Registering intellectual property (IP) assets is a vital way for businesses to prevent unfair competition and protect their brand identities. Even for companies with a well-established and recognisable brand identity, trade marks provide a layer of legal protection that makes it easier to defend against infringement and combat counterfeits.

This is especially important for businesses that want to trade internationally because, unfortunately, several of the world’s biggest markets are rife with IP challenges. While UK businesses can make a lot of money in huge markets like China and India, there are also problems like piracy, counterfeiting, poor enforcement, lax punishments for infringement and preferential treatment for native businesses to contend with.

These are not comprehensive lists of countries or challenges - the United States Trade Representative’s Special 301 Report has more information - but in many cases, there are risks for UK organisations of every size when entering and trading in a foreign market.

It is important to note that UK trade marks do not apply to overseas territories and will offer no protection from infringement in international markets. Here, the expert IP team at JMW Solicitors details the advantages of registering a trade mark in the UK, and explains how businesses that are moving into a foreign market can continue to protect their intellectual property and defend their brand and reputation.

Why does my business need UK trade marks?

Although it will not protect your intellectual property abroad, there are a number of benefits to securing a UK trade mark. First is that it is vital to protect your business’ assets and brand identity in your native market; while counterfeiting, piracy and other aggressive types of IP infringement are more common in other countries, there are still risks for UK businesses from competitors.

You can apply for a trade mark to protect a company or product name, a logo or packaging design, a slogan or other phrase, or a jingle or musical sting associated with your organisation. Failing to register these assets in your native market can open the door for competitors to imitate these elements.

While certain rights apply automatically, they can be difficult to enforce and as a result, they do not offer much protection. You may need to rely on your business’ association with a brand element among consumers and if you are new to the market, you may struggle to defend your IP unless it is registered. In fact, another business may be able to register a trade mark for a similar company name or logo to yours. If this is granted, you could risk infringing on this trade mark by using these brand elements, even if you created them first. For this reason, it is vital to work with legal experts to identify and protect your organisation’s valuable IP assets in the UK and in all of the territories in which you intend to trade.

How do UK trade marks help businesses move into overseas markets?

There are also specific advantages for businesses that intend to move into foreign markets. By registering in the UK before you begin trading abroad, you will be certain that your asset fulfils the requirements for a trade mark. The most important criterion is that an asset must have a unique character that is associated with your business. Elements that are considered too generic are ineligible for protection, although this is subject to interpretation; in some jurisdictions, companies have successfully protected colours in particular shades thanks to a unique association with their brand.

In most cases, if you are granted trade marks in the UK, this means that your assets will also meet the restrictions for registration in many overseas territories, including the requirement that they be original and unique. However, that is certainly not always the case; what is distinctive in one language may not be in another.

You may also need to use existing registrations as a basis for any international trade mark or patent applications you want to make - in some jurisdictions, you must own a trade mark in your country of origin before you can apply.

By working with expert intellectual property solicitors to register your assets, you can increase the likelihood that they will be granted, avoid the complications that arise when trade mark applications are opposed and thoroughly protect your most valuable intellectual property elements. The experts at JMW are experienced not only in managing registrations and monitoring for infringement, but in helping businesses to register their IP overseas. By working with our international legal partners, we provide a continuity of service for your business, ensure that your assets are suitably protected in all jurisdictions, and support your organisation to enjoy the maximum benefit of its IP.

Are there any assets that don’t need to be registered in other countries?

All of the above advice applies to protections like trade marks and patents, for which you must register assets in order to receive protection. A common exception is copyright, which protects expression - although it is often associated with works of art or media, copyright can be vital for all businesses and industries, not just those working in these industries. Assets that are protected by copyright include:

• original written works;
• music and recordings;
• photographs and illustrations;
• films, television programmes and broadcasts; and
• non-literary written works, like:
• web content
• software
• databases

In the UK, you do not need to apply or register for copyright protection; it is granted automatically when you create an applicable piece of original work in one of the above categories.

This is also true in some overseas territories. While every country has its own copyright laws (which often differ from those of the UK and are, in some cases, much more lax), works are generally protected on an international basis thanks to the Berne Convention. This agreement between 181 member countries mandates that any work produced in a contracting state must enjoy the same copyright protections in every other state that it would in its country of origin, meaning that the copyright laws that apply to works produced by UK businesses are also binding in most international jurisdictions.

How can I register and protect my intellectual property?

You can register intellectual property online, but problems can often arise during the process unless you work with a professional intellectual property solicitor. During the application process, other businesses have the opportunity to oppose your registration (because they feel that your trade mark would infringe on an earlier mark that they own) which can lead to a legal dispute. Self-submitted applications are also more likely to be rejected, meaning that you will lose your application fee, and risk tipping off competitors about your future plans.

JMW offers services to register your intellectual property in the UK and abroad, which will give you the comprehensive security you need to enjoy the full value of your IP assets. Supporting businesses across every industry in many of the world’s biggest markets, we have a thorough knowledge of the most pertinent issues that may apply and are uniquely positioned to offer specific, practical and relevant advice. We will also work hard to understand your business’ goals, to ensure that your IP strategy delivers on these aims.

Additionally, we offer JMWatch, a monitoring service that will identify any future trade mark applications that might infringe on your existing registrations. With this combination of services, you can rest assured that all of your business’ IP needs will be met and that your business is protected against imitation and unfair competition.

To access our services or learn more about how we can help, contact JMW Solicitors today. Call us on 0345 872 6666, or fill in our online enquiry form and we will call you back at a convenient time for you.