Globalisation of markets and the digital and online revolution mean that few businesses that create valuable intellectual property can afford to overlook the importance of protecting that IP beyond the UK.
Many aspects of intellectual property law and protection are complex and expensive, so the decision as to when, where and how to look further afield is inherently part of getting good, experienced, strategic advice.
There is no centralised, worldwide or comprehensive system for easily protecting intellectual property. This means it’s extremely important to ensure that any lawyers you instruct have the connections and knowledge to assist you with protecting your IP outside the UK.
You can be confident that Briffa have you covered with your international IP.
Our credentials have been noted by the highly respected Chambers & Partners legal directory. In 2014, here’s what they had to say about our international capabilities :-
“Briffa Secured a pan-European injunction at the High Court in favour of Magmatic’s registered design against PMS International”.
“Defending Sensas against a trade mark and unregistered design infringement suit brought by Fox International”.
Margaret Briffa has significant experience running trade mark and design infringement litigation and also international brand management programmes. Clients find her “attentive to our enquiries and well versed” in her field”.
Our solicitors have developed strong and trusted connections with a network of niche, specialist intellectual property law firms in Europe, the United States and in many other jurisdictions worldwide. We also have similar connections with non-legal agencies who, for example, offer anti-counterfeiting monitoring and enforcement services. We also work alongside customs and trading standards.
From the earliest stage of developing your highly valuable IP, you ought to be thinking strategically about the likelihood and importance of needing to protect your rights outside the UK.
For example (see more below), there may be strategic decisions about whether it’s best, where possible, to protect IP by applying for European trademark or design right protection or just in the UK, or possibly both. Clients budgets vary which also forms part of the strategic discussion we provide.
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.
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.
