So you think you have invented the next bestseller in the fashion industry – children’s shoes that grow with your child! Protecting your invention from exploitation by third parties will be key to the success or failure of your business venture. Before you embark on this process, here are our top 10 tips to help you keep your creation safe.
- Consider what aspects of your invention are capable of protection from third parties:
Your idea itself is not protected – and if you had done your research you may have discovered that it has already been done. Luckily for you, copyright does not exist to protect ideas, only the expression of ideas. However, depending on the jurisdiction in question, the design of your shoes may be protected by design rights, the name and logo you created for your shoe range by trademark rights, and the mechanism by which your shoes “grow with your child” by patents.
- Understand that intellectual property rights are territorial in nature:
Accordingly, you will need to apply to register your rights in all countries of interest. The jurisdictions in which you should seek protection depend on a number of factors, including the location of your business, consumers, manufacturers, distributors and suppliers. The likelihood of third-party infringements in a particular jurisdiction as well as costs associated with protecting intellectual property rights are also key considerations.
- Realise that types and levels of protection vary significantly depending on the country in question:
By way of example, in the US, fashion designs are afforded little protection under trademark and patent law. In contrast, protection available in the EU is much more comprehensive, including copyright protection in design drawings and design right protection for the actual designs.
- Obtain comprehensive clearance searches:
Clearance searches should be carried out in any country in which you anticipate doing business, at the very least in respect of any proposed trademarks and brand names. While a screening or knockout search is a good starting point to identify any obvious obstacles, it is advisable to instruct local counsel to carry out full clearance searches to reduce the risks of a chosen trademark being attacked by third parties. Clearance should be carried out at the earliest opportunity to allow time to consider alternative trademarks and branding strategies. At least in respect of European Community-registered designs, it is far less common to carry out clearance searches because there is no opportunity for third parties to file oppositions and their validity is usually only challenged when an infringement action arises. However, this position is not the same with respect to all national registered designs.
- File relevant applications immediately:
Because trademark and design rights in most countries are established through registration, once clearance searches have confirmed that a chosen trademark (or design) is available for use, it is advisable to immediately file any applications for registered rights in the relevant jurisdictions. Delaying the filing of applications after a clearance search is risky: third parties may file applications for the same or a confusingly similar mark in the interim.
- Commence use:
You should always commence using your registered rights immediately and seek local advice regarding the requirements for keeping a registration in force. In some countries, such as the US, failure to use a trademark for a certain period of time constitutes prima facie evidence that the trademark has been abandoned. In the EU, trademark registrations become vulnerable to cancellation for non-use if they have not been used for a consecutive period of five years or more.
- Educate yourself and others:
Effective enforcement of intellectual property rights depends on the detection of third-party infringements. It is therefore important to educate anyone in your business and any third party with access to your intellectual property rights on intellectual property protection. Training will allow such individuals to identify issues of concern and to flag them up to a nominated person within your business.
- Introduce an intellectual property policy:
An inconsistent approach to intellectual property filings and enforcement can endanger your intellectual property protection strategy internationally. This risk can be reduced by a written intellectual property policy setting out guidelines on the types of intellectual property your business owns, which jurisdictions are of key interest, trademark filing procedures and strategies, what types of third party infringements to take action against and whom to notify potential infringements to.
- Make third parties aware of your rights:
Putting third parties on notice of your rights – for example by marking your design drawings with your name, date of creation and a copyright notice, your shoes with registered design symbols and the name of your shoe brand with a registered or unregistered trademark symbol – may assist with deterring third parties from infringing your rights.
- Take enforcement action:
Finally, intellectual property rights do not enforce themselves. It is therefore important to monitor at least trademark and domain name registrations and search for unauthorised brand usage on the Internet. Where a disconcerting third-party use has been identified, it is advisable to consult local counsel to explore available enforcement options. Enforcement actions usually take place in local trademarks registries or courts. However, in the case of domain names, the most cost-effective enforcement action is filing a complaint under the relevant dispute resolution procedure associated with the domain name.