IP protection overseas

Article posted by Elizabeth Ward, on behalf of Virtuoso Legal

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Protect your IP overseas and online

There are a lot of considerations to take into account when starting to branch out and trade overseas.  One major problem that we warn clients about is the potential for their great designs and trade marks and technology to be imitated and used without permission in overseas countries.  This is why it is important to register your trade marks, patents and designs abroad.

How Do I Protect My Business Outside the UK?

In our piece on here titled ‘Putting Your Intellectual Property In Order At Home‘ we mention that you should first look to put your IP in order at home and begin by identifying the portfolio of IP assets that you have in existence etc.  Once identified and registrations and safeguards have been put in place at home it is far easier to extend this protection into new global markets.

To ensure your IP is protected in the best way possible abroad it is important that you not only have national IP registrations in place but also international registrations. Any trade mark / design or patent registration that you have registered in the UK or the EU will only grant you protection in that territory only.  So, if you are looking to commercialise outside of these geographic regions you need to be instructing a professional to file an international registration.  This is often possible to do through one filing thanks to various international treaties which many countries have signed up to.

By speaking to an Intellectual Property specialist you will be able to put together a clear strategy to spread the costs of filing your trade marks etc abroad.  For instance, we often help clients with their EU registration first and then go on to register an international registration through what is called a Madrid protocol application a few months after.  The international Madrid protocol registration can take the priority date of the earlier EU registration providing it is all put into place within 6 months.

The Benefits of Intellectual IP registrations

In practical terms, registered rights grant you the ability to:

  • Enforce your rights using local laws;

  • Stop your goods from being illegally imported and sold into countries in which you trade without your permission.

  • Maintain your brand, product standards and profit margins.

These are just a few reasons but in our opinions they are business critical.  Ask yourself what damage could arise where consumers buy poor quality, sub standard goods believing these to be your products?  Also, with no trade mark protection in place, overseas agents can register your brands as their own, thereby causing some significant disputes and issues, all of which can be difficult to control and costly to your business.

Any Other Essential Measures To Consider?

In order to mitigate the risks as fully as possible you will certainly need to have robust legal contracts drafted before expanding overseas.

It is so simple and convenient to take a generic template or copied contract and hope that it will fit the purpose you require. But please do not take the risk! Significant problems, disputes and expense will most likely follow as this is a complex and specialist arena, particularly when international laws apply. For instance, have you considered how the payment, shipping and insurance arrangements will be covered off in the contracts?  Will local foreign laws or English law apply in the event of any dispute?

The most common contracts that our expert solicitors are asked to advise on by exporters are –

  • International Sale of Goods / Supply Agreements

  • Manufacturing Agreements

  • Agency Agreements

  • Distribution Agreements

  • Licensing Agreements

  • Franchising Agreements

In all situations, we advise clients of the importance of getting the selection with the overseas associate right by carrying out the preparatory due diligence.  We then look carefully at the dynamics of the overseas business relationship you are seeking to formalise and tailor the terms to meet your objectives.

If You Would Like Further Help…

Finally, we hope the above is useful to you and do get in touch if you would like to discuss specific IP and legal protection in relation to your business’ export plans.  At Virtuoso Legal we specialise in providing commercial, objective strategies and advice about your intangible assets.  You may also wish to visit our website at www.virtuosolegal.com.