

Most parents will no doubt be aware of the latest on-going fad; fidget spinners.

Few will realise however that the original inventor of the fidget spinner, Catherine Hettinger, has lost out on millions because she did not take steps to renew the US Design Patent, which she previously took out for her invention.

Design Patent

In a nutshell, a Design Patent (simply known as Design Registration in Europe) is a monopoly right given to you by the territory where you require protection in return for your agreement to publish the details of your design. This means that nobody can use your design without your consent, which is usually granted by means of a written licence agreement.

In most countries, your Design Registration will last for 25 years provided you pay a renewal fee every five years.

On a recent trip to Florida, I learnt about Catherine Hettinger’s unfortunate story. Due to the perceived high cost of renewing her Design Patent, Ms Hettinger allowed it to lapse. This meant that she could no longer prevent third parties from using and commercialising her design.

As expected others have now commercialised Ms Hettinger’ design and have earned millions from doing so. Catherine Hettinger’s tale is a salutary one and applies equally to brand and new business owners.

Trade Mark

All too often, businesses will spend considerable time and money in developing and bringing a new brand to market, but will fail to take any steps to protect the very brand they have spent so much developing.

Unless you have been trading under a particular business name or have established significant business goodwill under your brand, you will find it very difficult to stop a copycat from starting a business under an identical or confusingly similar brand.

The only way you can stop a copycat if by registering your brand as a Trade Mark.

What is a Trade Mark?

A Trade Mark is essentially any sign you use in your business to distinguish your products and/or services from other traders.

By registering a Trade Mark, you get an instant State backed exclusive right to prevent others, without your consent, from using identical or similar signs upon, or in relation to the goods and/or services covered by your registration.

If you find that somebody else is using a sign which you believe is identical or confusingly similar to your trade mark, you only need to produce your Certificate of Registration in court as proof of your right.

Without this trade mark registration, you would have to convince a court that you have been trading long enough to establish a protectable business goodwill under your business or brand name.

Obviously, new business and brand owners will not even be able to get past this first hurdle.

A Trade Mark registration also has other advantages.

For example, few businesses realise that their brands are their most important and valuable assets. The law recognises this and therefore regards a trade mark registration as a property right. Like any other property right, you can use your registered trade mark, or registered design, as collateral for loan or investment finance.

I once acted for a client who did just this and was able to save its business from collapse. Trade Mark and Design registrations can also be licensed, transferred and bequeathed like any other property right.

Trade Mark and Design registrations also have the advantage that they are protected as property rights under the Irish Constitution and the EU Charter of Fundamental Rights, which effectively makes it near impossible for the Government to sequestrate it.

So, what does it cost to secure a trade mark registration?

Like Catherine Hettinger, many businesses are initially put off by the upfront costs of protecting a brand by means of trade mark registration. This is false economy.

By way of illustration, the upfront cost of registering your brand as a pan-EU trade mark (EUTM), without any objections or challenges, starts at approximately €1,500 ex VAT.

While this might seem a lot to many SMEs, you have to bear in mind that you are securing a monopoly in each EU Member State for an initial period of 10 years (an EUTM can be renewed indefinitely every 10 years). Rounded up slightly, this works out at an annual cost of €5.50 per EU Member State. I know of no insurance policy that would cost this little!

Niall Tierney

Niall Tierney is an IP lawyer located in Dublin, Ireland brand – Design protection lawyer and Managing Director of TIERNEY IP, a specialist law firm which assists and advises businesses in clearing, protecting, enforcing and monetising trade marks, designs and other Intellectual Property rights.

If you would like to discuss the protection of your brands or business names, please email Niall at niall@tierneyip.com. Alternatively, he can be reached at 01 2544116.