Our intellectual property team advises clients on both UK inbound and outbound work.
Our team provides market leading advice on international intellectual property disputes, commercialisation, and guidance on how to safeguard and grow you brand. Our IP services fall into four key areas:
Within these areas we cover all IP rights.
UK IP Rights
The UK has detailed rules dealing with the full range of intellectual property rights. The main types of IP rights in the UK are detailed below:
Copyright is perhaps the most diverse intellectual property right, protecting works from books to computer software and from symphonies to broadcast transmissions. It protects original works against copying, sharing, selling, renting, lending, performing, showing in public and making adaptations of the work.
A foreign national may approach the UK Courts and assert their copyright, which subsists as a result of their own foreign law, and/or international conventions and seek to assert rights associated with their copyright in the UK.
Trademarks can be registered in the UK. Once registered a trademark can be renewed indefinitely (subject to renewal fees). We provide a fixed-fee service to apply to register your trademark and deal with the process through to acceptance.
Trademarks can also be unregistered and protected under the law of passing off. Passing off is a ‘common law’ right, that arises automatically to protect the whole ‘get up’’ of an item. To claim passing off there must be: goodwill; misrepresentation leading to confusion; and damage (usually lost profits or reputation). The right to pursue another for passing off lasts indefinitely.
Protection of database rights
Rights in databases are not widely known but are incredibly valuable. Companies with customer lists, tables of historic information or marketing mailing lists have databases which can be protected through copyright (see our earlier section on Copyright).
Confidential information and trade secrets
It can be possible to protect information that is disclosed in circumstances in which an obligation of confidence arises. Such information is known as confidential information. Trade secrets are a type of confidential information which have a commercial value as a result of being kept secret. Recipes, chemical formulae, processes, know how are all valuable trade secrets which many businesses rely on. To qualify for protection, a business must have taken reasonable steps to keep the trade secret confidential.
It is possible to protect designs through registration in the UK. Registered Designs protect the overall visual appearance of a product or part of a product. Registration with the Intellectual Property Office is required and can last 25 years (subject to payment of renewal fees). Designs may also benefit from automatic (unregistered) protection in the UK.
Those wishing to do business in the UK should be aware that if the design was first disclosed in the EU, the design right will not apply in the UK, and businesses will instead benefit from protection in the EU under a similar EU design right for the 3 year period.
Given the global nature of IP, we frequently advise on and coordinate cross border transactions and disputes, often as part of an international team of lawyers.
Below are some examples of our experience in handling cross border matters:
- Advised South Africa based retailers, Truworths Ltd, on the £256m acquisition of Office Stores UK Ltd
- Advised H&M on one of their biggest pieces of IP litigation. This matter involved working cross-border, handling proceedings in the USA, Germany, and the UK
- Advising Dyna Energetics, a German manufacturer of well perforating technologies, on their patent litigation proceedings against Geo dynamics
- We advised Estee Lauder Inc on its abortive acquisition of a leading global cosmetic brand