Intellectual Property for SMEs
Establishing what a smaller business owns, recording it properly, and deciding on commercial grounds what to do when someone else is using it.
Intellectual property is reserved, so the statutes are United Kingdom statutes and the registry is the UK Intellectual Property Office. A Scottish business registers a trade mark on the same basis as a business anywhere else in the United Kingdom.
Enforcement is where the position diverges. Intellectual property actions in Scotland are raised in the Court of Session, and for patents its jurisdiction is exclusive.
There is no Scottish equivalent of the specialist lower-cost intellectual property court that operates in England and Wales, and no Scottish equivalent of its capped costs regime. An adviser who assumes that forum is available will have mis-costed the dispute from the first letter.
Ownership, and whether it can be proved
The problem we see most often is not infringement. It is ownership that was never properly transferred. Work commissioned from a freelance designer, a development agency or a contractor does not automatically belong to the business that paid the invoice, and copyright generally remains with the author unless it has been assigned in writing.
In Scotland the transfer is an assignation, and the requirement of writing is a real one.
This tends to surface at the least convenient moment, during due diligence on a sale or when a funder asks the question directly. Repairing it years afterwards means returning to a contractor who by then understands the position exactly. Doing it correctly at the outset costs very little.
Registration, and choosing not to register
Not everything is worth registering. We advise on what a trade mark application would achieve, on the classes that matter, and on clearance searching before a name is committed to signage and stationery. Where a right is better protected as confidential information than by registration, we say so and draft accordingly.
Unregistered rights carry more weight than businesses assume. Passing off protects the goodwill built up in a name or get-up and is available in Scotland. Confidential information and trade secrets are protected without registration, provided the business has conducted itself as though the information were confidential.
Enforcement as a commercial decision
Before anything is sent we want to know what commercial outcome you are seeking, whether the other party can pay, and what happens if they do not concede. Sometimes the answer is a licence and not a dispute. Occasionally it is to do nothing on this occasion and to register properly for the next one.