International IP Contracts and Licences
It may not be possible to rely on any contracts, such as licences, stating that English law should apply and will protect your rights.
Bearing in mind that the starting point for most types of intellectual property is that each individual country’s law apply, it isn’t possible to detail the position in a single page. A good starting point is to appreciate that there is some wider protection available in the EU.
This page – https://www.gov.uk/government/publications/protecting-your-uk-intellectual-property-abroad offers a very helpful overview.
In terms of trademarks, there is the possibility of applying for a Community Trade Mark (CTM) in the Office for Harmonization in the Internal Market (OHIM), based in Alicante, Spain.
As regards design rights, EU protection is possible by applying for a Registered Community Design (RCD) and potentially further afield via the Hague System to a number of different countries via a single application.
For patents, there is still no consistent and centralized system even in the European Union. However, better news is that there will be a Unified Patent Court for the EU which is due to become operational in 2017.
International Intellectual Property Disputes
If you face a situation where your registered intellectual property rights are breached, it may be that the breach occurs outside of the UK or the prospective defendants have no presence in the UK. This creates potential complications in terms of where you might be able to take enforcement action but equally importantly, what court may have jurisdiction. As with any kind of litigation, it is vital to think about enforcement from the outset.
You will need to consider whether you can enforce any judgment obtained, not just legally, but also in practical terms i.e is the defendant worth suing?
If you need lawyers with international, experience, know how and connections to protect your IP rights in countries other than the UK, get on touch with us.
At Briffa, we have a proven track record of advising on all types of IP disputes.