IP Considerations for Exporters

9th May 2022 Intellectual Property

While the UK may prove to be a very fertile market for some traders, all businesses harbour aspirations to scale up to an exporting, global business model following local successes. As most of us are aware, this has been made more complicated with the advent of Brexit.

Becoming a market leader on your home turf will stand you in good stead for becoming an exporter, but that does not mean that you can ignore some of the latent risks inherent in exporting from an IP perspective.

As always due diligence, in the form of risk identification, management and mitigation is vital. The following are a few general tips on what to think about from an IP perspective prior to embarking on your global business journey:

  1. Ensure that you have obtained clearance in relation to your brand in the territories you want to enter – having a UK trade mark does not give you any trade mark rights in any other territory, and there could be earlier owners of similar trade marks in the foreign territory that you are currently unaware of;
  2. If you are bringing a new product to an overseas territory, you must obtain clearance and/or freedom to operate prior to placing the product on the market. This is because there could be third parties that own patent, design or copyright protection over a particular product previously brought to market in that territory, and you could fall into infringement inadvertently if you are unaware;
  3. Make trade mark, design right, patent and copyright applications in relevant overseas territories. While many aspects of IP law are harmonised across the world, there are marked procedural differences between the various territories. It is important to have advisers that have experience in global IP matters, and have a network of trusted agents worldwide;
  4. Depending on how to you intend to trade in the relevant export territory (whether using a local subsidiary or third party distributor) ensure that you have agreed how trade mark ownership in that territory will work. The most desirable arrangement in this respect is for you (as the exporter) to own the trade mark in the territory, and licence it out to the local distributor;
  5. Get head of terms agreed with the relevant parties involved in bringing your product or service to market in the overseas territory, and have the necessary agreements drafted (whether a distribution agreement, or a trade mark licence or otherwise) by your UK lawyers. These agreements should contain clauses limiting your liability, and be based on UK law, giving jurisdiction to courts of England & Wales in the event proceedings become necessary. This provides the foundation for control and risk management in a dispute situation.

All of the above should be explained to you in much more depth should you find the right lawyer to manage your emergence into export markets. At JMW, the specialist IP team has a wealth of experience in helping clients achieve success abroad. We take a view of partnering with our clients instead of simply providing a specific service. We become invested in our client’s successes and growth overseas, and try to provide limitless support on the IP side throughout the process.

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Lakmal Walawage is a Senior Associate located in Londonin our Intellectual Property department

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